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 .
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 4-5, 8, 13-14 and 16 are rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by Hitoshi et al (JP 11-193371).
Hitoshi discloses a biodegradable thermal adhesive including a biodegradable resin comprising an aliphatic polyester resin such as polycaprolactone and poly-3-hydroxybutyrate, and Hitoshi indicates that “BIOPOL” (molecular weight: approximately 750,000) can be used as the aliphatic polyester resin such as poly-3-hydroxybutyrate, equal amounts of polycaprolactone and poly-3-hydroxybutyrate are mixed, and the adhesive is applied as an adhesive by spraying on biodegradable foam beads serving as base materials, drying the foam beads, and then melting the foam beads by heating. See claims 1-2, paragraphs [0005]-[0009] and example 1.
It is also the examiner’s position that the adhesive disclosed in Hitoshi satisfies the stipulation of the prescribed physical property value of the invention as in claim 4 of the present application.
Claim(s) 1, 5, 9, 11-12 are rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by Kauffman et al (US Patent 5,169,889).
Kauffman discloses a hot-melt adhesive including 20-90 wt% of a linear polyester of 3-hydroxybutyric acid and 3-hydroxyvaleric acid containing 9-35% of a hydroxyvalerate component, 10-80 wt% of a polar tackifier having a ring and ball softening point (measured by ASTM E-26) of about 60°C or higher, 0-50 wt% of a plasticizer, 0-30 wt% of a wax diluent, 0-3 wt% of a stabilizer, and 0-20 wt% of a compatible thermoplastic polymer, and document 2 discloses using “BIOPOL” as the polyester, using hydrogenated castor oil (corresponding to the “glycerin fatty acid ester”) as a wax, and using 5-20 wt% of a polycaprolactone polymer as the thermoplastic polymer, and Kauffman indicates that the thermoplastic polymer such as a polycaprolactone polymer is used to impart flexibility, toughness, and strength to the adhesive.
See claims 1, 4-5, column 2, line 51 to column 3, line 3, and column 4, lines 18-28.
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.
Claim(s) 6-7, 12, 17 are rejected under 35 U.S.C. 103 as being unpatentable over Hitoshi et al (JP 11=193371) as described above.
It is the examiner’s position that a person skilled in the art could, as appropriate, optimize the molecular weight of the polycaprolactone used in the adhesive disclosed in Hitoshi and use polycaprolactones not having a single molecular weight (a plurality of polycaprolactones having different molecular weights).
A person skilled in the art could also easily conceive of applying the adhesive disclosed in Hitoshi in the method for producing a laminate set forth in claim 12 of the present application.
Claim(s) 4, 6-8 and 13-20 are rejected under 35 U.S.C. 103 as being unpatentable over Kauffman et al (US Patent 5,169,889) as described above.
In the hot melt adhesive disclosed in Kauffman, adjusting the added amount of a diluent or the like to optimize the melt viscosity, optimizing the molecular weight and the added amount of the polycaprolactone used as a thermoplastic polymer and glycerol fatty acid ester, and using polycaprolactones not having a single molecular weight (a plurality of polycaprolactones having different molecular weights) are all matters that a person skilled in the art could address, as appropriate.
Allowable Subject Matter
Claims 2-3 and 10 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: a hot-melt adhesive composition in which the poly (3-hydroxyalkanoate)-based resin (A) is a poly (3-hydroxybutyrate-co-3-hydroxyhexanoate) copolymer, and an adhesive composition in which the glycerin fatty acid ester is glycerin diacetomonolaurate are not disclosed in any of the documents cited in the ISR, and would not be obvious to a person skilled in the art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES D SELLS whose telephone number is (571)272-1237. The examiner can normally be reached M-Th 8:30-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Phillip Tucker can be reached at 571-272-1095. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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JAMES D. SELLS
Primary Examiner
Art Unit 1745
/JAMES D SELLS/Primary Examiner, Art Unit 1745
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