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 Arguments
In their response dated 9/4/2026 the applicants amended independent claim 1 to recite 5-15 parts by mass of crosslinking agents. Examiner agrees with the applicants that Miyoshi as applied in the first office action on the merits does teach carbodiimide compound as crosslinking agent, however at that time the amount of the crosslinker was not claimed. Miyoshi teaches up to 3 parts of carbodiimide, newly recited claims require 5-15. Consequently, Miyoshi is no longer applicable as a prior art. However, updated search provided teachings of Endo (US 2010/0093888) or Goddard (US 2021/0054147) both of which teach 0.1-10 parts of crosslinker. This office action is therefore final, necessitated by amendment.
Double Patenting rejection of record will be restated as well. Previous Double Patenting rejection was a statutory rejection, however, amendment necessitated revision to obviousness type Double Patenting.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 3-11 are rejected under 35 U.S.C. 103 as being unpatentable over Hale (US 2005/0154114) in view of Goddard (US 2021/0054157).
With respect to claim 1, Hale discloses a molding composition comprising:
5-95 wt.% of at least one flexible biodegradable polyester A,
5-95 wt.% of at least one rigid biodegradable polyester B, and
Cellulose fibers.
Polymer A includes polybutylene succinate which is a saturated polyester with tradename Bionolle series 1001 and polybutylene succinate adipate series 3001, which have weight average molecular weight in a range of 40,000-300,000 and Mw/Mn of 1.8-4.5 [0069-0070] encompassing maximum value 1 or 2 depending on the molecular weight.
Polymer B is polylactic acid and polyhydroxybutyric acid [0077] molecular weight of 50,000-110,000 encompassing maximum value 1 or 2 depending on molecular weight.
Based on the content of polyesters A and B, and the fact that molecular weights of both also overlap, the teachings of Hale encompass using higher or lower content of both polymers (meeting area value).
Cellulose fibers of Hale include those derived from wood, plant leaves and stems [0140].
With respect to claim 4, the content of PBS can be larger than the content of PLA. Cellulose fibers can be utilized in an amount of 0-90 wt.% preferably 3-80 wt.% by weight of polymer blend [0142]. Consequently, Hale’s teachings encompass composition where the cellulose fibers can be 80 wt.% and each of the polymers would therefore be less than the content of the fibers.
With respect to claim 5, if the contents of composition are normalized to aliphatic polyester being 100 parts, then PLA will be 100 parts of less encompassing claims 10-70 parts, and cellulose fiber will be based on the total content of polymer blend. Assuming PBS is 100 parts, PLA is 50 parts, then glass fibers can be up to 120 parts.
With respect to claims 6 and 7, PBS and PBSA meet the limitation of the aliphatic saturated polyester.
With respect to claims 8 and 9, PLA meets the limitation of highly polar polyester.
With respect to claim 10, while Hale does not disclose the length of the fiber, the reference teaches aspect ratio of at least 10:1 preferably at least 25:1, which means that for 1 micron diameter the fiber length would be 25 microns which would encompass the claimed fiber length of less than 500 microns.
With respect to claim 11, prior art of Hale teaches using flame retardants in amount of 5-40 wt.% [0102].
Hale teaches use of his composition in packaging films (including those for designated for food packaging), toys or automotive trim. While use of crosslinking is not explicitly taught Hale discloses use of compatibilizers, which is polyacrylate compound having carboxylate functionality capable of crosslinking disclosed therein biodegradable polymers. The polyacrylates are used in an amount of 0.5-10 parts by weight.
Goddard discloses biodegradable polymer composition to make used to make food packaging (Abstract) which uses crosslinking agent. Polymers utilized include PBAT [0044] and PLA which may be drafted with carboxylic acid. Polymers can be utilized as blends [0110]
With respect to claims 1 and 3, in addition to grafted PLA, Goddard discloses use of crosslinking agents. Crosslinking agents include oxazolines, epoxides and carbodiimides [0057], utilized in an amount of 0.1-10 parts by mass.
In the light of the above disclosure, it would have been obvious to one having ordinary skill in the art at the time instant invention was filed, that in order to form an article requiring structural integrity a crosslinking agent has to be utilized in addition to active compatibilizer.
Such modification would allow the article to perform its function without premature biodegradation.
Claims 1, 3-11 are rejected under 35 U.S.C. 103 as being unpatentable over Hale (US 2005/0154114) in view of Endo (US 2010/0093888)
With respect to claim 1, Hale discloses a molding composition comprising:
5-95 wt.% of at least one flexible biodegradable polyester A,
5-95 wt.% of at least one rigid biodegradable polyester B, and
Cellulose fibers.
Polymer A includes polybutylene succinate which is a saturated polyester with tradename Bionolle series 1001 and polybutylene succinate adipate series 3001, which have weight average molecular weight in a range of 40,000-300,000 and Mw/Mn of 1.8-4.5 [0069-0070] encompassing maximum value 1 or 2 depending on the molecular weight.
Polymer B is polylactic acid and polyhydroxybutyric acid [0077] molecular weight of 50,000-110,000 encompassing maximum value 1 or 2 depending on molecular weight.
Based on the content of polyesters A and B, and the fact that molecular weights of both also overlap, the teachings of Hale encompass using higher or lower content of both polymers (meeting area value).
Cellulose fibers of Hale include those derived from wood, plant leaves and stems [0140].
