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 .
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 and 10-11 of copending Application No. 18/568,775 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are directed to polylactide resins comprising the same combination of nucleating agents (uracil and a lactide oligomer). The copending claims do not require the crystallinity degree or the glass transition temperature of the polylactide resin composition. However, said properties would be inherent because the contents of the resin are the same, the polylactide resin is the same and the nucleating agents which control such properties are the same.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 7-8, and 11 of copending Application No. 18/565,864 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are directed to polylactide resins comprising the same combination of nucleating agents (uracil and a lactide oligomer). The copending claims do not require the crystallinity degree or the glass transition temperature of the polylactide resin composition. However, said properties would be inherent because the contents of the resin are the same, the polylactide resin is the same and the nucleating agents which control such properties are the same.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 4-6, and 8 of copending Application No. 18/569, 869 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are directed to polylactide resins comprising the same combination of nucleating agents (uracil and a lactide oligomer). The copending claims do not require the crystallinity degree or the glass transition temperature of the polylactide resin composition. However, said properties would be inherent because the contents of the resin are the same, the polylactide resin is the same and the nucleating agents which control such properties are the same.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over being
unpatentable over US 2006/0142505 (Umemoto) in view of US 2006/0247340 (Sato).
As to claims 1-4 and 6-9, Umemoto discloses a composition comprising:
(A) a high-molecular weight aliphatic polyester having a weight-average (Mw) of 120,000 to 1,000,000 such as the exemplified polylactic acid having a Mw of 215,000 [0071] (meets Applicants' polylactide resin);
(B) a low-molecular weight aliphatic polyester having a Mw of 5,000 to 35,000 such as the exemplified polylactic acid having a Mw of 6,900 [0071]. which serves to improve the crystallization rate of the high molecular weight aliphatic polyester [0020] (meets Applicants' second nucleating agent compound containing a lactide oligomer structure); and
(C) a crystal nucleating agent such as talc [0045]/[0050], wherein the compounding ratio of the low-molecular weight aliphatic polyester to the high-molecular weight aliphatic polyester is preferably 10:90 to 90:10 [0014] (overlaps presently claimed second nucleating agent content) (e.g., abstract, [0016-0018], [0020], [0046-0050], examples, claims).
Umemoto discloses [0066]-[0073] treating the composition at a temperature of about 30 to 160°C for up to 30 minutes (overlaps Applicants' "temperature settings of 100 to 130°C product-by-process limitation).
Umemoto does not expressly disclose uracil or orotic acid as the first nucleating agent that would provide the claimed properties.
However, Sato discloses a polylactic acid composition comprising 0.01 to 1 part by weight of uracil nucleating agent (0094). The polylactic acid resin composition has an increased crystallization temperature as compared to a polylactic acid composition having a talc nucleating agent (e.g., Table 3, [0285-0287]). Thus, it would have been obvious to one having ordinary skill in the art to use the uracil nucleating agent of Sato (meets Applicants' first nucleating agent uracil) in place of Umemoto's talc nucleating agent to ensure material reliability while simultaneously improving crystallinity of the resin (0039). The resulting composition comprising both nucleating agents including those preferred within the instant claims would have the claimed glass transition temperature and crystallization temperatures.
As to claim 5, Umemoto discloses the low-Mw polylactic acid and high- Mw polylactic acid are preferably compounded in a 10:90 to 90:10 weight ratio [0014], thus rendering obvious low-Mw polylactic acid amounts of 3 to 25% wt.% for its expected additive effect (0034). For example, when the content is low the crystallization rate is not sufficiently improved and when the content is to high the thermal stability of the polylactide resin composition is reduced (0034).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL L LEONARD whose telephone number is (571)270-7450. The examiner can normally be reached M - F 7:00-4:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached at 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL L LEONARD/Primary Examiner, Art Unit 1763
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