DETAILED ACTION
Claim Status
Claim(s) 1-7 is/are pending.
Claim(s) 1-7 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.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 120 as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994)
The disclosure of the prior-filed application, Application No. 17/001,868, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application.
Parent Application 17/001,868 fails to provide support for the claim language “(a3) a trifunctional or higher-functional aliphatic polyol, a trifunctional or (a4) higher-functional aliphatic polyvalent carboxylic acid, an acid anhydride thereof, or (a5) a trifunctional or higher-functional aliphatic polyvalent oxycarboxylic acid component”. Parent Application 17/001,868 only discloses support for: (i) “copolymerizing a trifunctional or higher-functional aliphatic polyol with a trifunctional or higher-functional aliphatic polyvalent carboxylic acid, an acid anhydride thereof, or a trifunctional or higher-functional aliphatic polyvalent oxycarboxylic acid component”; or (ii) polybutylene succinate adipate -- i.e., the parent application only provides support for a polyester resin derived from (a1)+(a2)+(a3)+(a4) or (a1)+(a2)+(a4) or (a1)+(a2)+(a5) in the alternative. Therefore, the parent application does not provide support for a polyester resin derived from (a1)+(a2)+(a3).
Therefore, claims 1-7 have an effective filing date of 11/25/2024.
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) 1-7 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 the phrase “a trifunctional or (a4) higher-functional aliphatic polyvalent carboxylic acid, an acid anhydride thereof,” is confusing and inconsistent with the format for components (a3) and (a5) of the claim. The term “(a4) appears to belong in front of the phrase “a trifunctional or (a4) higher-functional aliphatic polyvalent...”
Claim 7 is vague and indefinite because the claim fails to specify the basis for the mol% of trifunctional or higher functional components” -- e.g., based on the total amount of units in polyester resin (A)? based on the total amount of (a2) units in polyester resin (A)?
Claims 2-6 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) 1-7 is/are rejected on the ground of nonstatutory double patenting as being unpatentable over:
• claims 1-21 of U.S. Patent No. 12,187,017 (INAGAKI ET AL);
in view of WHITE ET AL (US 5,434,238),
and in view of EP 0569153-B (IMAIZUMI-EP ‘153-B)
U.S. Patent No. 12,187,017 claims biodegradable laminate comprising:
(i) the recited aliphatic polyester-based resin layer containing the recited amounts of the recited aliphatic polyester-based resin (A), polyhydroxyalkanoate (B), and inorganic filler (C);
(ii) the recited bonding layer;
(iii) the recited polyvinyl alcohol-based resin layer.
However, the U.S. Patent does not explicitly claim polyester resins (A) containing units derived from the recited trifunctional or higher functional compound(s).
WHITE ET AL ‘238 discloses that it is well known in the art to incorporate one or more branching agents (e.g., trifunctional compounds such as glycerol, pentaerythritol, trimellitic anhydride, etc.) in biodegradable aliphatic polyesters (e.g., polybutylene succinate (PBS)-based copolyesters, etc.) in order to improve melt strength. (line 49, col. 3 to line 23, col. 4; line 57, col. 4 to line 16, col. 5; etc.)
IMAIZUMI-EP ‘153-B discloses that it is well known in the art utilize one or more trifunctional or tetrafunctional polyols, oxycarboxylic acids, and/or polycarboxylic acids (e.g., trimethylol propane, glycerin, pentaerythritol, trimesic acid, propane tricarboxylic acid, pyromellitic anhydride, etc.) in typical amounts of 0.1-5 mol% for trifunctional components or 0.1-3 mol% for tetrafunctional components (based on the total amount of dicarboxylic acid) to produce biodegradable aliphatic polyesters (e.g., polybutylene succinate (PBS) or polybutylene succinate adipate (PBSA), etc.) in order to improve melt properties. (paragraph 0001, 0021-0036, etc.)
Regarding claims 1-7, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate effective amounts of one or more branching agents (e.g., trifunctional polyacids and/or polyols) in the aliphatic polyester-based resin (A) claimed in U.S. Patent No. 12,187,017 in order to improve melt strength and other melt properties without impairing biodegradability (as suggested in WHITE ET AL ‘238 and IMAIZUMI-EP ‘153-B).
