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 § 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.
Claims 1, 3-6 and 8-12 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In claim 1, line 10, the period should be deleted and replaced by either a comma or a semi-colon (a claim should have only one period, at the end of the claim).
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.
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, 3, 8, 9 and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schmidt et al (U.S. Patent Application Publication 2016/0060451 A1) in combination with Hirota et al (WO 2022/113530 A1).
Since WO 2022/113530 A1 is not written in English, equivalent document U.S. Patent Application Publication 2024/0010789 A1 will be used to set forth the rejection.
Regarding claim 1, Schmidt et al (see the entire document, in particular, paragraphs [0001], [0096] – [0102], [0121], [0125], [0144] and [0152]) teaches a process (see paragraphs [0001] (method for the production of a polymer composition), [0096] – [0102] (production of a mixture including a polyhydroxyalkanoate by homogenization) and [0121] (homogenization in an extruder) of Schmidt et al), including (a) mixing at least one polyhydroxyalkanoate in powder form at a temperature from 120 - 190°C to form an extrusion mixture consisting of the at least one polyhydroxyalkanoate (see paragraphs [0101] (homogenization of a mixture including a polyhydroxyalkanoate) and [0121] (temperature during homogenization of 90 - 250°C) of Schmidt et al); and (b) extruding the mixture through an extrusion die to form a resin extrudate consisting of the at least one polyhydroxyalkanoate (see paragraph [0152] (granules A and B (containing a polyhydroxyalkanoate) were melted in a single-screw extruder an further processed to blown film (using a blown-film die)) of Schmidt et al); and wherein (b)(1) the at least one polyhydroxyalkanoate in powder form has an initial moisture content, prior to mixing, of at least 1 weight percent, when mixed (see paragraph [0102] (the end product has a water content of less than 5 weight percent; thus, the initial water content was at least 1 weight percent) of Schmidt et al). Schmidt et al does not teach (b)(2) wherein the at least one polyhydroxyalkanoate has an initial weight average molecular weight before the mixing step and a final weight average molecular weight after the extruding step, which is at least 80 percent of the initial weight average molecular weight. Hirota et al (see the entire document, in particular, paragraphs [0001], [0010], [0042] and [0142]) teaches a process (see paragraph [0001] (method for producing poly(3-hydroxyalkanoate)) of Hirota et al), wherein the at least one polyhydroxyalkanoate has an initial weight average molecular weight before the mixing step and a final weight average molecular weight after the extruding step, which is at least 80 percent of the initial weight average molecular weight (see paragraphs [0042] (initial weight average molecular weight of not less than 400,000) and [0142] (final weight average molecular weight of 100,000 – 700,000) of Hirota et al), and it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide a final weight average molecular weight which is at least 80 percent of the initial weight average molecular weight in the process of Schmidt et al in view of Hirota et al in order to produce a poly(3-hydroxyalkanoate) with reduced impurities at a high yield (see paragraph [0010] of Hiroata et al).
Regarding claim 3, see paragraph [0102] (the end product has a water content of less than 5 weight percent; thus, the initial water content was at least 1 weight percent) of Schmidt et al.
Regarding claim 8, see paragraph [0144] (composition including PHBH) of Schmidt et al.
Regarding claim 9, see paragraph [0125] (AONILEX X 151 A brand of PHBH contains about 6 – 11 mole percent of 3-hydroxyhexanoate) of Schmidt et al.
Regarding claim 12, see paragraph [0042] (initial weight average molecular weight of not more than 3,000,000) of Hirota et al.
Claim(s) 4-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schmidt et al (U.S. Patent Application Publication 2016/0060451 A1) in combination with Hirota et al (WO 2022/113530 A1) as applied to claims 1, 3, 8, 9 and 12 above, and further in view of Liu (CN 109111625 A).
Regarding claim 4, Schmidt et al (in combination with Hirota et al) does not teach (1) that the mixing step and the extruding step are carried out in different devices or in different chambers of the same device. Liu (see the entire document, in particular, paragraphs [0002], [0006], [0014] and [0017] of the translation) teaches a process (see paragraph [0002] (preparation of film) of Liu), including that the mixing step and the extruding step are carried out in different devices or in different chambers of the same device (see paragraphs [0014] (continuously mixing a material in a high-speed stirrer including poly-3-hydroxybutyrate) and [0017] (adding the material to a double-screw extruder) of Liu), and it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide that the mixing step and the extruding step are carried out in different devices or in different chambers of the same device in the process of Schmidt et al (in combination with Hirota et al) in view of Liu in order to prepare a material which is aging resistant and meets industry requirements (see paragraph [0006] of Liu).
Regarding claims 5 and 6, see paragraphs [0014] (continuously mixing a material in a high-speed stirrer including poly-3-hydroxybutyrate) and [0017] (adding the material to a double-screw extruder) of Liu.
Claim(s) 10 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schmidt et al (U.S. Patent Application Publication 2016/0060451 A1) in combination with Hirota et al (WO 2022/113530 A1) as applied to claims 1, 3, 8, 9 and 12 above, and further in view of Green (U.S. Patent No. 6,225,438 B1).
Regarding claim 10, Schmidt et al (in combination with Hirota et al) does not teach (1) that at least one polyhydroxyalkanoate includes from 1 to 25 weight percent of at least one polyhydroxyalkanoate including from 25 to 50 mole percent of hydroxyvalerate, hydroxyhexanoate, hydroxyoctanoate, and/or hydroxydecanoate. Green (see the entire document, in particular, col. 1, lines 7-19; col. 2, lines 57-59; col. 3, lines 34-40) teaches a process (see col. 1, lines 7-19 (process for producing poly-3-hydroxyalkanoate) of Green), wherein at least one polyhydroxyalkanoate includes from 1 to 25 weight percent of at least one polyhydroxyalkanoate including from 25 to 50 mole percent of hydroxyvalerate, hydroxyhexanoate, hydroxyoctanoate, and/or hydroxydecanoate (see col. 3, lines 34-40 (1 – 49 mole percent of hydroxyvalerate, hydroxyhexanoate or hydroxyoctanoate) of Green), and it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide at least one polyhydroxyalkanoate includes from 1 to 25 weight percent of at least one polyhydroxyalkanoate including from 25 to 50 mole percent of hydroxyvalerate, hydroxyhexanoate, hydroxyoctanoate, and/or hydroxydecanoate in the process of Schmidt et al (in combination with Hirota et al) in view of Green in order to provide a copolymer having flexibility and moldability (see col. 2, lines 57-59 of Green).
Regarding claim 11, see col. 3, lines 34-40 (1 – 49 mole percent of hydroxyvalerate, hydroxyhexanoate or hydroxyoctanoate , and mixtures thereof; any two with hydroxybutyrate is a terpolymer) of Green.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LEO B. TENTONI whose telephone number is (571)272-1209. The examiner can normally be reached 7:30-4:00 ET M-F.
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LEO B. TENTONI
Primary Examiner
Art Unit 1742
/LEO B TENTONI/Primary Examiner, Art Unit 1742
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