With respect to claim 4, the content of PBS can be larger than the content of PLA. Cellulose fibers can be utilized in an amount of 0-90 wt.% preferably 3-80 wt.% by weight of polymer blend [0142]. Consequently, Hale’s teachings encompass composition where the cellulose fibers can be 80 wt.% and each of the polymers would therefore be less than the content of the fibers.
With respect to claim 5, if the contents of composition are normalized to aliphatic polyester being 100 parts, then PLA will be 100 parts of less encompassing claims 10-70 parts, and cellulose fiber will be based on the total content of polymer blend. Assuming PBS is 100 parts, PLA is 50 parts, then glass fibers can be up to 120 parts.
With respect to claims 6 and 7, PBS and PBSA meet the limitation of the aliphatic saturated polyester.
With respect to claims 8 and 9, PLA meets the limitation of highly polar polyester.
With respect to claim 10, while Hale does not disclose the length of the fiber, the reference teaches aspect ratio of at least 10:1 preferably at least 25:1, which means that for 1 micron diameter the fiber length would be 25 microns which would encompass the claimed fiber length of less than 500 microns.
With respect to claim 11, prior art of Hale teaches using flame retardants in amount of 5-40 wt.% [0102].
Hale teaches use of his composition in packaging films (including those for designated for food packaging), toys or automotive trim. While use of crosslinking is not explicitly taught Hale discloses use of compatibilizers, which is polyacrylate compound having carboxylate functionality capable of crosslinking disclosed therein biodegradable polymers. The polyacrylates are used in an amount of 0.5-10 parts by weight.
Endo discloses biodegradable polymer composition to make used to make food packaging (Abstract) which uses crosslinking agent. Polymers utilized include PLA as well as other polymerized monomers which do not affect the biodegradability of the composition. Secon polymer includes PBAT and PBT [0101] which are preferred embodiment [0103, 0104]
With respect to claims 1 and 3, Endo discloses use of crosslinking agent, specifically carbodiimide (component B) [0066] which is formed from isocyanates [0072] amount of 0.1-10 parts by mass [0088].
With respect to claim 11, Endo discloses use of Phosphoric acid metal salt as component C which is an example of flame retardant [0080] which is utilized in an amount of 0.01-5 parts by weight. Flame retardants are generally disclosed by Hale.
In the light of the above disclosure, it would have been obvious to one having ordinary skill in the art at the time instant invention was filed, that in order to form an article requiring structural integrity a crosslinking agent has to be utilized in addition to active compatibilizer.
Such modification would allow the article to perform its function without premature biodegradation. In case of carbodiimides the composition has improved wet heat stability [0066] wherein the resulting molded article has good heat stability for use in automotive parts (both interior and exterior) which is also the case in Hale.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Hale (US 2005/0154114) in view of Goddard (US 2021/0054157) or Endo (US 2010/0093888) in further view of Miyoshi (WO 2018/013150, US 2022/0325077 is used as English translation)
Discussion of Hale from paragraph 1 of this office action is incorporated here by reference. In summary, Hale discloses composition comprising PBS and PLA polymers along with cellulose fibers and flame retardant. The composition of Hale is utilized to form molded articles (claims 84-87, [0152]), and while presence of crosslinking agents is implied, the focus of Hale’s reference is in the blend of components.
While Hale disclosed cellulose fibers for use in its polymer blend, the only physical information about the fibers is their aspect ratio. The aspect ratio of Hale is at least 10:1, at least 25:1 more preferably at least 100:1 or more than 250:1, however no actual length was disclosed. Consequently, one of ordinary skill in the art would look to what is known to select cellulose fibers with aspect ratio acceptable for the composition of Hale.
Miyoshi discloses a molding composition [0023]comprising polymers such as PLA and PBS along with cellulose fibers. Cellulose fibers have aspect of at least 30:1 which is already withing Hale’s description [0090]. Fibers have a diameter of under 1-250 nm [0130]. With the aspect ratio as defined in both Hale and Miyoshi, the fiber length will be at least 30nm, the length at aspect ratio of 30:1 will be 30 nm (for 1 nm diameter) and 75 microns (for 250 nm diameter).
In the light of the above disclosure, it would have been obvious to one having ordinary skill in the art at the time instant invention was filed to utilize the cellulose fibers of Miyoshi in the teachings of Hale. The aspect ratio of the cellulose fibers in Miyoshi is within the same range as the aspect ratio of cellulose fibers enabled by Hale. Consequently, the fibers of Miyoshi meet the requirements set forth in Hale.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1 and 3-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of copending Application No. 18/473,339 (‘339). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claim 1 of ‘339 discloses composition comprising:
Cellulose fibers
Highly polar polyester
Aliphatic polyester
Flame retardant in amount of 1-10 parts which encompasses instant claims 1 and 11.
While co-pending invention does not disclose molecular weight along with maximum 1 maximum 2, under broadest reasonable interpretation, co-pending application is much broader in scope encompassing instant claim 1.
Claims 2 and 3 of ‘339 require the same limitations as instant claims 4 and 5.
Claims 4 and 5 of ‘339 are the same as instant claims 6 and 7.
Claims 6 and 7 of ‘339 are the same as instant claims 8 and 9.
Claim 8 of ‘339 is the same as instant claim 10
It should be noted that while ‘339 does not recite claims directed to crosslinking agents, both references are directed to molding compositions, where the presence of crosslinking agents is implied.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Correspondence
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/KATARZYNA I KOLB/Primary Examiner, Art Unit 1767 September 28, 2026
