DETAILED ACTION
Notice of Pre-AIA or AIA Status
Claim(s) 1, 5-28 is/are pending.
Claim(s) 1, 5-28 is/are rejected.
Claim(s) 2-4 is/are cancelled by Applicant.
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) 5, 9-11 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 5 is vague and indefinite because it fails to specify the test conditions (e.g., temperature, duration, etc.) for determining shrinkage.
Claims 9-11 are vague and indefinite because of the phrase “print film or web” lacks adequate antecedent basis.
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.
Claim(s) 1, 5-28 is/are rejected under 35 U.S.C. 103 as being unpatentable over:
• NODA ET AL (US 2002/0143136),
in view of DOU ET AL (US 2010/032319),
and in view of DALIBEY ET AL (US 2020/0199354).
NODA ET AL ‘136 discloses biodegradable and/or compostable multi-layer films comprising:
• an outer first layer (A) (e.g., comprising polylactic acid (PLA), optionally with a PHA resin consistent with the PHA copolymer of the core second layer) (corresponding to the recited “skin film layer” and/or the recited “sealant film layer”), wherein the composition of the outer first layer (A) and the outer third layer (C) can be the same (or different);
• a core second layer (B) (corresponding to the recited “core layer”) comprising a blend of:
• 5-95 wt% (preferably 30-70 wt% of one or more polyhydroxyalkanoate (PHA) resin(s), wherein the PHA resin(s) comprise:
•a first random repeating monomer unit (RRMU) of structure (I) --
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136
371
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for example, R1=C1 alkyl (methyl) and n=1 (i.e., 3-hydroxybutyrate (3HB); etc.
• one or more second RRMUs of structure (II) or (III) --
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333
369
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for example, R2=C3 alkyl (ethyl) (i.e., 3- hydroxyhexanoate (3HH); etc.;
wherein the PHA resin preferably comprises at least 50 mol% of the first RRMU (e.g., 3HB) and 2-50 mol% (more preferably 5-20 mol%) of the second RRMU (e.g., 3HH);
wherein the PHA resin can be a blend of multiple PHA resins;
• 5-95 wt% (preferably 30-70 wt%) of a semi-crystalline polylactic acid (PLA) polymer (corresponding to the recited “non-PHA modifier X”), wherein the PLA polymer typically has a melting temperature (Tm) of about 80-190 °C (e.g., 160-175 °C, etc.);
• less than 50 wt% of other components, (e.g., other polymers such as polycaprolactone, etc.; slip / anti-block agents; pigments; fillers; nucleating agents; etc.);
• an outer third layer (C) (e.g., PLA, optionally with a PHA resin PHA resin consistent with the PHA copolymer of the core second layer, etc.) (corresponding to the recited “skin film layer” and/or the recited “sealant film layer”), wherein the outer third layer (C) can be made thermally bondable or heat-sealable (e.g., by incorporating lower melting polymer, etc.);
wherein the film layers optionally comprise further ingredients known to one of skill in the art (e.g., additives such as nucleating agents, fillers, slip agents, etc.).
Films containing the disclosed PHA / PLA blends exhibit improved or different performance properties (e.g., hardness/softness, brittleness/flexibility, toughness, processibility, optical properties, etc.) compared to PHA alone or PLA alone (entire document, paragraph 0011, 0014, 0017-0025, 0032, 0034, 0037-0045, 0049-0050, 0053-0062, 0073-0074, 0082, 0085-0086, etc.) However, the reference does not specifically discuss PLA-containing outer layers containing polymeric modifiers.
DOU ET AL ‘196 discloses that it is well known in the art to form biodegradable laminates comprising at least 3 layers -- for example:
(C) heat-sealable PLA-based outer layer (corresponding to the recited “skin film layer” and/or the recited “a sealant film layer”);
(B) a PLA-based core layer;
(A) a third outer layer (e.g., comprising PLA, etc.), wherein the third layer (A) is:
• formulated or surface-treated to facilitate subsequent metallization (e.g., to produce a barrier layer) and/or printing and/or coating;
and/or
• is formulated to be heat-sealable using a heat-sealable PLA-based composition which is the same as (or similar to) heat-sealable PLA-based layer (C);
(corresponding to the recited “skin film layer” and/or the recited “a sealant film layer”)
The reference further discloses that the biodegradable multilayer films can, as part of a biaxial orientation process, be subjected to heat-setting or annealing at typical temperatures of about 90-135°C to reduce internal stresses due to orientation and minimize thermal shrinkage. (paragraph 0021-0022, 0037, 0050-0051, 0053-0057, etc.)
DALIBEY ET AL ‘354 discloses that it is well known in the art to incorporate biodegradation-promoting biological entities (e.g., enzymes, etc.) in biodegradable film compositions which enable plastic articles (e.g., films, etc. with haze values as low as 3%, etc.) made from biodegradable polyesters (e.g., PLA, PHA, PCL, PBS(A), etc.) to be composted under industrial or home composting conditions (e.g., OK Compost Home in accordance with Label TUV Austria; etc.). (paragraph 0008, 0020-0022, 0066-0069, 0075-0076, 0079-0083, 0109-0115, 0324-0326, )
Regarding claims 1, 6-8, 10-12, 14-15, 19-20, 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 PHA copolyesters containing 3-hydroxybutyrate (3HB) and minor amounts (e.g., 5-20 mol%, etc.) of 3-hydroxyhexanoate (3HH) as components of the core layer (B) and optionally the first outer layer (A) and optionally the first outer layer (C) in the multilayer films of NODA ET AL ‘136.
