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 § 103
1. 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.
2. Claim(s) 1-7 and 10-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP 2023024333 A.
With regard to claims 1-5, the published JP reference teach a resin composition contains an aliphatic-aromatic polyester resin including a repeating unit derived from aliphatic diol, a repeating unit derived from an aliphatic dicarboxylic acid and a repeating unit derived from an aromatic dicarboxylic acid as main constitutional units, and a specific crystallization accelerator (see translation). The published JP reference teach aliphatic polyester resins such as polybutylene succinate adipate (hereinafter sometimes abbreviated as "PBSA") and polybutylene adipate terephthalate (hereinafter, "PBA may be abbreviated as "T"), polybutylene succinate terephthalate (hereinafter referred to as "PB ST"), polybutylene sebacate terephthalate (hereinafter referred to as "PB (see translation). In the aliphatic-aromatic polyester resin (A), the aliphatic dicarboxylic acid unit represented by the above formula (4) is not particularly limited, C4-C12, particularly C4-C10 aliphatic dicarboxylic acid components are preferred, and C4-C6 linear aliphatic dicarboxylic acid components are particularly preferred (see translated reference). In the aliphatic-aromatic polyester resin (A), the aromatic dicarboxylic acid that gives the aromatic dicarboxylic acid unit represented by the above formula (5) is not particularly limited. 4 to 20 carbon atoms, especially 4 to 12 carbon atoms from the balance of decomposability. An aromatic dicarboxylic acid component having 4 to 8 carbon atoms, especially 4 to 6 carbon atoms, is particularly preferred. Specific examples include terephthalic acid, isophthalic acid, furandicarboxylic acid, naphthalenedicarboxylic acid, diphenyldicarboxylic acid and lower alkyl esters thereof (see translated reference). The melt flow rate (MFR) of the aliphatic-aromatic polyester resin (A) is not particularly limited, but it is usually 0.1 g/ 10 minutes or more and 100 g/10 minutes or less, but from the viewpoint of moldability and mechanical strength, preferably 40 g/10 minutes or less, more preferably 20 g/10 minutes or less (see translated reference). With regard to the claimed crystallization accelerator (e.g., nucleating agent), the published JP reference teach accelerators selected from the group silicate minerals, carbonates, silica spherical fine particles, hydrated aluminum silicate, mica, boron nitride, metal oxides, metal phosphates, calcium phosphates, and alkylphosphones. One or more selected from the group consisting of acid metal salts, sulfonates, fatty acid amides, aromatic carboxamides, phthalimides, waxes, ionomers and natural fibers. are preferred. Specifically, silicate minerals, metallic soaps, soaps, calcium carbonate, hydrous aluminum silicate, metallic oxides, boron nitride, silica spherical particles, mica, calcium phosphate salts, phosphate ester metal salts, alkyl sulfonate metal salts , sulfonates, crystalline low molecular weight compounds, aliphatic amides, naphthalene carboxamides, imides, crystalline alcohols such as pentaerythritol, polyolefins, waxes, polyesters, ionomers, and naturally derived polymers (see translated reference). The published JP reference teach that the content of the crystallization accelerator (B) is 0.001 to 45 parts by weight per 100 parts by weight of the aliphatic-aromatic polyester (A) in an amount of 0.001 parts by weight or more of the crystallization accelerator (see translated reference). In addition to the crystallization accelerator of the JP reference, the polyester resin composition contains a plasticizer, a mouth opening improver, a lubricant, a release agent, an antistatic agent, and an antifogging agent for the purpose of improving processability, agents, light stabilizers, ultraviolet absorbers, pigments, inorganic fillers, antifungal agents, antibacterial agents, foaming agents, flame retardants, etc., can be contained within limits that do not interfere with purpose of the polyester resin (see translated reference). The abundance ratio (molar ratio) of the repeating unit derived from the aliphatic dicarboxylic acid and the repeating unit derived from the aromatic dicarboxylic acid in the aliphatic-aromatic polyester resin (A) is 10:90 (see translated reference). The resin composition the published JP reference can be molded by a known polyester molding method. The molding method is not particularly limited, and known methods such as compression molding, lamination molding, injection molding, extrusion molding, vacuum molding, air pressure molding, blow molding, inflation molding, and stretching can be used. In particular, the effect of the present invention is remarkably exhibited when molding by extrusion molding or inflation molding. More specifically, for example, a method of cooling and solidifying a film-like, sheet-like or cylindrical product extruded to a predetermined thickness from a T-die, an I-die, a round die or the like with a cooling roll, water, compressed air, or the like. is mentioned. Applications of the molded product are not limited, specifically food films, fresh food trays and fast-food containers, outdoor leisure products, fishing lines, fishing nets, vegetation nets, water retention sheets, coating materials, agricultural mulch films, fertilizers. Coating material, nursery bed, flower pot, etc., creased tape, split yarn, composite fiber, shopping bag, zipper, fruit & vegetable bag, shopping bag, garbage bag, compost bag, fiber, filament, food packaging material, shrink film, It can be used for cutlery, 3D printer filament, capsule, cosmetic container, detergent container, bleach container, rope, binding material, surgical line, fishing line, fishing net, sanitary coverstock material, cooler box, cushioning material, synthetic paper, etc. (see translated reference).
