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 .
Election/Restrictions
Applicant's election with traverse of Group I (claims 1-10) in the reply filed on 02/05/2026 is acknowledged. Claims 11-16 are withdrawn. The traversal is on the ground(s) that the overall features of alleged Invention I of claims 1-10 are the same as that of alleged Invention II of claims 11-16. This is not found persuasive because in Group I (claims 1-10), there are still some limitations (for example, in claim 1, lines 6-7, ‘separating the film molded in from the cast roll’) that needs to be searched separately.
Applicant makes several arguments based on MPEP 803 806.03 and the independent and distinct standard. These are not relevant as Unity of Invention is covered under MPEP 1800.
The requirement is still deemed proper and is therefore made FINAL.
Claim Objections
Claims 1-10 are objected to because of the following informalities:
In claim 1, line 8, ‘in an MD direction under conditions’ should read “in a machine direction (MD) under conditions”.
In claim 2, line 3, ’in a TD direction under conditions’ should read “in a transverse direction (TD) under conditions”.
Claims 3-10 depended on claim 1 are objected as well.
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 1-2, 4, 6-10 are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (US 8,889,945).
Regarding claims 1, 8, 9, Wang discloses that, as illustrated in Fig. 1, a method for producing a stretched film containing a poly(3-hydroxybutyrate) resin (ABSTRACT and col. 11, lines 4-30 (i.e., synthetic biodegradable polyester)), the method comprising:
(i) melting a film raw material comprising the poly(3-hydroxybutyrate) resin (col. 11, line 18; it is noticed that, the poly(3-hydroxybutyrate) resin comprises poly(3-hydroxybutyrate-co-3-hydroxyhexanoate) (col. 11, line 22) (related to claim 8)) and another resin (e.g., aliphatic polyesters (col. 11, line 13) (related to claim 9)) having a glass transition temperature lower than 0 °C (e.g., it is noticed that, aliphatic polyesters (i.e., the other resin) may have a glass transition temperature around -60 °C) and extruding the molten film raw material onto a cast roll to mold a film (col. 13, lines 23-40 (i.e., the compounded material is then supplied to an extrusion apparatus 80 and cast onto a casting roll 90 to from a single-layered precursor film 10a (lines 25-27)));
(ii) separating the film molded in (i) from the cast roll under conditions where the film has a temperature of from 0 to 60 °C (col. 13, lines 31-32; It is noticed that, as illustrated in Fig. 1, the solidified film 10a is separated from the casting roll 90 around a temperature of 20 to 60 °C (overlapping the claimed range of 0 to 60 °C)); and
(iii-a) stretching the film obtained in (ii) in an MD direction under conditions where the film has a temperature of from 10 to 45°C (col. 13, lines 41-67 and col. 14, lines 1-15 (e.g., if desired, some of the rolls of the MDO (i.e., machine direction orienteer (line 63)) 100 may act as preheat rolls. If present, these first few rolls heat the film 10a above room temperature (e.g., to 125 °F (or 52 °C)) (col. 14, lines 8-11) (i.e., above room temperature overlapping the claimed range of 10 to 45°C))), wherein
the stretched film comprises from 1 to 100 parts by weight of the other resin per 100 parts by weight of the poly(3-hydroxybutyrate) resin (col. 11, lines 58-67 and col. 12, lines 1-2) (e.g., in some embodiments, 5 wt. % to about 60 wt. % (line 60) of the other resin (e.g., aliphatic polyesters in the synthetic biodegradable polyester) overlaps the claimed range of 1 to 100 parts by weight of the other resin per 100 parts by weight of the poly(3-hydroxybutyrate) resin).
For one of ordinary skill in the art at the time the invention was filed would have considered the invention to have been obvious because the ranges taught by Wang et al. overlap the instantly claimed ranges and therefore are considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, MPEP 2144.05.
Regarding claim 2, Wang discloses that, in addition (i.e., for (iii-b)), the uniaxially oriented film may also be oriented in the cross-machine direction to form a “biaxially oriented” film (col. 13, lines 53-55). Here, the cross-machine direction can be considered as a TD direction (i.e., transverse direction). Wang discloses that, machine direction orienteer (col. 13, line 63) 100 may act as preheat rolls. If present, these first few rolls heat the film 10a above room temperature (e.g., to 125 °F (or 52 °C)) (col. 14, lines 8-11). Thus, above room temperature overlaps the claimed range of 10 to 80 °C.
