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 Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim Rejections - 35 USC § 103
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 1-20 are rejected under 35 U.S.C. 102(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Okura (US 2021/0301127; effectively filed August 20, 2018).
Regarding claims 1-20, Okura teaches a drink straw/tube (Abstract; paragraphs [0014], [0019], [0027], [0028], [0039]-[0043]) having formed by extruding a polyhydroxyalkanoate (PHA) material/poly(3-hydroxybutyrate) materials (a species of the claimed genus) and cooling the extruded material in a water bath (Abstract; paragraphs [0014]-[0018], [0028], [0029], [0034]-[0050], [0079]-[0081] and [0090]-[0092]; Tables 1-3) to form the tube/straw having controlled sizes/dimensions/diameters/thicknesses (Abstract; paragraphs [0016], [0017], [0027], [0039]-[0042], [0046], [0047], [0079], [0085]-[0087], Table 2; claims 1 and 12). The composition includes the required amount of PHA material as set forth in claims 2, 16 and 18 (paragraphs [0037], [0050], [0053], [0054], [0076]; Table 1). Further, as to claims 8-15, Okura further teaches crystallizing the material in water at a desired temperature to cool it for crystallization (Abstract; paragraphs [0018], [0023], [0026], [0028], [0029], [0046], [0047],[0048]) and exemplifies a water temperature of 30 °C after extrusion at 145 °C such that the shape of the straw is able to be maintained (paragraphs [0046], [0047], [0050], [0079] and [0084]), which is understood to produce the same claimed straw. As such, Okura is understood to anticipate the claimed drink straw. Alternatively, to the extent there is or may be some structural difference that results or is able to result from the method steps set forth in the claims, there is nothing of record to suggest these differences wouldn’t have been prima facie obvious (e.g. as an overlapping range of properties resulting from potentially different operating conditions between the claimed method and the method of Okura– overlapping ranges are prima facie obvious).
The examiner acknowledges that Okura does not teach each and every method step set forth in the claims to produce the drink straw. However, the claim is a product-by-process claim and is limited to the structure produced by the claimed steps and not the method steps themselves. See MPEP 2113, and some pertinent citations below, regarding the scope and examination of product-by-process claims. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
"The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature" than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974).
Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an nonobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 799, 803, 218 USPQ 289, 292-33 (Fed. Cir. 1983).
As to the other dependent claims, the dimensions and properties of the straw produced by utilizing the recited equipment and process steps are also understood to be taught (anticipated) or rendered prima facie obvious (e.g. as an overlapping range of properties or dimensions) for substantially the same reasons as set forth above.
Claims 1-20 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Noda et al. (US 2003/0217648).
Regarding claims 1-20, Noda et al. teach food service items, including straws, that are produced by extruding polyhydroxyalkanoate material and cooling it in a water bath to form a straw having desired dimensions (Abstract; paragraphs [0038], [0093], [0107], [0155] and [0156]). The composition includes the required amount of PHA material as set forth in claims 2, 16 and 18 (paragraphs [0065]-[0071], [0095], [0155] and [0156]) and Noda et al. teach controlling/achieving a desired degree of crystallinity ([0083]-[0092], [0114]) and having a melting temperature up to about 160 °C (paragraphs [0091]). As to claims 8-15, Noda et al. exemplify extruding the material at a temperature of 150 °C and cooling it at a temperature of 60 °C [0155] and [0156]), which is understood to produce the same claimed straw having desired/controlled dimensions (paragraphs [0102], [0155] and [0156]).
As such, Noda et al. are understood to anticipate the claimed drink straw. Alternatively, to the extent there is or may be some structural difference that results or is able to result from the method steps set forth in the claims, there is nothing of record to suggest these differences wouldn’t have been prima facie obvious (e.g. as an overlapping range of properties resulting from potentially different operating conditions between the claimed method and the method of Noda et al.– overlapping ranges are prima facie obvious).
The examiner acknowledges that Noda et al. do not teach each and every method step set forth in the claims to produce the drink straw. However, the claim is a product-by-process claim and is limited to the structure produced by the claimed steps and not the method steps themselves. See MPEP 2113, and some pertinent citations below, regarding the scope and examination of product-by-process claims. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
"The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature" than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974).
Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an nonobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 799, 803, 218 USPQ 289, 292-33 (Fed. Cir. 1983).
As to the other dependent claims, the dimensions and properties of the straw produced by utilizing the recited equipment and process steps are also understood to be taught (anticipated) or rendered prima facie obvious (e.g. as an overlapping range of properties or dimensions) for substantially the same reasons as set forth above.
