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 .
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.
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 XXX are rejected under 35 U.S.C. 103 as being unpatentable over Hale (US 2005/0154114).
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).
Cellulosic 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.
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, 4-10 are rejected under 35 U.S.C. 103 as being unpatentable over Hale (US 2005/0154114).
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]
Claims 2 and 3 are rejected under 35 U.S.C. 103 as being unpatentable over Hale (US 2005/0154114 in view of Shoji (US 2015/0105521).
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.
Since Hale does not teach crosslinking agents utilized to make molded article one of ordinary skill in the art would have to look elsewhere to selected crosslinking agents which are suitable for use with PBS and PLA.
Shoji discloses composition comprising polylactic acid which is also utilized to make molded article via injection molding much like Hale.
Shoji discloses use of carbodiimides, which reacts with polylactic acid and other monomers. Such reaction not only compatibilizes the polymers but also crosslinks without degrading the polymers [0110-0112].
In the light of the above disclosure, it would have been obvious to one having ordinary skill in the art at the time instant inventio was filed to utilize carbodiimide of Shoji with the polyesters of Hale and thereby obtain the claimed invention. Such modification would crosslink polyesters without causing degradation to the polymers.
Claims 2 and 3 are rejected under 35 U.S.C. 103 as being unpatentable over Hale (US 2005/0154114 in 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
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1-11 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-8 of copending Application No. 18/473,339(,339). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
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.
Correspondence
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/KATARZYNA I KOLB/Primary Examiner, Art Unit 1767 June 18, 2026
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