Regarding claim 2, one of ordinary skill in the art would have used the well-known methods of forming thermoplastic laminate films (e.g., coextrusion) to form the biodegradable laminate claimed in U.S. Patent No. 12,187,017.
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 1-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over:
• INAGAKI ET AL (US 2020/0384750),
in view of WHITE ET AL (US 5,434,238).
Based upon the earlier publication date of NAGAKI ET AL (US 2020/0384750), it would constitute prior art under 35 U.S.C. 102(a)(1).
INAGAKI ET AL ‘750 discloses a biodegradable laminate comprising :
• an aliphatic polyester-based resin layer, wherein the resin layer comprises:
(A) an aliphatic polyester-based resin comprising units derived from
(a1) an aliphatic diol and (a2) an aliphatic dicarboxylic acid (e.g., succinic acid, in amounts of 10 mol% or more, based on the total amount of (a2)) as main constituent units -- for example, polybutylene succinate (PBS) or polybutylene succinate adipate (PBSA);
(a3) a trifunctional or higher-functional aliphatic polyol and (a4) a trifunctional or higher-functional aliphatic polyvalent carboxylic acid, an acid anhydride thereof, or (a5) a trifunctional or higher-functional aliphatic polyvalent oxycarboxylic acid component, wherein the trifunctional component(s) are present in amounts of 0.01-5 mol%, based on the total number of constituent units in aliphatic polyester-based resin (A);
(B) a polyhydroxyalkanoate, wherein the polyhydroxyalkanoate is derived from 3-hydroxybutyrate (b1) as a main constituent unit;
(C) an inorganic filler (e.g., talc, calcium carbonate, zeolite, mica, and/or clay) in amounts of 15 to 50 wt% based on the total amount of (A)+(B)+(C);
wherein the (A)/(B) mass ratio is 75/25 to 10/90;
• a bonding layer comprising an adhesive resin;
• a polyvinyl alcohol-based resin layer.
The biodegradable laminate can be formed by coextrusion. (entire document, e.g., paragraph 0035-0053, 0090-0094, 0103-0111, 0233-0234, etc.).
WHITE ET AL ‘238 discloses that it is well known in the art to incorporate one or more branching agents (e.g., trifunctional compounds such as glycerol, pentaerythritol, trimellitic anhydride, etc.) in biodegradable aliphatic polyesters (e.g., polybutylene succinate (PBS)-based copolyesters, etc.) in order to improve melt strength. (line 49, col. 3 to line 23, col. 4; line 57, col. 4 to line 16, col. 5; etc.)
Regarding claims 1-7, one of ordinary skill in the art would have utilized one or more branching agents (e.g., trifunctional polyacids and/or polyols) in the aliphatic polyester-based resin (A) of INAGAKI ET AL ‘750 in order to improve melt strength and melt processing characteristics (as suggested in WHITE ET AL ‘238).
* * *
Claim(s) 1-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over:
NISSENBAUM ET AL (US 2016/0257098),
in view of RUIZ (US 2005/0203208),
and in view of ASRAR ET AL (US 6,191,203),
and in view of WHITE ET AL (US 5,434,238),
and in view of EP 0569153-B (IMAIZUMI-EP ‘153-B).