Claims 1-20 are rejected under 35 U.S.C. 102(a)(1)/102(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Ganatra et al. (US 2018/0339129).
Regarding claims 1-20 Ganatra et al. teach an apparatus for manufacturing a small diameter extruded tube (Abstract; paragraphs [0003], [0008], [0009], [0012]; these small diameter tubes have the claimed same structure as a drinking straw as claimed and disclosed and are understood to read upon a drink straw) the apparatus comprising: a hopper that contains raw PHA material (paragraphs [0012], [0013], [0027]-[0031], Poly-4-hydroxybutyrate is a species of the generic PHA; paragraph [0049] – hopper) an extruder that is configured to receive raw PHA material from the hopper and to produce extruded PHA material (paragraphs [0047]-[0052] and [0063]); a pre-sizing water bath/first quench bath that is configured to receive the extruded PHA material from the extruder and is capable of cause the extruded PHA material to begin to crystallize to form crystalizing PHA material, and to provide the crystalizing PHA via a sizing tube to a second water bath (paragraph [0063]). Ganatra et al. disclose controlling the rate of crystallization and cooling (paragraphs [0038], [0047], [0052], [0063]; claims 2-6 and dimensions of the tube (paragraph [0046], [0063], [0065], [0066]; claims 12 and 13). Ganatra et al. disclose an iris and a second water/quench bath (paragraph [0063]). Ganatra et al. is understood to disclose a substantially similar process that is understood to produce the same claimed structure.
As such, Ganatra et al. are understood to anticipate the claimed drink straw. Alternatively, to the extent there is or may be some structural difference that results or is able to result from the method steps set forth in the claims, there is nothing of record to suggest these differences wouldn’t have been prima facie obvious (e.g. as an overlapping range of properties resulting from potentially different operating conditions between the claimed method and the method of Ganatra et al– overlapping ranges are prima facie obvious).
The examiner acknowledges that Ganatra et al. do not teach each and every method step set forth in the claims to produce the drink straw. However, the claim is a product-by-process claim and is limited to the structure produced by the claimed steps and not the method steps themselves. See MPEP 2113, and some pertinent citations below, regarding the scope and examination of product-by-process claims. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
"The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature" than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974).
Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an nonobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 799, 803, 218 USPQ 289, 292-33 (Fed. Cir. 1983).
As to the other dependent claims, the dimensions and properties of the straw produced by utilizing the recited equipment and process steps are also understood to be taught (anticipated) or rendered prima facie obvious (e.g. as an overlapping range of properties or dimensions) for substantially the same reasons as set forth above.
Claims 1-20 are rejected under 35 U.S.C. 102(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Johnson et al. (US 2020/0095420; effectively filed September 20, 2018).
Regarding claims 1-20, Johnson et al. teach a drink straw that is made from polyhydroxyalkanoate material that includes extruding the material and cooling it in a water bath to crystallize and produce the straw having desired dimension (Abstract; paragraphs [0020]-[0022], [0037], [0038], [0052]-[0054] and [0060]-[0069). As to claims 2, 16 and 18, Johnson et al. teach amounts of the material as claimed (paragraphs [0007], [0015], [0019], [0029], [0040] – up to 95% PHA, and [0060]-[0069]). As such, Johnson et al. are understood to anticipate the claimed drink straw. Alternatively, to the extent there is or may be some structural difference that results or is able to result from the method steps set forth in the claims, there is nothing of record to suggest these differences wouldn’t have been prima facie obvious (e.g. as an overlapping range of properties resulting from potentially different operating conditions between the claimed method and the method of Johnson et al.– overlapping ranges are prima facie obvious).
The examiner acknowledges that Johnson et al. do not teach each and every method step set forth in the claims to produce the drink straw. However, the claim is a product-by-process claim and is limited to the structure produced by the claimed steps and not the method steps themselves. See MPEP 2113, and some pertinent citations below, regarding the scope and examination of product-by-process claims. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
"The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature" than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974).
Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an nonobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 799, 803, 218 USPQ 289, 292-33 (Fed. Cir. 1983).
As to the other dependent claims, the dimensions and properties of the straw produced by utilizing the recited equipment and process steps are also understood to be taught (anticipated) or rendered prima facie obvious (e.g. as an overlapping range of properties or dimensions) for substantially the same reasons as set forth above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jeff Wollschlager whose telephone number is (571)272-8937. The examiner can normally be reached M-F 7:00-3:30.
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) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christina Johnson can be reached at 571-272-1176. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JEFFREY M WOLLSCHLAGER/Primary Examiner, Art Unit 1742
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