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 .
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 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.
Claims 1-7, 9-13 are rejected under 35 U.S.C. 103 as being unpatentable over Okura et al. (US Patent Application No. 2015/0290858) in view of Walton et al. (US Patent Application No. 2016/0201425).
Regarding claims 1, 5 and 6, Okura et al. teach a molded body (page 2, paragraph [0019]) comprising a composition containing a glycolic acid polymer (page 3, paragraph [0022]) and an inorganic filler (page 5, paragraphs [0042], [0043]) and a content of the inorganic filler is from 5 to 70 mass% which reads on Applicant’s claimed range of 0.1 mass% or more and 15 mass% or less (page 5, paragraphs [0042], [0043], [0046]), the inorganic filler is at silicon nitride (page 5, paragraphs [0042], [0043]) and the molded body has a thickness or diameter of 5 to 500 mm which reads on Applicant’s claimed range of greater than 5 mm (page 6, paragraph [0054]).
Okura et al. fail to teach wherein the body contains a cyclic ester. However, Walton et al. teach a downhole tool (page 1, paragraph [0008]) containing a glycolic acid polymer (page 9, paragraph [0071]) and a cyclic ester (page 10, paragraph [0077]), and a content of the cyclic ester is from about 0.001% to about 25% by weight which reads on Applicant’s claimed range of 10 mass% or more and 22 mass% or less (page 10, paragraphs [0077], [0078]).
It would have been obvious to a person of the ordinary skill in the art before the effective filing date of the claimed invention to use the cyclic ester of Walton et al. in the body of Okura et al. in order to provide a desired degradation rate (Walton et al., page 10, paragraph [0078]).
Regarding claim 2, Okura et al. teach a molded body (page 2, paragraph [0019]) comprising a composition containing a glycolic acid polymer (page 3, paragraph [0022]) and an inorganic filler (page 5, paragraphs [0042], [0043]) and a content of the inorganic filler is from 5 to 70 mass% (page 5, paragraphs [0042], [0043], [0046]), the inorganic filler is at silicon nitride (page 5, paragraphs [0042], [0043]) and the molded body has a thickness or diameter of 5 to 500 mm (page 6, paragraph [0054]).
Okura et al. fail to teach wherein the body contains a cyclic ester. However, Walton et al. teach a downhole tool (page 1, paragraph [0008]) containing a glycolic acid polymer (page 9, paragraph [0071]) and a cyclic ester (page 10, paragraph [0077]), and a content of the cyclic ester is from about 0.001% to about 25% by weight (page 10, paragraphs [0077], [0078]).
It would have been obvious to a person of the ordinary skill in the art before the effective filing date of the claimed invention to use the cyclic ester of Walton et al. in the body of Okura et al. in order to provide a desired degradation rate (Walton et al., page 10, paragraph [0078]).
Okura et al. and Walton et al. are silent on wherein a thickness reduction rate of the molded body after thickness reduction of 5 mm or greater from its initial thickness when held in water at 49°C is 0.070 mm/hour or greater. It is elementary that a mere recitation of a newly discovered property, inherently possessed by the things in the prior art, does not cause a claim drawn to those things to distinguish over the prior art (In re Swinehart et al, 169 USPQ 226 at 229). It is inherent that the inclusion of the same glycolic acid polymer, cyclic ester and inorganic filler within the molded body of Okura et al., as modified by Walton et al., would possess the same thickness reduction rate as the instant application because it possesses all the other claimed constituents in the same structure. MPEP 2112.01
Regarding claim 3, Okura et al. teach a molded body (page 2, paragraph [0019]) comprising a composition containing a glycolic acid polymer (page 3, paragraph [0022]) and an inorganic filler (page 5, paragraphs [0042], [0043]) and a content of the inorganic filler is from 5 to 70 mass% (page 5, paragraphs [0042], [0043], [0046]), the inorganic filler is at silicon nitride (page 5, paragraphs [0042], [0043]) and the molded body has a thickness or diameter of 5 to 500 mm (page 6, paragraph [0054]).
Okura et al. fail to teach wherein the body contains a cyclic ester. However, Walton et al. teach a downhole tool (page 1, paragraph [0008]) containing a glycolic acid polymer (page 9, paragraph [0071]) and a cyclic ester (page 10, paragraph [0077]), and a content of the cyclic ester is from about 0.001% to about 25% by weight (page 10, paragraphs [0077], [0078]).
It would have been obvious to a person of the ordinary skill in the art before the effective filing date of the claimed invention to use the cyclic ester of Walton et al. in the body of Okura et al. in order to provide a desired degradation rate (Walton et al., page 10, paragraph [0078]).
Okura et al. and Walton et al. are silent on wherein the molded body has a tensile strength at 49°C of 52 MPa or greater, and a thickness reduction rate of the molded body after thickness reduction of 5 mm or greater from its initial thickness when held in water at 49°C is 0.070 mm/hour or greater. It is elementary that a mere recitation of a newly discovered property, inherently possessed by the things in the prior art, does not cause a claim drawn to those things to distinguish over the prior art (In re Swinehart et al, 169 USPQ 226 at 229). It is inherent that the inclusion of the same glycolic acid polymer, cyclic ester and inorganic filler within the molded body of Okura et al., as modified by Walton et al., would possess the same tensile strength and thickness reduction rate as the instant application because it possesses all the other claimed constituents in the same structure. MPEP 2112.01
Regarding claim 4, Okura et al. fail to teach wherein the cyclic ester in the composition is glycolide. However, Walton et al. teach a downhole tool (page 1, paragraph [0008]) containing a glycolic acid polymer (page 9, paragraph [0071]) and a cyclic ester (page 10, paragraph [0077]), and a content of the cyclic ester is from about 0.001% to about 25% by weight (page 10, paragraphs [0077], [0078]), wherein the cyclic ester is glycolide (page 10, paragraph [0077]).