NISSENBAUM ET AL ‘098 disclose biodegradable laminates comprising at least one blend layer, wherein the blend layer composition (corresponding to the recited “aliphatic polyester-based resin composition”) comprises:
• 5-45 wt% of a first hydrophobic polymer (e.g., polyhydroxyalkanoates (PHA) such as polyhydroxybutyrate (PHB); polyhydroxybutyrate-hydroxyvalerate (PHBV); etc.) (corresponding to the recited “(B) a polyhydroxyalkanoate”);
• 55-95 wt% of at least one second hydrophobic polymer (e.g., polybutylene succinate (PBS); polybutylene succinate adipate (PBSA); blends of PBS and PBSA; etc.) (corresponding to the recited “(A) an aliphatic polyester-based resin”), optionally in combination with other biodegradable resins (e.g., polylactic acid (PLA); polybutylene adipate terephthalate (PBAT); polyvinyl alcohol (PVOH); etc.);
• optionally 20-30 wt% of a nanoclay or nanocomposite (e.g., montmorillonite, vermiculate, other naturally occurring minerals, etc.) (corresponding to the recited “(C) an inorganic filler”) to improve barrier properties;
• optionally an inorganic particulate filler (e.g., glass beads, mica, clay, alumina, silica, kaoline, calcium carbonate, talc, zeolite, etc.) (alternatively corresponding to the recited “(C) an inorganic filler”) to reduce self-adhesion (i.e., blocking), lower cost, and/or increase modulus of elasticity (i.e., stiffness);
• optionally other additives (e.g., containing polyethylene terephthalate (PET); polyamide; etc.).
The biodegradable laminates can comprise 2 or more layers (e.g., 2-layer films; 3-layer films; 5-layer films; etc.) with an illustrative total thickness of 20-300 microns -- for example, but not limited to:
• an outer first layer comprising the above blend layer composition (e.g., PHA + PBS(A), with optional nanoclay and/or inorganic fillers, etc.), with an illustrative thickness of 5-60 microns (e.g., but not limited to, 5-15 microns for a fluid contact layer; about 35% of the overall film thickness; etc.);
• an optional second adhesive or tie layer (e.g., but not limited to, about 8% of the overall film thickness);
• a third layer comprising polyvinyl alcohol (PVOH) with an illustrative thickness of 5-60 microns (e.g., but not limited to, 13% of the overall film thickness);
• an optional fourth adhesive or tie layer (e.g., but not limited to, about 8% of the overall film thickness) -- for example, a biodegradable adhesive;
• an optional outer fifth layer comprising the above blend layer composition (e.g., PHA + PBS(A), with optional nanoclay and/or inorganic fillers, etc.) with an illustrative thickness of 5-60 microns (e.g., but not limited to, about 35% of the overall film thickness);
wherein the biodegradable laminates can be formed by any appropriate means (e.g., coextrusion, etc.).
The biodegradable laminates: have good barrier properties, good light transmission, and/or low haze; can be heat-sealable; and are compostable (e.g., but not limited to, degradation times of within 4-24 months, etc.). (entire document, e.g., paragraph 0002, 0011-0013, 0015-0017, 0058-0062, 0111, 0015, 0019, 0122, 0137-0140, 0147, 0163-0166, 0170, 0182, 0186-0187, 0198-0203, 0218, 0220-0221, 0223, 0231-0232, 0238-0242, 0368-0369, 0491, etc.)
RUIZ ‘208 discloses that it is well known in the art to incorporate inorganic fillers (e.g., calcium carbonate, talc, mica, clays, etc.) in typical amounts of 10-60 wt% in biodegradable resins (e.g., but not limited to, polyhydoxyalkanoate (PHA); polyesters derived from aliphatic diacids and aliphatic diols; etc.) in order to produce biodegradable and/or compostable products (e.g., films, etc.) with improved performance properties (e.g., stiffness, tear strength, etc.) in addition to reducing product costs and increasing rates of biodegradability and/or composting (due to the presence of the inorganic fillers, with increased amounts of fillers leading to higher rates of degradation), wherein the inorganic fillers have particle sizes of less than 150 mesh. (paragraph 0004, 0010-0015, 0017-0020, 0022-0024, 0026, 0028-0030, 0032-0033, 0041-0042, etc.)
ASRAR ET AL ‘203 discloses that it is well known in the art to utilize biodegradable (i.e., compostable) polyester blends comprising:
• a polyhydroxyalkanoate (PHA) resin (e.g., polyhydroxybutyrate (PHB) or polyhydroxybutyrate-co-valerate (PHBV) containing at least 70 mol% 3-hydroxybutyrate units;
• a second biodegradable polyester (e.g., aliphatic (co)polyesters, such as polybutylene succinate adipate (PBSA), etc.);
in order to produce films with improved performance properties (e.g., ductility, tensile strength, aging properties, and/or impact strength, etc.). (line 23-34, col. 2; line 23-46, col. 4; line 62, col. 55 to line 46, col. 6; line 54, col. 7 to line 35, col. 8; line 9-38, col. 9; line 20-44, col. 10; etc.)
