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.
Claims 1-7, 9-13, and 15-20 are rejected under 35 U.S.C. 103 as being unpatentable over Figuly, WO 02/085983 A1, in view of Pfeiffer et al., US 2019/0161598 A1.
Regarding claim 1, Figuly teaches a resin composition comprising a poly(3-hydroxyalkanoate) copolymer (pg. 4, ln. 5-38, claims 1 and 4).
The teachings of Figuly differ from the present invention in that Figuly does not teach a lubricant in the form of a diester or triester of a monocarboxylic acid having at least 15 carbon atoms. Pfeiffer, however, teaches that lubricants made from the esterification of long-chain carboxylic acids such as montanic acid (ie, a carboxylic acid having 28 carbon atoms) with glycerol (ie, a trihydric alcohol) or ethane diol (ie, a dihydric alcohol) are commonly used in plastic processing to reduce adhesion between the composition and surfaces, and to lower friction forces during mixing or shaping ([0091]-[0092]). Pfeiffer teaches that the lubricant may be added in an amount of 0.2 to 2 percent by weight ([0093]). It would have been obvious to one of ordinary skill in the art to include a lubricant made from the esterification of glycerol or ethan diol and long-chain carboxylic acids such as montanic acid in an amount of 0.2 to 2 percent by weight in the resin of Figuly, as doing so would reduce adhesion between the composition and surfaces and lower friction forces during mixing or shaping, in accordance with the teachings of Pfeiffer.
Regarding claims 2-4, Pfeiffer teaches that the carboxylic acid may be montanic acid ([0092]), which is an aliphatic carboxylic acid having 28 carbon atoms.
Regarding claims 5 and 20, Pfeiffer teaches that the alcohol may be ethane diol, an alcohol with 2 carbon atoms, esterified with montanic acid.
Regarding claim 6, the use of ethane diol as the alcohol would result in a diester compound.
Regarding claim 7, Pfeiffer teaches that the lubricant can comprise metal salts of fatty carboxylic acids, including montanic acid ([0092]).
Regarding claim 9, Figuly teaches that the poly(3-hydroxyalkanoate) copolymer may comprise 3-hydroxybutyrate and additional hydroxyalkanoate units (pg. 4 ln. 15-30).
Regarding claim 10, Figuly teaches that the additional hydroxyalkanoate may be 3-hydroxyhexanoate (pg. 4, ln. 19-20).
Regarding claims 11-13, Figuly teaches that the resin composition may be formed into a molded article, including an extruded film or an injection molded article (pg. 8 ln. 12-17, pg. 9 ln. 3-5).
Regarding claim 16-19, Pfeiffer teaches that the composition may include the lubricant in an amount of .05-5 wt% ([0093]). As Figuly teaches that the poly(3-hydroxyalkanoate) copolymer may constitute 70-87.5 wt% of the composition (based on the relative amounts of materials added to the composition of Figuly), the amount of lubricant in the product of Figuly in terms of parts by weight per 100 parts of poly(3-hydroxyalkanoate) copolymer overlaps in scope with the claimed ranges.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Figuly and Pfeiffer et al., as applied above, and further in view of Cham et al, US 2022/0032586 A1.
Regarding claim 14, the teachings of Figuly differ from the present invention in that Figuly does not teach a printed layer on the product. Cham, however, teaches that products made from polyhydroxyalkanoates may feature an outermost printed layer to allow the product to feature graphics (Abstract, [0002], [0005]). It would have been obvious to one of ordinary skill in the art to provide the product of Figuly with a printed layer, as doing so would allow the product to display graphics.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Figuly and Pfeiffer et al., as applied above, and further in view of Dou, US 2010/0330382 A1.
Regarding claim 15, the teachings of Figuly differ from the present invention in that Figuly does not teach an inorganic vapor-deposited layer. Dou, however, teaches that products made from polyhydroxyalkanoates may feature a vapor-deposited aluminum layer to improve the product’s barrier properties ([0031]). It would have been obvious to one of ordinary skill in the art to apply a vapor-deposited aluminum layer to the product of Figuly, as doing so would improve the product’s barrier properties.
Response to Arguments
Applicant's arguments filed 5-15-2026 have been fully considered but they are not persuasive. Regarding the teachings of Figuly and Pfeiffer, Applicant argues that there is no motivation to combine the optional lubricant additive of Pfeiffer with the composition of Figuly. This is unpersuasive because, as discussed above, Pfeiffer explicitly teaches that the addition of the lubricant composition results in reduced adhesion between the polymer composition and surfaces and lowers friction forces during mixing or shaping, and one of ordinary skill in the art would have understood these teachings to be applicable to the polymer composition of Figuly.
Applicant further argues that Pfeiffer merely teaches an esterification product of a carboxylic acid and a dihydric alcohol, which could result in either a monoester or a diester. This is unpersuasive because such an esterification product would necessarily be either a monoester or a diester, and as such the diester is one of only two possibilities when following the teachings of Pfeiffer, as would have been understood by one of ordinary skill in the art.
Applicant further argues that Applicant’s Table 1 presents data demonstrating unexpected advantages which are not foreseeable from the references. This argument is unpersuasive because Applicant’s claimed invention is not commensurate in scope with the specific examples of Table 1. Additionally, good mold releasability cannot be regarded as an unexpected advantage when Pfeiffer explicitly teaches reduced adhesion to be an advantage of including the lubricant in a polymer composition.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/IAN A RUMMEL/ Primary Examiner, Art Unit 1785
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