DETAILED ACTION
Notice of Pre-AIA or AIA Status
Claim(s) 1-20 is/are pending.
Claim(s) 1-20 is/are rejected.
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 § 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.
Claim(s) 1-15 is/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 pre-AIA the applicant regards as the invention.
Claim 1 is vague and indefinite because there is insufficient antecedent basis for the limitations “the first dicarboxylic acid” and “the second dicarboxylic acid” in the claim.
Claim 1 is vague and indefinite because the phrase “4:1 to 7” is confusing and unclear. Does the “7” apply to the first number or the second number in the ratio “4:1”?
Claims 2-4 is vague and indefinite because there is insufficient antecedent basis for the limitations “the sugar” in the claim.
Claim 11 is vague and indefinite because the phrases “the polyester comprises” and “or a combination thereof” is inconsistent with the limitation “the polyester consists of” of components (a) and (b) and (c) and (d) in the parent claim 1.
Claims 5-10, 12-15 are dependent on one or more of the above claims and therefore incorporate the above-described indefinite subject matter.
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claim(s) 1-20 is/are rejected on the ground of nonstatutory double patenting as being unpatentable over:
• claims 1-28 of U.S. Patent No. 12,146,080 (LOCKLIN ET AL).
Although the claims at issue are not identical, they are not patentably distinct from each other because U.S. Patent No. 12,146,080 claims a home compostable adhesive comprising (or consisting of) the recited polyester, wherein the recited polyester consists of repeat units derived from recited components (a) and (b) and (c) and (d), wherein:
• the recited polyester satisfies the molar ratios of: (1) components (b) to component (c); (2) components (b)+(c) to component (a); and (3) 1,4-butanediol to 1,3-propanediol; (present application claim 1);
• the recited polyester constitutes at least 80 wt% of the adhesive (present application claim 16).
Claim Rejections - 35 USC § 103 (AIA )
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.
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 16-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over:
ROBERTS (US 2010/0330315),
in view of WHITE ET AL (US 5,589,566),
and in view of MAYFIELD ET AL (US 2023/0167225),
and in view of SCHUMACHER ET AL (US 2023/0092087),
and in view of CN 117801718 (SHI-CN ‘718),
and in view of LAPRAY ET AL (US 202/0339781).
ROBERTS ‘315 discloses biodegradable hot-melt adhesive compositions, wherein the adhesive compositions comprise:
•30-90 wt% of a biodegradable aliphatic polyester derived from:
(1) a dicarboxylic acid component comprising at least one aliphatic dicarboxylic acid (e.g., succinic acid, glutaric acid, adipic acid, etc.) (corresponding to recited polyester components “(b)” and “(c)”);
(2) an aliphatic glycol component comprising at least one linear aliphatic diol of formula R2[OH]2, wherein R2 represents a C2-C22 hydrocarbon (corresponding to recited polyester component “a”);
• an adhesion-promoting and/or tackifying agent;
• a stiffening agent (e.g., wax, etc.);
• optional additives (e.g., stabilizers, antioxidants, antiblocking agents, pigments, colorants, fillers, etc.).
The biodegradable polyester-based hot-melt adhesives are generally non-pressure sensitive, but are not prohibited from being pressure sensitive, and are useful for a variety of applications (e.g., labelling, food packaging, packaging trays, etc.) (entire document, paragraph 0004, 0007, 0016-0017, 0023-0024, 0041-0043, 0048-0050, 0056-0057, 0062, 0067-0071, 0079-0083, 0086-0095, 0098-0099, etc.) However, the reference does not specifically discuss a copolyester containing a mixture of repeating units derived from: (a) 1,3-propanediol and 1,4-butanediol; (b) succinic acid; (c) glutaric acid; and repeating units derived from (d) a sugar.
WHITE ET AL ‘566 discloses that it is well known in the art to produce biodegradable and compostable copolyesters comprising:
(1) a dicarboxylic acid component comprising:
(i) 65-95 mol% of a first monomer which is succinic acid (corresponding to recited polyester component “(b)”);
(ii) 5-35 mol% of a third monomer which is at least one other aliphatic dicarboxylic acid (e.g., glutaric acid) (corresponding to recited polyester component “(c)”) (or alternatively up to 5 mol%, if the third monomer is at least one other aliphatic diol and the at least one other aliphatic dicarboxylic acid constitutes a fourth monomer);
(2) an aliphatic glycol component comprising:
(i) 65-95 mol% 1,4-butanediol (alternatively or additionally corresponding to recited polyester components “(a)”);
(ii) 5-35 mol% of a third monomer which is at least one other aliphatic diol (e.g., 1,3-propanediol) (alternatively or additionally corresponding to recited polyester components “(a)”);
(3) 0.1-2.0 wt% of a branching agent (e.g., but not limited to, glycerol, etc.) (corresponding to recited polyester component “(d)”);
in order to produce butylene-succinate copolyesters with improved or readily optimized performance properties (e.g., flexibility, elongation, impact strength, biodegradation rates, melt strength, etc.). The references further discloses that the disclosed butylene-succinate-based copolyesters typically have Tg values of less than 0 °C. (line 65, col. 1 to line 29, col. 2; line 65, col. 2 to line 10, col. 4; line 24-67, col. 4; line 8-65, col. 9; Examples 1-19; etc.)