WHITE ET AL ‘238 discloses that it is well known in the art to incorporate one or more branching agents (e.g., trifunctional compounds such as glycerol, pentaerythritol, trimellitic anhydride, etc.) in biodegradable aliphatic polyesters (e.g., polybutylene succinate (PBS)-based copolyesters, etc.) in order to improve melt strength. (line 49, col. 3 to line 23, col. 4; line 57, col. 4 to line 16, col. 5; etc.)
IMAIZUMI-EP ‘153-B discloses that it is well known in the art utilize one or more trifunctional or tetrafunctional polyols, oxycarboxylic acids, and/or polycarboxylic acids (e.g., trimethylol propane, glycerin, pentaerythritol, trimesic acid, propane tricarboxylic acid, pyromellitic anhydride, etc.) in typical amounts of 0.1-5 mol% for trifunctional components or 0.1-3 mol% for tetrafunctional components (based on the total amount of dicarboxylic acid) to produce biodegradable aliphatic polyesters (e.g., polybutylene succinate (PBS) or polybutylene succinate adipate (PBSA), etc.) in order to improve melt properties. (paragraph 0001, 0021-0036, etc.)
Regarding claims 1-7, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have incorporate effective amounts (e.g., 20-30 wt%) of nanoclay materials (corresponding to the recited “(C) an inorganic filler”) in the blend layer compositions of NISSENBAUM ET AL ‘098 in order to produce biodegradable laminates with superior barrier properties.
Alternatively and/or additionally, regarding claims 1-7, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have incorporate effective amounts (e.g., 10-60 wt%) of inorganic fillers (alternatively corresponding to the recited “(C) an inorganic filler”) in the blend layer compositions of NISSENBAUM ET AL ‘098 in order to produce biodegradable laminates with modified mechanical properties (e.g., stiffness, etc.), reduced product costs, and/or increased rates of biodegradability and/or composting (as suggested in RUIZ ‘208).
Further regarding claim 1, one of ordinary skill in the art would have utilized effective amounts of one or more branching agents (e.g., trifunctional polyacids and/or polyols) in the second hydrophobic polymer (e.g., PBS, PBSA) of NISSENBAUM ET AL ‘098 in order to improve melt strength and melt processing characteristics (as suggested in WHITE ET AL ‘238 and IMAIZUMI-EP ‘153-B).
Further regarding claim 1, one of ordinary skill in the art would have utilized known PHB or PHBV resins with high (e.g., at least 70 mol%) 3-hydroxybutyrate contents (3HB) as suggested in ASRAR ET AL ‘203 in the PHA component of the blend layer compositions of NISSENBAUM ET AL ‘098 in order to produce biodegradable laminates with good mechanical properties.
Regarding claim 7, one of ordinary skill in the art would have incorporated effective minor amounts of trifunctional or higher functional compounds as branching agent in the second hydrophobic polymer (e.g., PBS, PBSA) of NISSENBAUM ET AL ‘098 in order to improve melt strength and other melt properties without impairing biodegradability.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
IHM ET AL (US 5,445,778) and REN ET AL (US 2011/0237750) and MOELLER ET AL (US 2017/0183494) discloses aliphatic polyester resins containing multi-functional compounds with 3 or more functional groups.
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.
The General Information telephone number for Technology Center 1700 is (571) 272-1700.
Information regarding the status of an application may be obtained from Patent Center. Status information for published applications may be obtained from Patent Center. Status information for unpublished applications is available through Patent Center for authorized users only. Should you have questions about access to Patent Center, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
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) Form at https://www.uspto.gov/patents/uspto-automated- interview-request-air-form.
July 25, 2026
/Vivian Chen/
Primary Examiner, Art Unit 1787
Prosecution Insights