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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said” (with said being used multiple times in the abstract) should be avoided.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference character “6” has been used to designate both a pair of screws on p.12 L4, the die on p.12 L47. Additionally, reference characters “6” and “7” have been both been used to designate the extruder die/die (p.12 L13 and L17) Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
The disclosure is objected to because of the following informalities:
All instances of “polyhydroxyalcanoate” to be replaced with “polyhydroxyalkanoate”
Appropriate correction is required.
Claim Objections
Claims 1 and 7 are objected to because of the following informalities:
Claim 1 L3: polyhydroxyalkanoate polymer
Claim 1 L6, 9, 13, 18, 21, 24: 190oC[[,]];… 0.1 and 10[[,]];… at least 1.0 g/cm3[[,]];… cellulosic fibres[[,]]; and… knife system[[,]];… cast line)[[,]]; and
Claim 1 L8: feeding [[the]] a first feeding unit with [[a]] the PHA polymer
Claim 1 L9: ratio of maleic acid to PHA polymer is comprised
Claim 1 L11: feeding [[the]] a second feeding unit
Claim 1 L16-17: rotating the at least one rotating screw to mix the PHA polymer and maleic anhydride polymers grafted with MA ([[“]]PHA-g-MA[[“]]) in an amount of 1 to 10%[[,]] of the total content of PHA polymer, and
Claim 1 L22: cutting said extruded compound cord (8)
Claim 3 L2: wherein a catalyst is added together with the PHA polymer and the maleic anhydride
Claim 4 L2: A process according to polymer
Claim 6 L1: A process according to
Claim 7 L2: polyhydroxyalkanoate polymer
Claim 7 L5: hydroxyvalerate (PHV), [[or]] poly-3-hydroxyhexanoate (PHHx), and
Claim 8 L2: wherein [[the]] a rotation speed of the at least one rotating screw
Claim 9 L2: comprises a step of quenching the extruded compound within
Claim 10 L2: temperature of said quenching bath [[(9)]] is between
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 1-11 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 1 recites the limitation "said extrudate compound cord" (bolded for emphasis) on L22. There is insufficient antecedent basis for this limitation in the claim.
Regarding claim 1, the phrase "in this case, the extruder die takes the form of a cast line" (bolded for emphasis) on L24-25 renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 1 recites the limitation "said PHA molecules" (bolded for emphasis) on L16 . There is insufficient antecedent basis for this limitation in the claim.
Regarding claim 1, parts (ii) and (iv) list claimed ratios/amounts (“ratio of maleic anhydride to PHA” and “PHA grafted with MA (“PHA-g-MA”) in an amount… of the total content of PHA”, respectively) but makes it unclear as to what scale said ratios/amounts are in relation to, whether based on weight, volume, moles, relative to a designated amount, or some other scale. For purposes of examination, said ratios/amount will be interpreted to encompass any of the scales mentioned and beyond.
As claims 2-11 depend directly/indirectly on claim 1, they stand as rejected for similar reasons.
Regarding claim 4, the limitation of “ratio of catalyst to PHA” is unclear as to what scale said ratio is based off of. For purposes of examination, examiner said scale will be interpreted to encompass any scale previously mentioned and beyond.
Regarding claim 6, the limitation of “ratio of plasticizer to cellulosic fibre” is unclear as to what scale said ratio is based off of. For purposes of examination, examiner will interpret said scale to encompass any possible scale.
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.
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.
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.
Claim(s) 1-4, 8, 9 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Ueno (US20240117127), as evidenced by Ganster (NPL), in view of Goff (NPL).
Regarding claim 1, Ueno teaches a process for manufacturing a biodegradable compound, said compound comprising a mixture of cellulosic fibres and at least one type of polyhydroxyalkanoate polymer (PHA), said process comprising the steps of, in order:
(i) providing an extruder (“extruder” (400)), at least one rotating screw ([0129]), at least two feeding units suitable for being fed with ingredients ([0203], in that the existence of an “addition port (side feeder)” implies a different main feeder), and an extruder die ([0283], [0491]);
(ii) feeding the a feeding unit ([0203]) with the PHA polymer ([0302] and maleic anhydride (MA) ([0290]), wherein the ratio of maleic anhydride to PHA polymer is comprised 0.01% to 5% by mass ([0379], which overlaps with the claimed ratio range of between 0.1 and 10);
(iii) feeding a second feeding unit with cellulosic fibres, said cellulosic fibres being hardwood cellulose fibres ([0311] “broad-leaf tree”) having a number-average fiber diameter of 2 to 1000 nm and a number-average fiber length/number-average fiber diameter ratio of 30 to 5000 ([0313]-[0314], which combined would result in the cellulosic fibres having a length that overlaps with the claimed length range of 15 µm to 150 µm (fiber diameter of 2 to 1000 nm and fiber length/fiber diameter ratio of 30 to 5000 result in fiber length of 0.06 to 5000 µm), and having a density of 1.5 g/cm3 (as evidenced by Ganster (p.1796)), which is within the claimed range of at least 1.0 g/cm3);
(iv) rotating the at least one rotating screw to mix the PHA polymer and maleic anhydride ([0203] in “melting zone” (403)) and graft said maleic anhydride onto said PHA molecules to form PHA polymers grafted with MA (PHA-g-MA) in an amount of 0.01% to 5% of the total content of PHA polymers ([0360], which overlaps with the claimed range of 1 to 10%), and then mixing said PHA-g-MA with cellulosic fibres to form a molten compound of PHA-g-MA and cellulosic fibres ([0203]); and
(v) passing said molten compound through said extruder die ([0283]), and shaping said extruded compound into, either a product selected from the group consisting of:
of a compound film or compound plates ([0283]); and
a compound tridimensional item, by injection moulding or extrusion blow-moulding said extruded compound into a mould ([0283]).
