DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Objections
Claim 1 is objected to because of the following informalities:
Claim 1, lines 5-6: “polybutylene adipate-co-terephthalate, polybutylene azelate-co-terephthalate and polybutylene sebacate-co-terephthalate” should read “polybutylene adipate-co-terephthalate, polybutylene azelate-co-terephthalate, and polybutylene sebacate-co-terephthalate”.
Appropriate correction is required.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 10-11 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Beyers et al. (US 2012/0077044 A1, “Beyers”) in view of Yang et al. (US 2014/0134363 A1, “Yang”) and Fanfani et al. (US 2019/0030857 A1, “Fanfani”).
With respect to claims 10-11 and 13, Beyers discloses a biodisintegratable (i.e., biodegradable) composite comprising at least two substrates that are adessive-bonded to one another by a polyurethane dispersion adhesive where at least one of the substrates is a biodisintegratable polymer foil (Abstract, [0001]). The polyurethane is at least 60% by weight of diisocyanate, polyesterdiol, and at least one bifunctional carboxylic acid selected from dihydroxycarboxylic acid and diaminocarboxylic acid ([0006]). The foil has a thickness of 5-100 µm ([0060]).
While Beyers discloses the substrate includes those made from aliphatic-aromatic polyester and polylactic acid ([0058]), there is no disclosure of a polyester substrate (i.e., a layer B) as presently claimed.
Yang teaches a biodegradable polyester mixture comprising 45-95 wt% polyester I, 5-55 wt% polyester II, 10-25 wt% calcium carbonate, 3-15 wt% talc, 5-25 wt% polylactic acid, and 0-2 wt% erucamide or stearamide ([0002], [0008], [0014-0015], [0095], [0112]). The polyester I is made from C9-C18 dicarboxylic acid such as azelaic acid or sebacic acid, terephthalic acid, and C3-C6 diol and includes poly(butylene sebacate-co-terephthalate) ([0052-0058], [0143]). The polyester II is made from C4-C6 dicarboxylic acid such as adipic acid, terephthalic acid, and C3-C6 diol and includes poly(butylene adipate-co-terephthalate) ([0072-0078], [0080]). Therefore, the composition comprises at least 50 wt% aliphatic-aromatic polyester (i.e., polyester I and polyester II) and 13-40 wt% mineral filler (i.e., calcium carbonate and talc). The composition has good soil degradability ([0021]).
Beyers and Yang are analogous inventions in the field of biodegradable polyesters.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the polymer foil of Beyers to be the biodegradable polyester mixture comprising 45-95 wt% polyester I, 5-55 wt% polyester II, 10-25 wt% calcium carbonate, 3-15 wt% talc, 5-25 wt% polylactic acid, and 0-2 wt% erucamide or stearamide as taught by Yang in order to provide a polymer foil that has good soil degradability (Yang, [0021]).
However, Beyers in view of Yang does not disclose the thickness of the polyurethane layer (corresponding to the claimed layer A).
Fanfani teaches a package comprising a support, a product loaded on the support, and a top web film ([0029]). The top web film comprises an outer seal layer comprising a polyester layer, a tie layer, and an outer abuse layer ([0025-0028], [0075-0077]). The tie layer (i.e., adhesive layer) comprises polyurethane ([0157], [0159]) and has a thickness of 2-20 µm to provide adherence function ([0161]).
Beyers in view of Yang and Fanfani are analogous inventions in the field of biodegradable laminates using polyurethane adhesive layers.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the thickness of the polyurethane adhesive layer of Beyers in view of Yang to have a thickness of 2-20 µm as taught by Fanfani in order to provide an adhesive layer able to provide adherence function (Fanfani, [0161]).
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Beyers et al. (US 2012/0077044 A1, “Beyers”) in view of Yang et al. (US 2014/0134363 A1, “Yang”) and Fanfani et al. (US 2019/0030857 A1, “Fanfani”) as applied to claim 10 above, and further in view of Schumacher et al. (WO 2021/175676 A1, “Schumacher”).
With respect to claim 12, Beyers in view of Yang and Fanfani discloses the polyurethane is at least 60% by weight of diisocyanate, polyesterdiol, and at least one bifunctional carboxylic acid selected from dihydroxycarboxylic acid and diaminocarboxylic acid (Beyers, [0006]) as set forth above. Beyers further discloses the polyurethane has a melting point of less than 80°C (Beyers, [0012]).
However, Beyers in view of Yang and Fanfani does not disclose either the glass transition temperature of the polyurethane being below 20°C, nor where the polyurethane has an enthalpy of fusion below 10 J/g.
Schumacher teaches an aqueous polyurethane dispersion for packaging (page 2, lines 3-9). The polyurethane is made from at least one diisocyanate, at least one polyester diol (i.e., at least one polyesterol), and at least one bifunctional carboxylic acid selected from dihydroxycarboxylic acids and diaminocarboxylic acids, where the polyurethane has a glass transition temperature below 20°C and an enthalpy of fusion lower than 10 J/g (page 2, lines 17-26). The polyurethane adhesive has high quality adhesive properties and rapid biodisintegratability (page 2, line 5).