It would have been obvious to a person of the ordinary skill in the art before the effective filing date of the claimed invention to use the cyclic ester of Walton et al. in the body of Okura et al. in order to provide a desired degradation rate (Walton et al., page 10, paragraph [0078]).
Regarding claim 7, Okura et al. teach wherein the glycolic acid polymer is a copolymer in which a liner polymer chain A including a repeating unit derived from glycolic acid is chemically bonded to a polymer chain B different from the polymer chain A (page 4, paragraphs [0030]-[0032]).
Regarding claim 9, Okura et al. teach wherein the glycolic acid polymer is a block copolymer of the polymer A and the polymer chain B (page 4, paragraphs [0030]-[0032]).
Regarding claim 10, Okura et al. teach wherein the glycolic acid polymer is a homopolymer of glycolic acid (page 4, paragraph [0030]).
Regarding claim 11, Okura et al. teach wherein the composition has a weight average molecular weight of 100,000 to 300,000 which reads on Applicant’s claimed range of 150000 or greater and 500000 or less (page 3, paragraph [0021]).
Regarding claim 12, Okura et al. teach a downhole tool member (page 2, paragraph [0019]) comprising a molded body (page 2, paragraph [0019]) comprising a composition containing a glycolic acid polymer (page 3, paragraph [0022]) and an inorganic filler (page 5, paragraphs [0042], [0043]) and a content of the inorganic filler is from 5 to 70 mass% (page 5, paragraphs [0042], [0043], [0046]), the inorganic filler is at silicon nitride (page 5, paragraphs [0042], [0043]) and the molded body has a thickness or diameter of 5 to 500 mm (page 6, paragraph [0054]).
Okura et al. fail to teach wherein the body contains a cyclic ester. However, Walton et al. teach a downhole tool (page 1, paragraph [0008]) containing a glycolic acid polymer (page 9, paragraph [0071]) and a cyclic ester (page 10, paragraph [0077]), and a content of the cyclic ester is from about 0.001% to about 25% by weight (page 10, paragraphs [0077], [0078]).
It would have been obvious to a person of the ordinary skill in the art before the effective filing date of the claimed invention to use the cyclic ester of Walton et al. in the body of Okura et al. in order to provide a desired degradation rate (Walton et al., page 10, paragraph [0078]).
Regarding claim 13, Okura et al. teach a downhole tool comprising a downhole tool member (page 2, paragraph [0019], page 3, paragraph [0023]) comprising a molded body (page 2, paragraph [0019]) comprising a composition containing a glycolic acid polymer (page 3, paragraph [0022]) and an inorganic filler (page 5, paragraphs [0042], [0043]) and a content of the inorganic filler is from 5 to 70 mass% (page 5, paragraphs [0042], [0043], [0046]), the inorganic filler is at silicon nitride (page 5, paragraphs [0042], [0043]) and the molded body has a thickness or diameter of 5 to 500 mm (page 6, paragraph [0054]).
Okura et al. fail to teach wherein the body contains a cyclic ester. However, Walton et al. teach a downhole tool (page 1, paragraph [0008]) containing a glycolic acid polymer (page 9, paragraph [0071]) and a cyclic ester (page 10, paragraph [0077]), and a content of the cyclic ester is from about 0.001% to about 25% by weight (page 10, paragraphs [0077], [0078]).
It would have been obvious to a person of the ordinary skill in the art before the effective filing date of the claimed invention to use the cyclic ester of Walton et al. in the body of Okura et al. in order to provide a desired degradation rate (Walton et al., page 10, paragraph [0078]).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Okura et al. (US Patent Application No. 2015/0290858) in view of Walton et al. (US Patent Application No. 2016/0201425), in further view of Xu et al. (US Patent No. 8,829,112).
Okura et al. and Walton et al. are relied upon as disclosed above.
Regarding claim 8, Okura et al. fail to teach wherein the polymer chain B is derived from a polymer compound having a glass transition temperature of lower than 45°C. However, Xu et al. teach a molded body comprising a composition (col. 2, lines 15-25) containing a glycolic acid polymer (col. 2, lines 60-65), wherein the glycolic acid polymer comprises a polymer compound having a glass transition temperature below 105°C which reads on Applicant’s claimed range of lower than 45°C (col. 4, lines 10-20).
It would have been obvious to a person of the ordinary skill in the art before the effective filing date of the claimed invention to modify the glass transition temperature of the polymer chain B of Okura et al. to that of Xu et al. in order to provide incompatibility (Xu et al., col. 4, lines 10-20).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHINESSA GOLDEN whose telephone number is (571)270-5543. The examiner can normally be reached on Monday - Friday; 8:00 - 4:00 EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alicia Chevalier can be reached on 571-272-1490. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see https://ppair-my.uspto.gov/pair/PrivatePair. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Chinessa T. Golden/Primary Examiner, Art Unit 1788 9/2/2026
Prosecution Insights