DETAILED ACTION
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-8 in the reply filed on May 5, 2026 is acknowledged. The traversal is on the ground(s) that Hale is directed to a fundamentally different technical objective compared to the present application and that the selection of materials from Hale's teachings relies on improper hindsight. Applicant further argues that Kimura does not identify all the .
This is not found persuasive because the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). It is also noted that the properties relied upon that are argued as failed to be recognized by the prior art are not required by the claims.
Additionally, in response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). As discussed in the previous office action, Hale teaches the disclosed materials in ranges that overlap the claimed ranges, therefore a case of prima facie obviousness has been made.
However, it is noted the Groups would still lack unity of invention in light of the combination of Wong in view of Kimura below.
The requirement is still deemed proper and is therefore made FINAL.
Claims 9-10 and 12-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 May 5, 2026.
Summary
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Currently claims 9-10 and 12-15 are withdrawn, resulting in claims 1-8 pending for examination.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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 2-5 and 7 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 metes and bounds of the patent protection desired. See MPEP § 2173.05(c).
In the present instance:
claim 2 recites the broad recitation of a list of possible first polymers, and the claim also recites "preferably PBS" which is the narrower statement of the range/limitation;
claim 3 recites the broad recitation of a list of possible second polymers, and the claim also recites "preferably PBAT" which is the narrower statement of the range/limitation;
claim 4 recites the broad recitation “wherein the polymer composition comprises from at least 2.0 wt% by weight to at most 10.0 % by weight”, and the claim also recites "preferably at least 3.0 % by weight to at most 9.0 % by weight, preferably at least 4.0 % by weight to at most 8.0 % by weight, preferably at least 5.0 by weight to at most 7.0% by weight, preferably at least 5.5 % by weight to at most 6.5 % by weight" which is the narrower statement of the range/limitation;
claim 5 recites the broad recitation “wherein the polymer composition comprises from at least 1.0 % by weight to at most 7.0 % by weight”, and the claim also recites "preferably at least 1.0 % by weight to at most 5.0 % by weight, preferably at least 1.2 % by weight to at most 4.0 % by weight, preferably at least 1.5 % by weight to at most 3.0 % by weight, preferably at least 1.7 % by weight to at most 2.5 % by weight" which is the narrower statement of the range/limitation; and
claim 7 recites the broad recitation of a list of possible fatty acid bisamide or alkyl-substituted fatty acid monoamide, and the claim also recites "preferably wherein the fatty acid bisamide is N,N'-ethylenebis(stearamide) (EBS)" which is 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.
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.
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.
Claim(s) 1-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wong (US 2015/0337094) in view of Kimura (US 2005/0203258)1.
With respect to claims 1-8, Wong teaches biodegradable films, fabrics made of knitted, woven, or nonwoven fabrics and laminates (paragraph [0001]). The products comprise a blend of PHAs and PLAs wherein the content of the PLA is 1%-95% in mass percent (paragraph [0016]). The nonwoven fabrics can be made of filaments and/or staple fibers of the blend (paragraph [0019]). In a preferred embodiment the biodegradable and compostable woven, knitted, and nonwoven fabrics have improved mechanical properties, elongation-to-break, flexibility, and impact resistance when the blend includes 5-50% PBAT, 5-40% PBS, and PLA (paragraph [0034]).
The component weight percent ranges of Wong substantially overlap the claimed ranges in the instant claims 1 and 4-5. It has been held that obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP 2144.05 (I). Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to have selected from the overlapping portion of the range taught by Wong, because overlapping ranges have been held to establish prima facie obviousness.
Wong is silent as to the composition comprising from at least 0.5 % by weight to at most 10.0% by weight of a fatty acid bisamide or an alkyl-substituted fatty acid monoamide, wherein the fatty acid bisamide is preferably N,N’-ethylenebis(strearamide) (EBS).
Kimura teaches polylactic acid fibers comprising 0.1 to 5 weight % of fatty acid bisamide and/or alkyl-substituted fatty acid monoamide (paragraphs [0017]-[0018]). By including the fatty acid bisamide and/or alkyl-substituted fatty acid monoamide the surface friction coefficient of the polylactic acid fibers can be reduced (paragraphs [0077]-[0078]). Suitable fatty acid bisamide and/or alkyl-substituted fatty acid monoamide include ethylene-bis amide stearate (paragraph [0080], polylactic acid P2 used in the examples paragraph [0316]).
Since both Wong and Kimura teach polylactic acid fibers, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the fibers of Wong to include 0.1-5 weight % fatty acid bisamide and/or alkyl-substituted fatty acid monoamide, preferably ethylenebis(stearamide), in order to reduce the surface friction of the fibers.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Larissa Rowe Emrich whose telephone number is (571)272-2506. The examiner can normally be reached Monday - Friday, 7:30am - 4:00pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Marla McConnell can be reached at 571-270-7692. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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LARISSA ROWE EMRICH
Examiner
Art Unit 1789
/LARISSA ROWE EMRICH/Examiner, Art Unit 1789
1 Cited in IDS
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