Beyers in view of Yang and Fanfani and Schumacher are analogous inventions in the field of biodegradable packaging having polyurethane adhesives.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the polyurethane adhesive of Beyers in view of Yang and Fanfani to be the polyurethane made from at least one diisocyanate, at least one polyester diol, and at least one bifunctional carboxylic acid selected from dihydroxycarboxylic acids and diaminocarboxylic acids, where the polyurethane has a glass transition temperature below 20°C and an enthalpy of fusion low than 10 J/g as taught by Schumacher in order to provide a polyurethane adhesive layer having high quality adhesive properties and rapid biodisintegratability (Schumacher, page 2, line 5).
Response to Arguments
Due to the amendment to claim 12, the objection to claim 12 is withdrawn.
Due to the amendment to claims 10 and 12, the 35 U.S.C. 112(b) rejections of claims 10-13 are withdrawn.
Due to the amendment to claim 10, the 35 U.S.C. 103 rejections of claims 10-11 and 13 over Fanfani, the 35 U.S.C. 103 rejection of claim 12 over Fanfani in view of Schumacher, the 35 U.S.C. 103 rejection of claim 10 over Gohil in view of Fanfani, and the 35 U.S.C. 103 rejection of claim 12 over Gohil in view of Fanfani and Schumacher are withdrawn. This is because neither Fanfani nor Gohil disclose a layer comprising at least 60% by weight of an aliphatic-aromatic polyester selected from the group consisting of polybutylene adipate-co-terephthalate, polybutylene azelate-co-terephthalate, and polybutylene sebacate-co-terephthalate. Instead, Fanfani disclose a layer made from a polyester made from an acid component comprising no more than 90 mol% of an aromatic dicarboxylic acid and at least 10 mol% of a C2-C8 aliphatic dicarboxylic acid with one or more glycols including 1,4-butanediol ([0088-0091], [0093-0094]). Similarly, Gohil discloses the use of a sulfonated aliphatic-aromatic polyester film ([0064], [0073], [0094-0095]), but does not disclose the presently claimed aliphatic-aromatic polyester. However, upon updating the searches, new references were found and are applied against the claims as set forth above.
Applicant's arguments filed 10 April 2026 have been fully considered but they are not persuasive.
Regarding the 35 U.S.C. 103 rejections, Applicant argues amended claim 10 requires a specific combination for component B which is not disclosed or suggested by the prior art. Applicant further argues they have demonstrated unexpectedly superior results and points to the Examples for support. The examiner respectfully disagrees.
In response to Applicant’s argument that amended claim 10 requires a specific combination for component B which is not disclosed or suggested by the prior art, this is not found persuasive. As set forth above, the newly cited references render amended claim 10 obvious, and thus the claimed component B is disclosed or suggested by the prior art.
In response to Applicant’s argument that they have demonstrated unexpectedly superior results, this is not found persuasive because the data is not commensurate in scope with the claims for the following reasons.
Firstly, the Examples relate to specific lamination films made from a specific layer A made from a specific polyurethane composition and having a thickness of 4 µm (instant specification, page 14, lines 31-35; pages 16-17, Table 2), whereas the present claims broadly allow for any adhesive layer made from any polyurethane or any acrylate and having a thickness of 0.5-7 µm.
Secondly, the Examples the relate to specific lamination films made from specific layers B made from specific compositions and narrower thicknesses than those presently claimed. Specifically, Example 6 uses a layer B having a thickness of 12 µm made from a specific composition (instant specification, pages 15-16, Table 2). Example 7 uses a layer B having a thickness of 12 µm made from another specific composition (instant specification, pages 15-16, Table 2). Example 8 uses a layer B having a thickness of 12 µm made from a specific composition (instant specification, pages 15-16, Table 2). Example 11 uses a layer B having a thickness of 17 µm and made from another specific composition (instant specification, pages 15-16, Table 2). Example 12 uses a layer B having a thickness of 17 µm made from a specific composition; and layers B/B’ made from a specific composition (instant specification, pages 15-16, Table 2). Example 14 uses a layer B having a thickness of 17 µm made from another specific composition (instant specification, pages 15-16, Table 2). Example 15 uses a layer B having a thickness of 30 µm made from a specific composition (instant specification, pages 15-16, Table 2). Example 18 uses a layer B having a thickness of 50 µm made from a specific composition (instant specification, pages 15-17, Table 2). However, the present claims broadly allow for any layer B comprising at least 60% by weight of any aliphatic-aromatic polyester selected from the group consisting of polybutylene adipate-co-terephthalate, polybutylene azelate-co-terephthalate, and polybutylene sebacate-co-terephthalate, 3-12% by weight of polylactic acid, 3-20 wt% of any mineral filler, and a lubricant selected from erucamide and stearamide in an amount of 0.05-0.3 wt%, where the layer B has a thickness of 5-80 µm if the lubricant is erucamide or 5-50 µm if the lubricant is stearamide. There is no data at the upper or lower end of the claimed amount of aliphatic-aromatic polyester, no data at the upper or lower end of the claimed amount of polylactic acid, no data at the upper end of the claimed amount of mineral filler, and no data at the lower end of the claimed amount of lubricant.
As set forth in MPEP 716.02(d), whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support.” In other words, the showing of unexpected results must be reviewed to see if the results occurred over the entire range, In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). Applicants have not provided data to show that the unexpected results do in fact occur over the entire claimed ranges.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Steven A Rice whose telephone number is (571)272-4450. The examiner can normally be reached Monday-Friday 07:30-16:00 Eastern.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie E Shosho can be reached at (571) 272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/STEVEN A RICE/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787
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