MAYFIELD ET AL ‘225 discloses that it is well known in the art to incorporate a crosslinking and/or chain extending compounds (e.g., glycerol, sorbitol, etc.) in biodegradable polymers usable as adhesives (e.g., polyesters derived from bio-sourced dicarboxylic acids (such as succinic acid, glutaric acid, etc.) and bio-sourced diols (such as 1,3-propanediol; 1,4-butanediol; etc.)) in order to control the rate of biodegradation. (paragraph 0091-0096, 0152, 0154-0155, etc.)
SCHUMACHER ET AL ‘087 discloses that it is well known in the art to incorporate monomers with polyfunctional alcohols with functionalities of two or more (e.g., sugars, etc.) in home compostable biodegradable polymers (e.g., comprising polyester compounds derived from dicarboxylic acids and diols, etc.) to provide crosslinking and/or chain extension. (paragraph 0067, etc.)
SHI-CN ‘718 disclose that it is well known in the art to incorporate polyfunctional chain extending agents (e.g., sorbitol, etc.) in polyester compounds in adhesive compositions in order to regulate molecular weight. (paragraph 0006, 0009, 0012, 0022, 0024, etc.)
LAPRAY ET AL ‘781 discloses that it’s well known in the art to incorporate biodegradation-enhancing additives into biodegradable compositions in order to provide said biodegradable compositions in order to further increase the rate and/or degree of biodegradation -- for example, making compositions which are biodegradable under limited conditions (e.g., industrial composting) more readily compostable in less aggressive conditions (e.g., home composting). (paragraph 0050-0051, etc.)
Regarding claims 16-20 it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize known biodegradable and compostable copolyesters derived from succinic acid, glutaric acid, 1,4-butanediol, and optionally 1,3-propanediol, and optionally branching agents as disclosed in WHITE ET AL ‘566 as the aliphatic polyester component in the adhesives of ROBERTS ‘315 in order to produce hot-melt adhesives with excellent and/or readily tailored performance properties (e.g., flexibility, elongation, impact strength, biodegradation rates, melt strength, etc.).
Further regarding claims 16-17, one of ordinary skill in the art would have utilized effective amounts of known hydroxyl-containing monomers with functionalities greater than 2 (e.g., sugars, sorbitol, etc. as an alternative to other known branching agents, chain extending, and/or crosslinking agents such as glycerol, etc., as suggested in MAYFIELD ET AL ‘225 and/or SCHUMACHER ET AL ‘087 and/or SHI-CN ‘718) as a bio-based branching agent in the biodegradable copolyesters of WHITE ET AL ‘566 used as the aliphatic copolyester component of the biodegradable adhesives of ROBERTS ‘315 in order to regulate molecular weight and/or provide controlled crosslinking, and thereby tailor the use-life and biodegradation (e.g., composting) characteristics of the adhesive for specific usage and disposal conditions, and/or improve the cohesive strength and/or melt strength of the adhesive material (as suggested in WHITE ET AL ‘566 and/or MAYFIELD ET AL ‘225 and/or SCHUMACHER ET AL ‘087 and/or SHI-CN ‘718)
Further regarding claims 16-17, one of ordinary skill in the art would have incorporated effective amounts of known biodegradability-improving and/or compostability-improving additives as disclosed in LAPRAY ET AL ‘781 in the biodegradable adhesive compositions of ROBERTS ‘315 in order to make said polyester adhesive more easily and/or more quickly composted under relatively milder home compositing conditions.
Further regarding claim 16, one of ordinary skill in the art would have selected the amount of known bio-sourced diols (e.g., 1,3-propanediol) used as a third monomer in the biodegradable copolyesters of WHITE ET AL ‘566 in order to obtain specific biodegradation characteristics and/or mechanical properties for specific applications.
Regarding claim 17, since: (i) WHITE ET AL ‘566 suggests the use of branching agents (corresponding to recited polyester component “(d)”) in amounts of 0.1-2.0 wt%; and (ii) MAYFIELD ET AL ‘225 and/or SCHUMACHER ET AL ‘087 and/or SHI-CN ‘718) suggest the use of hydroxyl-containing monomers with functionalities greater than 2 (e.g., sugars, sorbitol, etc.) as branching agents; the Examiner has reason to believe that the adhesive compositions in accordance with ROBERTS ‘315 which utilize the biodegradable butylene-succinate-based copolyesters of WHITE ET AL ‘566 containing known sugar-based branching agents would contain said sugar-based branching agents in molar hydroxyl contents which at least partially read on the recited molar hydroxyl contents recited in claim 6; therefore the Examiner has basis for shifting the burden of proof to applicant as in In re Fitzgerald et al., 205 USPQ 594.
Regarding claims 18-20, one of ordinary skill in the art would have utilized the biodegradable adhesives of ROBERTS ‘315 in conventional hot-melt adhesive applications, such as labels for packaging (e.g., for food products, etc.).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Vivian Chen (Vivian.chen@uspto.gov) whose telephone number is (571) 272-1506. The examiner can normally be reached on Monday through Thursday from 8:30 AM to 6 PM. The examiner can also be reached on alternate Fridays.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Callie Shosho, can be reached on (571) 272-1123. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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June 13, 2026
/Vivian Chen/
Primary Examiner, Art Unit 1787
Prosecution Insights