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 Rejections - 35 USC § 101/112
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 10, 11 are rejected under 35 U.S.C. 101 because the claimed invention is not supported by either a specific and substantial asserted utility or a well-established utility.
The claims recite a use limitation without providing steps of using.
Claims 10, 11 are also rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph. Specifically, because the claimed invention is not supported by either a specific and substantial asserted utility or a well-established utility for the reasons set forth above, one skilled in the art clearly would not know how to use the claimed invention.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1 – 12 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the meets and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claims 1, 8 each recites the broad amounts or steps, and each of the claim also recites preferred amounts or steps which is/are the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Other dependent claims also recite broader and narrower ranges which are indefinite. For the sake of examination, broader limitations are considered.
Claim 8 recites the limitation "fourth component D" in claim 1. There is insufficient antecedent basis for this limitation in the claim.
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.
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 1 – 4, 7, 10, 11 are rejected under 35 U.S.C. 103 as being unpatentable over Saiki et al. (US 4,031,165)
In regards to claim 1, Saiki teaches a process for preparing polyester copolymer comprising reacting an aromatic polyester (I) with an aliphatic polyester (II) wherein the aromatic polyester is prepared from terephthalic acid and a diol, and the ratio of the aromatic polyester (I) to the aliphatic polyester (II) is 0.25 to 9 (abstract). The other dicarboxylic acid includes aliphatic dicarboxylic acid such as adipic acid (column 2 lines 19 – 26). The aliphatic polyester (II) is prepared from aliphatic dicarboxylic acid such as adipic acid and aliphatic glycol containing 2 to 10 carbon atoms such as 1,4-butanediol (column 2 lines 32 – 47).
The diols useful for either polyester I or polyester II can be replaced with poly(alkylene oxide) glycol such as poly(tetramethylene oxide) glycol, i.e., poly (1,4-butanediol), having a molecular weight of from 500 to 5,000 and present at less than 30 mol% of the total diol (column 2 lines 59 – 65). Block polymerization reaction of aromatic polyester (1) and aliphatic polyester (II) can provide (I)/(II) at weight ratios of from 90/10 to 20/80 (column 5 lines 14 – 21).
In example 1 dimethyl terephthalate at 97 parts is reacted with tetramethylene glycol (i.e., 1,4-butane diol) at 67 parts to prepare the aromatic polymer (I) and dimethyl adipate at 174 parts and ethylene glycol at 137 parts are reacted to provide the aliphatic polymer (II), thus providing a calculated amounts of about 0.5 mol % dimethyl terephthalate, 0.35 mol % of tetramethylene glycol, 1 mol% of dimethyl adipate and 2.21 mol% of ethylene glycol. Based on the ratios of polymer I to II of from 90/10 to 20 to 80, and since poly (tetramethylene oxide) glycol is useful at from 0 to 30 mol%, the claimed ranges would be overlapped.
Poly (tetramethylene oxide) glycol, i.e., poly (1,4-butanediol) having molecular weight of from 500 to 5000 provides the limitation of the third component C of the claim where n is calculated to be from about 6 to 60.
In regards to claims 2 – 4, Saiki teaches the polyether ester having the claimed limitations as previously stated.
In regards to claim 7, Saika teaches the polyether ester having the claimed components in amounts overlapping the claimed range and would be expected to have similar properties.
In regards to claims 10, 11, Saika teaches process of preparing the polyester and the product prepared and thus appears to provide the preparation of compost-degradable product and food wrap as claimed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TAIWO OLADAPO whose telephone number is (571)270-3723. The examiner can normally be reached 8-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Prem Singh can be reached at 571-272-6381. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TAIWO OLADAPO/Primary Examiner, Art Unit 1771
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