With regard to the claimed crystallinity of claims 1 and 15 and the test methods recited in claims 13 and 14 the Examiner is of the position that the resin of the published JP reference is the same or similar to the claimed resin. As such, it is expected the resin of the published JP reference would exhibit the claimed crystallinity of claims 1 and 15, the adhesive strength of claim 13 and isothermal crystallization of claim 14. Support for the Examiner’s supposition is found in the teachings of the published JP resin directed to forming a nearly identical biodegradable resin using the claimed constituents as set forth above. The Patent and Trademark Office can require applicants to prove that prior art products do not necessarily or inherently possess characteristics of claimed products where claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes; burden of proof is on applicants where rejection based on inherency under 35 U.S.C. § 102 or on prima facie obviousness under 35 U.S.C. § 103, jointly or alternatively, and Patent and Trademark Office’s inability to manufacture products or to obtain and compare prior art products evidences fairness of this rejection, In re Best, Bolton, and Shaw, 195 USPQ 431 (CCPA 1977).
With regard to claim 6, the published JP reference teach adding a crystallization accelerator the claimed amounts. The Examiner equates the disclosed crystallization accelerator to the claimed nucleating agents (see above).
With regard to claim 7, the published JP reference teach accelerators selected from the group silicate minerals, carbonates, silica spherical fine particles, hydrated aluminum silicate, mica, boron nitride, metal oxides, metal phosphates, calcium phosphates, and alkylphosphones. One or more selected from the group consisting of acid metal salts, sulfonates, fatty acid amides, aromatic carboxamides, phthalimides, waxes, ionomers and natural fibers. are preferred. Specifically, silicate minerals, metallic soaps, soaps, calcium carbonate, hydrous aluminum silicate, metallic oxides, boron nitride, silica spherical particles, mica, calcium phosphate salts, phosphate ester metal salts, alkyl sulfonate metal salts , sulfonates, crystalline low molecular weight compounds, aliphatic amides, naphthalene carboxamides, imides, crystalline alcohols such as pentaerythritol, polyolefins, waxes, polyesters, ionomers, and naturally derived polymers (see translated reference).
With regard to claims 10-11, the published JP reference teach adding the claimed alcohols (see translated reference). Specific examples of trifunctional aliphatic polyhydric alcohols include trimethylolpropane and glycerin, and specific examples of tetrafunctional aliphatic polyhydric alcohols include pentaerythritol. These may be used alone or in combination of two or more. Among these, trimethylolpropane and glycerin are preferred, and trimethylolpropane is more preferred. The Examiner considers these alcohols equivalent to the claimed branching agents.
With regard to claim 12, the published JP reference teach the claimed melt flow (see above).
With regard to the claimed non-woven fabric limitations of claim 15 the published JP reference teach forming fibers and yarns from the biodegradable resin composition (see above). Fabrics (e.g., non-woven fabrics) are formed using fibers and yarns. The Examiner is of the position that a person of ordinary skill in the art would easily recognize that fibers and yarns can be used to form the claimed non-woven fabrics. Motivation to form non-woven fabrics is found in the desire to expand the number of applications of the biodegradable resin fibers and yarns. Therefore, motivated by the desire to form a biodegradable non-woven fabric it would be obvious to a person of ordinary skill in the art to form a non-woven fabric from the fibers and yarns of the JP reference.
3. Claim(s) 8-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP 2023024333 A as applied to claim 1 and further in view of EP 4095180 A1.
The published JP reference is set forth above. The published JP reference does not teach the claimed cellulose nucleating agent.
The published EP reference teach a similar biodegradable polyester resin, in which the first repeat unit comprising a first diol residue and an aromatic dicarboxylic acid residue and the second repeat unit comprising a second diol residue and an aliphatic dicarboxylic acid residue satisfy a ratio of the number of repeat units in a specific range, and the softness index of the resin satisfies a specific range, and to a process for preparing the same. The published EP reference further teach adding nanocellulose in amount of 600 and 1,000 ppm (see EP paragraphs 0156-0160 and examples 5 and 7). Said nanocellulose has a length ranging from 5nm to 10µm (see EP paragraph 0160). With regard to the claimed amount of nanocellulose, it has been held that, 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). The published EP reference teach that the nanocellulose is added to enhance the strength and biodegradability to the polyester resin (see EP reference paragraph 0157). Therefore, motivated by the desire to enhance the strength and biodegradability to the polyester resin it would have been obvious to a person of ordinary skill in the art at the time the invention was made to formulate the biodegradable polyester resin of the published JP reference with nanocellulose as taught by the published EP reference.
Double Patenting
4. 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 § 2146 et seq. 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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claims 1-15 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/963488 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter sought is encompassed and significantly overlaps with the subject matter of copending Application No. 18/963488 (reference application).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
5. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LYNDA SALVATORE whose telephone number is (571)272-1482. The examiner can normally be reached M-F.
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/LYNDA SALVATORE/Primary Examiner, Art Unit 1789
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