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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 5/08/2024 & 3/16/2026 have been considered by the examiner.
Election/Restrictions
Applicant’s election without traverse of 1-7 in the reply filed on 3/12/2026 is acknowledged.
Claims 8-11 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 3/12/2026.
Claim Objections
Claim 1 is objected to because of the following informalities: "molded in the (i) from the cast roll" in line 6 and "obtained in the (ii) in an MD direction" in line 8 should read "molded in the step (i) from the cast roll" and "obtained in the step (ii) in an MD direction " . Appropriate correction is required.
Claim 1 is objected to because of the following informalities: ". Appropriate correction is required.
Claim objected to because of the following informalities: ". Appropriate correction is required.
Claim objected to because of the following informalities: ". Appropriate correction is required.
Claim objected to because of the following informalities: ". Appropriate correction is required.
Claim objected to because of the following informalities: ". Appropriate correction is required.
Claim objected to because of the following informalities: ". Appropriate correction is required.
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 3-4 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.
Claim 3 recites the limitations “obtained in the (iii-a) or (iii-b)" in line 3 and "during the (iii-a) or (iii-b)" in line 4 and depends from claim 1. However, step (iii-b) is established in claim 2. For examination purposes, step (iii-b) is not being considered within the limitation.
Claim 4 recites the limitation "and/or the (iii-b)" in line 2 and depends from claim 1. However, step (iii-b) is established in claim 2. For examination purposes, step (iii-b) is not being considered within the limitation.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim(s) 1 and 3-6 are rejected under 35 U.S.C. 103 as being unpatentable over Wang (US 2012/0150137 A1)
Regarding claim 1, Wang teaches method for producing a stretched film (Figure 1; paragraph 0060; claim 27) containing a poly(3-hydroxybutyrate) resin (paragraph 0045, discloses the film may contain one or more synthetic biodegradable polyesters and discloses poly-3-hydroxybutyrate (PHB)), the method comprising:
i) melting a film raw material (paragraph 0057, The raw materials (e.g., thermoplastic starch polymer, elastomeric polymer, etc.) may be supplied to a melt blending device, either separately or as a blend) comprising the poly(3-hydroxybutyrate) resin (paragraph 0045) and extruding the molten film raw material (extrusion apparatus 80 in Figure 1; paragraph 0057) onto a cast roll to mold a film (casting roll 90; paragraph 0058, cast onto a casting roll 90 to form a single-layered precursor film 10 a);
(ii) separating the film molded in the step (i) from the cast roll (as shown in Figure 1); and
(iii-a) stretching the film obtained in the step (ii) in a MD direction (100 in Figure 1; paragraph 0060),
wherein the poly(3-hydroxybutyrate) resin comprises poly(3-hydroxybutyrate-co-3-hydroxyhexanoate).
Wang teaches all the elements of claim 1, but does not disclose the film having a crystallinity of from 20 to 45% after separating from the cast roll; nor having a crystallinity of from 30 to 55% after stretching in a MD direction. However, Wang discloses the degree of crystallinity of the polymer may be from about 3% to about 30% (paragraph 0018). Further, considering that Wang discloses a stretched film substantially identical to the claimed stretched film and being made by substantially identical processes; the stretched film of Wang would inherently possess the claimed properties.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
The Patent and Trademark Office can require applicants to prove that prior art products do not necessarily or inherently possess characteristics of claimed products where claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes; burden of proof is on applicants where rejection based on inherency under 35 U.S.C. § 102 or on prima facie obviousness under 35 U.S.C. § 103, jointly or alternatively, and Patent and Trademark Office’s inability to manufacture products or to obtain and compare prior art products evidences fairness of this rejection, In re Best, Bolton, and Shaw, 195 USPQ 431 (CCPA 1977).
Regarding claim 2, Wang teaches all the elements of claim 1, but does not disclose (iii-b) stretching the film obtained in the step (iii-a) in a TD direction to obtain a film (paragraph 0059, the uniaxially oriented film may also be oriented in the cross-machine direction to form a “biaxially oriented” film…the film may be reheated and drawn in the cross-machine direction to the desired draw ratio) having a crystallinity of from 30 to 60% (see claim 1).
Regarding claim 3, Wang further discloses (iv) heating the film obtained in the steps (iii-a) or (iii-b) to a temperature higher than a temperature during the steps (iii-a) or (iii-b) (paragraph 0060, some of rolls act as preheat rolls (i.e., temperature progressively gets higher)) to obtain a film having a crystallinity of at least 60% (see claim 1).
Regarding claim 4, Wang teaches all the elements of claim 1, but does not teach a stretch ratio in the step (iii-a) is from 2 to 8. However, Wang discloses the stretch film is stretched to a desired draw ratio (paragraph 0059). In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. It would have been obvious to one having ordinary skill in the art to have determined the optimum values of the relevant process parameters through routine experimentation in the absence of a showing of criticality.
Regarding claim 5, Wang further discloses (Previously Presented): The method according to claim 1, wherein the film is continuously transferred from the step (i) to a final step (Figure 1; paragraphs 0060-0061).
Regarding claim 6, Wang further discloses in the step (iii-a), the stretching in the MD direction is performed by using a plurality of rolls (100 in Figure 1; paragraph 0060, While the MDO 100 is illustrated with eight rolls, it should be understood that the number of rolls may be higher or lower, depending on the level of stretch that is desired and the degrees of stretching between each roll) on which the film is transferred and by operating the plurality of rolls at different rotational speeds (paragraph 0059, drawn by rolls rotating at different speeds of rotation such that the sheet is stretched to the desired draw ratio; paragraph 0060, The progressively faster speeds of adjacent rolls in the MDO act to stretch the film 10 a.).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Doi (US 5,917,002) discloses a method of producing a poly(3-hydroxybutanoic acid) film having a film crystallinity of 60% to 80%.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Virak Nguon whose telephone number is (571)272-4196. The examiner can normally be reached Monday-Thursday (and alternate Fridays) 7:30-5:00.
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/VIRAK NGUON/Examiner, Art Unit 1741 4/30/2026
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