While Ueno does not explicitly disclose that the extruder comprises a heater or that the temperature of said extruder is set between 130oC and 190oC, it would have been obvious to one of ordinary skill in the art prior to the earliest effective priority date of the instant application to do so, given that :
A) Goff teaches that “most extruders are electrically heated and use resistance coils, bands or cuffs” and that said heating elements can be used to achieve a desired melt temperature (in addition to other barrel settings) (p.77);
B) Ueno does disclose that the extruder comprises a “melting zone” ([0203]) and that said extruder must be able to cause the first component to reach melting temperatures between 100oC and 350oC ([0203], [0285]);
C) the combined teachings of Goff and Ueno would enable a person of ordinary skill in the art to understand that the “desired melt temperature” (as in Goff) correlates with the melting temperatures of Ueno and that said temperatures could be achieved, in part, by electrically heating the extruder to said melting temperatures from 100oC to 350oC, which overlaps with the claimed range of 130oC to 190oC.
Examiner notes that case law holds that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (see MPEP 2144.05) with regards to the ratio of maleic anhydride to PHA and the percent of PHA grafted with MA to the total content of PHA.
While not relied upon as the basis of a rejection, examiner notes that applicant's original disclosure fails to provide a conclusive showing of unexpected results for the ratio of maleic anhydride to PHA, the percent of PHA grafted with MA to the total content of PHA, the extruder temperature or for both the length and density of the cellulosic fibres.
Regarding claim 2, modified Ueno teaches all limitations of claim 1 as set forth above. Additionally, Ueno teaches that the extruder is a twin-screw extruder ([0129]).
Regarding claim 3, modified Ueno teaches all limitations of claim 1 as set forth above. Additionally, Ueno teaches that a catalyst is added together with the PHA polymer and the maleic anhydride in the first feeding unit ([0362] via “radical initiator”), said catalyst being selected from the group consisting of: dicumyl peroxide (DCP), benzoyl peroxide and hydroperoxides and a combination thereof ([0362]).
Regarding claim 4, modified Ueno teaches all limitations of claim 3 as set forth above. Additionally, Ueno teaches that the amount of catalyst to PHA polymer is 0.01 to 10 parts by mass of compound being modified with maleic acid ([0362], which overlaps with the claimed ratio of catalyst to PHA of 0.01% to 5%) and case law holds that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (see MPEP 2144.05).
While not relied upon for the basis of a rejection, examiner notes that the originally submitted disclosure fails to provide a conclusive showing of criticality for the ratio of catalyst to PHA (see MPEP 2144.05).
Regarding claim 8, modified Ueno teaches all limitations of claim 1 as set forth above. Additionally, Ueno teaches that a rotation speed of the at least one rotating screw is comprised between 100 to 800 rpm ([0129], which overlaps with the claimed range of 10 to 300 rpm) and case law holds that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (see MPEP 2144.05).
While not relied upon for the basis of a rejection, examiner notes that the originally submitted disclosure fails to provide a conclusive showing of criticality for the rotation speed (see MPEP 2144.05).
Regarding claim 9, modified Ueno teaches all limitations of claim 1 as set forth above. While Ueno does not explicitly teach that the process further comprises a step of quenching the extruded compound within a quenching bath, it would have been obvious to one of ordinary skill in the art prior to the earliest effective priority date of the instant application to do so, given that Goff teaches that for extrusion processes, it is desirable to use a water bath to cool the extruded material after the extrusion die for the benefit of setting the polymer at the earliest possible point after shaping (p.35).
Regarding claim 11, modified Ueno teaches all limitations of claim 9 as set forth above. Additionally, Goff teaches that the quenching bath is water (p.35).
Claim(s) 5 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Ueno (US20240117127), as evidenced by Ganster (NPL), and Goff (NPL) as set forth in the rejection of claim 1 above and in further view of Kaneko et al. (JP2020002201A) (machine translation).