For one of ordinary skill in the art at the time the invention was filed would have considered the invention to have been obvious because the range taught by Wang et al. overlaps the instantly claimed range and therefore are considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, MPEP 2144.05.
Regarding claim 4, Wang discloses that, as illustrated in Fig. 1, a method for producing a stretched film containing a poly(3-hydroxybutyrate) resin (ABSTRACT and col. 11, lines 4-30 (i.e., synthetic biodegradable polyester)). It is noticed that, poly(3-hydroxybutyrate) (PHB) resin may have a glass transition temperature of 0 °C to 10 °C.
In Example 1 of the teachings of Wang (col. 19, lines 39-44 and col. 20, lines 1-8), the temperature profiles of the seven heating zones of the extruder was 70 °C, 85 °C, 140 °C, 145 °C, 150 °C, 150 °C, and 145 °C, respectively (col. 12, lines 4-6).
Thus, wang discloses that, the film molded in (i) has a temperature that is more than 10 °C higher than a glass transition temperature of the poly(3-hydroxybutyrate) (PHB) resin.
Regarding claims 6, 7, Wang discloses that, as illustrated in Fig. 1, the resulting film 10b may then be wound and stored on a take-up roll 60 (col. 14, lines 16-17). Wang discloses that, when the MDO 100 is illustrated with eight rolls (col. 14, lines 1-2). The progressively faster speeds of adjacent rolls in the MDO act to stretch the film 10a (col. 14, lines 12-14). Thus, at least Wang discloses that, these rolls can rotate at different speeds (related to claim 7).
Regarding claim 10, Wang discloses that, other components for fabricating the film may contain polybutylene succinate adipate (col. 11, lines 25-26).
Claims 3, 5 are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (US 8,889,945) as applied to claim 1 above, further in view of Lee et al. (EP2692508).
Regarding claims 3, 5, Wang discloses that, in the additional biaxially orientation (i.e., after the uniaxially orientation in (iii-a)), for example, the film may be clamped at its lateral edges by chain clops and conveyed into a tenter oven. In the tenter oven the film may be reheated and drawn in the cross-machine direction to the desired draw ratio by chain clips diverged in their forward travel (col. 13, lines 53-59).
Further, in the teachings of Lee, tenter oven for stretching film, holding its edges with clips, the uniaxially stretched film was passed through the preheating zone, set to a temperature of 100 °C and introduced into the stretching zone (page 15, [0157], lines 1-2). Thus, Lee discloses that, (iv) heating the film obtained in (iii-a) to a temperature which is at least 10 °C higher than the temperature of the film during (iii-a) and that is at least70 °C.
It is noticed that, in the teachings of Lee, the film stretch ration may change over the range of about 3 to 7 (page 10, [0101]. Lines 4-5) (overlapping the claimed rage of 2 to 8 in claim 5).
For one of ordinary skill in the art at the time the invention was filed would have considered the invention to have been obvious because the ranges taught by Wang et al. overlap the instantly claimed ranges and therefore are considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, MPEP 2144.05.
It would have been obvious to use the method of Wang to have the stretching film processes as Lee teaches that it is known to heat the film obtained in (iii-a) to a temperature which is at least 10 °C higher than the temperature of the film during (iii-a) and that is at least70 °C and the film stretch ration may change over the range of about 3 to 7 (overlapping the claimed rage of 2 to 8). It has been held that the combination of known technique to improve similar method is likely to be obvious when it does not more than yield predictable results to one of ordinary skill in the art. KSR Int’l Co. v. Teleflex Inc., 82 USPQ2d 1385 (2007).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHIBIN LIANG whose telephone number is (571)272-8811. The examiner can normally be reached on M-F 8:30 - 4:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alison L Hindenlang can be reached on 571 270 7001. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SHIBIN LIANG/Examiner, Art Unit 1741
/ALISON L HINDENLANG/Supervisory Patent Examiner, Art Unit 1741