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 .
Response to Amendment
The Amendment filed June 18, 2026 has been entered. Claims 1, 3-10, 11-16, 17, 18 remain pending in the application. Claims 1, 3-10, 17, 18 are examined. Claims 11-16 are withdrawn.
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 17, 18 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 pre-AIA the applicant regards as the invention.
Claim 17 recites the limitations "resins contained" in line 1. Because claim 17 is depended on claim 1, it is unclear how “resins” in claim 17 is related to claim 1 which recites specifically “the poly(3-hydroxybutyrate) resin and another resin” but does refer to them as “resins” or list any other resin components. Claim 17 is indefinite.
Claim 17 recites the limitations "the other resin" in line 2. There is insufficient antecedent basis for these limitations in the claim. It is unclear which or where the item is pointed out. It is unclear the difference between ‘another resin’ in claim 1 (line 4) and ‘the other resin’ in claim 17. The claim 17 is indefinite.
Claim 18 recites “the other resin comprises” in lines 1-2. Because in claim 17, ‘resins consist of … the other resin’ are recited, it is unclear the relationship between the limitations ‘consist of’ in claim 17 and ‘comprises’ in claim 18. Claim 18 is indefinite.
Claim 18 depended on claim 17 are rejected 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, 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).
(iii-b) Wang discloses that, in addition, 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, the 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) or (iii-b)), 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) or (iii-b) 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 ratio 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) or (iii-b) to a temperature which is at least 10 °C higher than the temperature of the film during (iii-a) or (iii-b) 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).
Allowable Subject Matter
Claims 17, 18 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
The base reference Wang does not disclose that, the thermoplastic composition used to form the film only includes poly(3-hydroxybutyrate-co-3-hydroxyhexanoate) (col. 11, line 22) and another resin (e.g., aliphatic polyesters).
The other reference(s) fails to disclose thee features as well.
Response to Arguments
Applicant's arguments filed 6/18/2026 have been fully considered. They are not persuasive.
In response to applicant’s arguments (as amended) in claim 1 that the base reference Wang does not disclose 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, it is not persuasive.
Basically, Wang discloses that, in (col. 11, lines 58-67 and col. 12, lines 1-2), in some embodiments, 5 wt. % to about 60 wt. % (line 60) of the other resin (e.g., aliphatic polyesters is 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).
Regarding arguments (as amended) in claim 17 that Wang does not disclose the stretched film resin consists of poly(3-hydroxybutyrate-co-3-hydroxyhexanoate) and another resin having a glass transition temperature lower than 0 °C, it is persuasive.
Regarding arguments (as amended) in claim 1 that the base reference Wang fails to disclose the specific temperature conditions of the film when stretching it in TD direction, it is not persuasive.
Wang discloses that, in addition, 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).
It is noticed that, when the film is stretched in one direction, for example, a MD direction, the other direction, for example, a TD direction, will be impacted/stretched as well.
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, the above room temperature overlaps the claimed range of 10 to 80 °C.
As mentioned above, in the teachings of Wang, the cross-machine direction can be considered as a TD direction (col. 13, lines 53-55).
It would have been obvious for one ordinary skilled in the art to apply the same or similar temperature to heat the film 10a when stretching in both the machine direction and the transverse direction.
The Examiner notices the more experimental data presented in the Declaration filed on 6/18/2026.
Overlapping ranges are prima facie evidence of obviousness. It would have been obvious to one having ordinary skill in the art to have selected the portion of [Wang's temperature range] that corresponds to the claimed range. In re Malagari, 184 USPQ 549 (CCPA 1974).
Regarding arguments (as amended) in claim 3 that the reference Lee does not describe the claimed step (iv): heating the film obtained in (iii-b), it is not persuasive.
Lee disclosed that, in [0157] (lines 22-23), the film had both of its edges trimmed and taken up on take up equipment to obtain a biaxially stretched film with a thickness of 188 µm and a width of 3450 mm. Thus, Lee discloses the stretching including both the TD direction (i.e. for (iii-b)) and the MD direction (i.e., for (iii-a)).
In general, the transposition of process steps or the splitting of one step into two, where the processes are substantially identical or equivalent in terms of function, manner and result, was held to be not patentably distinguish the processes. Ex parte Rubin, 128 USPQ 440 (Bd. Pat. App. 1959).
Therefore, it would have been obvious to one of ordinary skill in the art to heat the film obtained after stretching in MD direction in the method of Lee thereby arriving at the claimed invention, with the reasonable expectation that at least heating the film during the separately stretching processes.
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 extension fee 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 date of this final action.
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.
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
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