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 .
Claim Objections
Claim 6 is objected to because of the following informalities: “20% wt%” should be stated as “20 wt%.” Appropriate correction is required.
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.
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.
Claims 1-18 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Kaneko et al (JP 2013028701 A).
Regarding claims 1-5, 7, 8, and 11-14, Kaneko teaches a biodegradable resin composition comprising: thermoplastic starch (TPS); biodegradable polymers (e.g. aliphatic polyester and polybutylene adipate terephthalate); and a plasticizer (abstract, page 1, 3, 7, 10-11).
Regarding the limitations “a biodegradable polymer having a melt flow index of greater than 30 g/10 min under conditions of 190°C and a load of 2.16 kg;” and “wherein the melt flow index of the biodegradable polymer measured under conditions of 190°C and a load of 2.16 kg is greater than 30 g/10 min and 75 g/10 min or less;” Kaneko teaches the melt flow rate (MFR) of the aliphatic polyester resin is measured at 190 °C. and 2.16 kg, the lower limit is usually 0.1 g / 10 min or more, and the upper limit is usually 100 g / 10 min (page 5). This range substantially overlap that of the instant claims. It has been held that overlapping ranges are sufficient to establish prima facie obviousness. Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to have selected from the overlapping portion of the range taught by Kaneko, because overlapping ranges have been held to establish prima facie obviousness (MPEP § 2144.05).
Regarding the limitation “a melt flow index of the biodegradable resin composition measured under conditions of 190°C and a load of 2.16 kg is 2.5 g/10 min to 20 g/10 min;” the Examiner takes official notice that one of ordinary skill in the art at the time of invention would have known that the MFR of a resin affects its physical and mechanical properties (e.g., processability, strength, impact resistance, stiffness, etc.); so it would have been obvious to one of ordinary skill in the art at the time of invention would to adjust the MFR of the resin to optimize its physical and mechanical properties per the necessary application or end use.
Regarding the limitations “wherein a content of the biodegradable polymer is 30% by weight or less based on a total weight of the biodegradable resin composition;” “wherein the content of the biodegradable polymer is 10% by weight to 30% by weight based on the total weight of the biodegradable resin composition;” “wherein a content of the plasticizer is less than 20% by weight based on the total weight of the biodegradable resin composition;” “wherein the content of the plasticizer is 1% by weight to 10% by weight based on the total weight of the biodegradable resin composition;” “wherein a content of the thermoplastic starch is 50% by weight or more based on the total weight of the biodegradable resin composition;” “wherein the content of the thermoplastic starch is 50% by weight to 90% by weight based on the total weight of the biodegradable resin composition;” “wherein a ratio of the content of the thermoplastic starch to the content of the biodegradable polymer is 2 or more based on the weight;” and “wherein the ratio of the content of the thermoplastic starch to the content of the biodegradable polymer is 2 to 10 based on the weight;” Kaneko teaches the content of the aliphatic polyester resin is 20 parts by weight or more; the content of starch is 60 parts by weight or less; and the content of the plasticizer is 15 parts by weight or less (based on100 parts by weight) (para 6-7).
These ranges substantially overlap that of the instant claims. It has been held that overlapping ranges are sufficient to establish prima facie obviousness. Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to have selected from the overlapping portion of the range taught by Kaneko, because overlapping ranges have been held to establish prima facie obviousness (MPEP § 2144.05).
Furthermore, "where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP § 2144.05 II A).
Regarding claim 6, Kaneko would have suggested or otherwise rendered obvious to one of ordinary skill in the art at the time of invention a thermoplastic starch (TPS) is prepared by adding a polar compound as a plasticizer to starch derived from at least one of corn and potato, and kneading the mixture of the starch and the polar compound while applying a predetermined shear pressure to transform the starch into thermoplastic starch, and wherein the polar compound is a polyhydric alcohol compound including glycerol, sorbitol, or ethylene glycol, and wherein a content of the polar compound in a total weight of the mixture of starch and the polar compound is 20% wt% to 30 wt%, e.g., 60 parts by weight starch to 15 parts by weight plasticizer so 25 wt% (page 6-7, 10-11).