Regarding claim 5, Ueno teaches all limitations of claim 1 as set forth above. Additionally, it would have been obvious to one of ordinary skill in the art prior to the earliest effective priority of the instant application for a plasticizer to be added together with the cellulosic fibres into the second feeding unit, said plasticizer being selected from the group consisting of: beeswax (BW), stearic acid (SA), glycerol monostearate (GMS), and a combination thereof, given that:
A1) Ueno teaches that plasticizers can be added to the composition ([0387]);
A2) the limited number of locations where the plasticizer could be fed in (either with the first component in “melting zone” (403) or via “an additional port (side feeder) after the resin has passed through the melting zone” [0203]) presents a finite number of option that are immediately recognizable to a person having ordinary skill in the art, and the options do not produce new or unexpected results and it would have been obvious to one of ordinary skill at the earliest effective priority date to try the options presented to obtain the expected result of adding a plasticizer to the compound (see MPEP 2143(I)(E));
B) Kaneko, which is within the thermoplastic manufacturing art, teaches that for a thermoplastic manufacturing process that includes a mixture of polyhydroxyalkanoates (PHA) ([0059]), said mixture can comprise of commonly used plasticizers including beeswax ([0082]) and case law holds that “The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination” (see MPEP 2144.07).
Regarding claim 6, modified Ueno teaches all limitations of claim 5 as set forth above. Additionally, Ueno teaches that the ratio of plasticizer to composition is 0.01 to 50% ([0387], which overlaps with the claimed range of plasticizer to cellulosic fibre of 0.1% to 10%) and/or Kaneko teaches that the ratio of plasticizer to composition is preferably 0 to 100% by mass relative to 100% by mass of the composition ([0082], which overlaps with the claimed range of plasticizer to cellulosic fibre of 0.1% to 10%) and case law holds that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (see MPEP 2144.05). While not relied upon for the basis of a rejection, examiner notes that the originally submitted disclosure fails to provide a conclusive showing of criticality for the ratio of plasticizer to cellulosic fibre (see MPEP 2144.05).
Claim(s) 7 is rejected under 35 U.S.C. 103 as being unpatentable over Ueno (US20240117127), as evidenced by Ganster (NPL), and Goff (NPL) as set forth in the rejection of claim 1 above and in further view of Kaplan (NPL).
Regarding claim 7, Ueno teaches all the limitations of claim 1 as set forth above. While Ueno does not explicitly teach which polyhydroxyalkanoate polymer is used or that said polymer is selected from the group consisting of: poly3-hydroxybutyrate-co-3-hydroxyhexanoate (PHBH), poly-3- hydroxybutyrate-co-3-hydroxyvalerate (PHBV), poly-3-hydroxybutyrate (PHB), poly-3- hydroxyvalerate (PHV), poly-3-hydroxyhexanoate (PHHx), and derivatives or combinations thereof, it would have been obvious to one of ordinary skill in the art prior to the earliest effective priority date of the instant application to do so, given that:
a) Ueno teaches that a polyhydroxyalkanoate polymer is used ([0302]); and
b) Kaplan teaches that the group of chemical compounds polyhydroxyalkanoates includes compounds like poly-3- hydroxybutyrate-co-3-hydroxyvalerate (PHBV), poly-3-hydroxybutyrate (PHB) (p.20-21) and case law holds that “the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination” (see MPEP 2144.07).
Claim(s) 10 is rejected under 35 U.S.C. 103 as being unpatentable over Ueno (US20240117127) as evidenced by Ganster (NPL) and Goff et al. (NPL) as set forth in the rejection of claim 9 above and in further view of applicant’s own specification and either Hadba et al. (US20120021217A1), Helton et al. (US20140162015A1) and/or Andjelic et al. (US20150119935A1).
Regarding claim 10, modified Ueno teaches all limitations of claim 9 as set forth above. Additionally, it would have been obvious to one of ordinary skill in the art prior to the earliest effective priority date of the instant application for the temperature of said quenching bath is between 5oC and 50oC, given that applicant’s own specification notes that said temperature and the duration of which the extrudate compound is in the quenching is “according to usual quenching practices” (p.9 L8-11), as exemplified in extruding processes including Hadba ([0050], quench bath of about 10oC to 80oC), Helton ([0073], quench bath of about 60oF (15.6oC)) and/or Andjelic ([0031], quench bath of 20oC).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Bengtsson (NPL) teaches how it is desirable for the bulk-densities of cellulose fibres to be increased for the benefit of making continuous processing and manufacturing on an industrial scale possible (p.1922-1923).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER D BOOTH whose telephone number is 571-272-6704. The examiner can normally be reached M-Th 7:00-4:30.
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/ALEXANDER D BOOTH/Examiner, Art Unit 1749
/SEDEF E PAQUETTE/Primary Examiner, Art Unit 1749