Further regarding claims 1, 7-8, 12, 15, 19, 21, 23, since: (i) the term “skin film layer” is merely a positional term which requiring the layer to be an outer or surface layer of a laminate; and (ii) the term “sealant film layer” is merely a functional term requiring the layer to have the ability to form a seal; a heat-sealable outer layer can simultaneously satisfy both limitations of being a “skin film layer” and a “sealant film layer”. Therefore, a multilayer film comprising:
• heat-sealable outer layer;
• core film layer;
• heat-sealable outer layer;
(as disclosed or suggested by NODA ET AL ‘136 in combination with DOU ET AL ‘196) equally corresponds to the variously individually recited (skin / core / skin) (claims 15, 21) and (seal / core / seal) (claims 12, 19) and (skin / core / seal) (claim 7-8, 23) structures.
Further regarding claims 1, 5-28, one of ordinary skill in the art would have incorporated known compost-promoting additives as suggested by DALIBEY ET AL ‘354 in the multilayer films of NODA ET AL ‘136 in order to obtain the biodegradation and/or composting characteristics desired or required for specific applications or certifications.
Regarding claims 5, 9, 13, 16-28, one of ordinary skill in the art would have subjected the multilayer films of NODA ET AL ‘136 to conventional film-forming processes such as biaxial orientation combined with an annealing step at temperatures of 90-135°C (as suggested by DOU ET AL ‘196) to reduce internal stresses due to orientation and thereby minimize thermal shrinkage at elevated temperatures.
Regarding claims 5, 9, 13, 25, 27-28, one of ordinary skill in the art would have selected the film orientation parameters and accompanying heat-setting or annealing conditions (as suggested by DOU ET AL ‘196) in order to produce with low shrinkage at temperatures of 120°C or less, since it is well known in the art that the heat-setting or annealing temperature of stretched films strongly controls the onset of significant heat-shrinkage in an oriented film.
Regarding claims 6, 10, 14, 26, one of ordinary skill in the art would have selected the composition of the film layers; and/or (ii) incorporated additional support or toughening layers; in the multilayer films of NODA ET AL ‘136 in order to obtain the penetration resistance (as represented by the pin puncture) required for specific packaging applications.
Regarding claims 11, 24, one of ordinary skill in the art would have selected the compositions (e.g., omitting opacity-increasing or haze-increasing additives; utilizing miscible components; selecting the size of particles or polymer domains to be less than the wavelength of visible light to prevent light scattering; etc.) of the various film layers in the multilayer films of NODA ET AL ‘136 in order to obtain the optical properties (e.g., transparency, etc.) desired for specific applications.
Regarding claims 17-18, one of ordinary skill in the art would have utilized other well-known orientation-stress-reducing techniques (e.g., film relaxation) before or during heat-setting or annealing the oriented films of NODA E AL ‘136 in order to further reduce the internal stresses generated during film orientation and thereby reduce the film’s tendency to shrink when exposed to heat, wherein the degree of relaxation is selected by one of ordinary skill in the art to provide the low heat shrinkage at specific temperatures while maintaining the desired degree of film orientation.
Regarding claim 20, 22, one of ordinary skill in the art would have subjected at least one surface of the multilayer films of NODA ET AL ‘136 to conventional after-treatments such as metallization (e.g., for decorative and/or barrier properties) and/or printing (e.g., for decorative and/or informative functions) and/or coating (e.g., prior to application to subsequently applied functional coatings).
The Examiner cautions that if Applicant chooses to argue that the physical properties recited in claims 5-6, 9-10, 13-14, 26 cannot be obtained by one of ordinary skill in the art using known improvement and/or modification techniques or methods (e.g., as mentioned above) using routine experimentation, this may raise significant issues under 35 U.S.C. 112(a) with respect to scope of enablement, and that Applicant’s arguments and/or assertions may be used as admissions or supporting evidence with respect to rejections under 35 U.S.C. 112(a) with respect to scope of enablement.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
KRISHNASWAMY (US 2013/0065046) discloses that it is well known in the art to utilize blends comprising PLA and PHA resins containing minor amounts of 3-hydroxyhexanoate (3HH) with the balance being 3-hydroxybutyrate (3HB).
DOU ET AL (US 2010/0323196) disclose heat-sealable PLA-containing outer layers.
GUILLLAMOT ET AL (US 2022/0177697) and LAPRAY ET AL (US 2020/0339781) and LAPRAY ET AL (US 2020/0339784) and ALLEN ET AL (US 2020/0339803) and GUEMARD ET AL (US 2022/0227957) disclose polymer compositions containing additives which promote biodegradation and home compostability.
KARHUKETO (US 6,080,478) and WNUK ET AL (US 5,391,423) disclose laminates of biodegradable polymers.
JOHSON ET AL (US 2018/0118895) and KHEMANI ET AL (US 2003/0166779) and ANDREWS ET AL (US 2018/0334564) and MATSUMURA ET AL (US 5,464,689) and YABUSA ET AL (US 5,498,385) and WNUK ET AL (US 5,939,467) and ASRAR ET AL (US 6,191,203) and WONG ET AL (US 2015/0337094) and WHITEHOUSE (US 2004/0220355) disclose blends of biodegradable polymers.
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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August 8, 2026
/Vivian Chen/
Primary Examiner, Art Unit 1787
Prosecution Insights