Regarding claim 9 and 10, Kaneko teaches the use of plasticizers such a dihydric alcohol (e.g., ethylene glycol) or a trihydric alcohol (e.g., glycerol) and a tetrahydric alcohol (e.g., pentaerythritol) and their use in combinations (i.e., wherein the plasticizer comprises a first plasticizer including a dihydric alcohol or a trihydric alcohol, and a second plasticizer including a tetrahydric or higher polyhydric alcohol) (page 7).
The Examiner takes official notice that one of ordinary skill in the art at the time of invention would have known that using subjecting starches to plasticizers affects the physical and mechanical properties (e.g., processability, flexibility stiffness, elongation etc.) of the resultant thermoplastic starch; so it would have been obvious to one of ordinary skill in the art at the time of invention would to adjust the amount of each plasticizer optimize its physical and mechanical properties per the necessary application or end use.
Regarding claim 15, Kaneko teaches using the biodegradable resin to form a film (page 1)
Regarding claim 16, Kaneko teaches the composition of the biodegradable resin of claim 1 and suggests the film may be made by extrusion or molding (page 14) which match the process by which the film of the instant claims is made (instant spec pages 13-14). Therefore, it is deemed to possess the properties or functionality of the instant claim.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). (MPEP § 2112.01 I).
Regarding claim 17, It is noted that a change in size, scale, proportionality and shape is not patently distinct over the prior art absent persuasive evidence that the particular configuration of the claimed invention is significant. See In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955); In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976); In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966); In Gardner V. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). MPEP 2144.04[R-1].
A change in size (dimension) is generally recognized as being within the level of ordinary skill in the art. In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955). Where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device, and the device having the claimed dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device, Gardner V. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to provide the film of Kaneko with the dimensions (e.g., the thickness of the film) based on the prior art's intended application as in the present invention.
In addition, the Examiner takes official notice that one of ordinary skill in the art at the time of invention would have known that the thickness of a film affects its physical and mechanical properties (e.g., weight, strength, puncture and tear resistance, flexibility, etc.); so it would have been obvious to one of ordinary skill in the art at the time of invention would to adjust the thickness of the film to optimize its physical and mechanical properties per the necessary application or end use.
Regarding claims 18 and 20, Kaneko teaches the use of its resins in many applications such as films, bags, and containers (page 1); wherein the use of multilayer films was known in the art at the time of invention. Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to form a multilayer film (i.e., multilayer barrier film) using the resin of claim 1; wherein the multilayer film comprises three layers of a film formed using the resin of claim 1, i.e., a first resin layer; a barrier layer disposed on the first resin layer, and formed from the biodegradable resin composition according to claim 1; and a second resin layer disposed on the barrier layer wherein the first and second resin layer would comprise aliphatic polyester since it is present in the biodegradable resin. Furthermore, it would have been obvious to one of ordinary skill in the art at the time of invention to duplicate a filmed formed from the biodegradable resin, therein creating a multilayer film, since duplication of parts is prima facie obvious (MPEP § 2144.04 VI B).
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Kaneko as applied to claims 18 above, and further in view of Wang et al (US 2014/0005620 A1).
Kaneko teaches the multilayer barrier film of claim 18.
Kaneko fails to suggest the multilayer barrier film wherein each of the first resin layer and the second resin layer has a lower water vapor transmission rate than the barrier layer.
However, Kaneko teaches its biodegradable resins may contain fillers and be stretched (page 12, 15).
Wang teaches biodegradable resins for use in forming films; wherein the films comprise fillers and be stretched to enhance breathability and the water vapor transmission rate; wherein the films may be employed as an individual wrap, packaging pouch, or bag (para 81, 91-92, 110).
Therefore, per the teachings of Wang, it would have been obvious to one of ordinary skill in the art at the time of invention to use fillers in and stretch the layers of the multilayer barrier film of Kaneko to optimize the breathability or water vapor transmission rate of the layers as necessary per the required application.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NATHAN L VAN SELL whose telephone number is (571)270-5152. The examiner can normally be reached Mon-Thur, Generally 7am-6pm.
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NATHAN VAN SELL
Primary Examiner
Art Unit 1783
/NATHAN L VAN SELL/Primary Examiner, Art Unit 1783
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