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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on November 4, 2025 has been entered.
Examiner’s Note
The Examiner acknowledges the amendments of claim 41 and the addition of claim 83. Claims 1 – 40, 44 – 45, 47, 57 – 73, 76, & 80 – 82 have been cancelled. Claims 41 – 43, 46, 48 – 56, 74 – 75, 77 – 79, & 83 are examined herein.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 41 – 43, 46, 48 – 56, 74, 77 – 79, & 83 are rejected under 35 U.S.C. 103 as being unpatentable over *Kitamura et al. (EP 1418196 B1), in view of ***Meier (AU 2966392 (A)) and Shi (US 2011/0213101 A1).
*Submitted by Applicant with IDS filed 4/17/2018
**Submitted with 10/01/2021 office action
With regard to claim 41, Kitamura et al. teach a water-soluble film formed into a sealed packaging material, such as a bag (pouch defining an interior pouch volume) comprising a detergent composition for clothes (paragraphs [0002], [0054], & [0061]). The film comprises 100 parts by weight polyvinyl alcohol resin (PVOH) (paragraph [0008]), such as a PVOH copolymer. Specifically, the PVOH copolymer has an anionic modification, wherein the anionic group is a carboxyl group, a sulfonic acid group, or a phosphoric acid group (not an acrylate) (paragraphs [0010], [0019], & [0025]), such as maleic acid (i.e. maleate), monoalkyl maleake, & dialkyl maleate (paragraph [0013]).
When the total parts by weight of the film is calculated based on percent by weight (paragraph [0008]), the PVOH is present in the amount of about 55 wt.% to about 82 wt.%. Furthermore, the film contains plasticizer and stabilizer (paragraphs [0008] & [0033]). Examples of starch include natural sources (unmodified) or chemically modified (paragraph [0040]). When starch is used as an organic filler (paragraphs [0036] & [0040]), it is present in the amount of 1 – 30 parts by weight (phr) (paragraph [0041]), which includes Applicant’s claimed range of about 2 phr to about 10 phr. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Kitamura et al. do not teach the amylose content of the starch.
Meier teaches transparent film dissolved in water for packaging materials (description, pgs. 2 – 3), such as blister packs (pouches) (top of pg. 4), wherein the films are composed of high amylose content starches, containing at least 50 wt.% amylose. The starch is chemically modified or non-modified (“unmodified”) (description, pg. 4). Transparent films containing a high amylose content may be easily dissolved in water (description, pgs. 2 – 3).
Therefore, based on the teachings of Meier, it would have been obvious to one of ordinary skill in the art at the time of the effective filing date to use starch containing high amylose content (greater than or equal to 50 wt.% by weight) in order to achieve a transparent film easily dissolved in water after use. Greater than or equal to 50 wt.% amylose overlaps with Applicant’s claimed range of 40% to 60%. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Kitamura et al. teach the films are not gelled (paragraph [0053]), but do not explicitly teach the starch is non-gelatinized.
Shi teaches a packaging film composition includes organic fillers in order to decrease self-adhesion, lower the cost, and increase the modulus of elasticity of polymer blends. Preferred organic fillers include ungelatinized starch granules (paragraph [0090]).
Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date for the starch organic filler taught by Kitamura et al. to be ungelatinized starch granules because Shi teaches ungelatinized starch organic filler can lower the cost and increase the modulus of elasticity of the polymer blend.
Kitamura et al. do not teach explicitly teach the water-soluble film is characterized by having a dissolution time of 300 seconds or less in 10°C water, as determined according to MSTM-205.
However, Kitamura et al. teach the water solubility of the film is dependent on polyvinyl alcohol as a main component (paragraphs [0001] – [0002]), copolymerization of polyvinyl alcohol with maleic acid (paragraph [0019]), the rate of polyvinyl alcohol modification (paragraph [0026]), the average degree of hydrolysis (paragraph [0027]). Cold water solubility is especially influenced by anionic group modification of the polyvinyl alcohol (PVA) resin (paragraphs [0004] - [0010]).
Kitamura et al. teach the same type of water-soluble polymer (PVOH with 4% maleate modification) present in the packaging film in the same amount (about 74%) as Applicant’s Example’s 1a and 1b shown below. Therefore, one of ordinary skill in the art would expect the water-soluble film taught by Kitamura et al. to inherently have a dissolution time of 300 seconds or less in 10°C water.
Kitamura et al. do not teach the film has a dissolution time of 300 seconds or less in 10°C (according to MSTM-205) or the gloss-to-gloss coefficient of friction.
Applicant’s Examples 2e & 2k are the only working examples tested by Applicant which meet each of these claim limitations.
Example 2e
Example 2k
Prior art teaching
Unmodified starch
7.87 phr
7.87 phr
Kitamura et al.:
1 – 30 parts by weight, per 100 parts PVOH (phr) for desired anti-blocking effect (i.e. desired coefficient of friction) (P0041)
PVOH
About 74 wt.%
About 74 wt.%
Kitamura et al.: about 55 wt.% to about 82 wt.%
Amylose content of the starch
25 wt.%
80 wt.%
Meier: greater than 50%, preferably 65 – 95 wt.%.
Gelatinized or non-gelatinized starch?
Non-gelatinized
Non-gelatinized
Shi et al. teach water-soluble films using non-gelatinized starch
Plasticizer
26 phr
26 phr
Kitamura et al:
20 – 50 parts by weight plasticizer (phr)
However, as discussed above, the water-soluble film taught by the prior art is substantially identical in structure and produced by substantially identical process as Applicant’s claimed film. The fact that applicant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See MPEP § 2112.
As discussed above, Kitamura et al. do not teach heating the composition of the film higher than Applicant’s examples 1a, 1b, or 1c. Therefore, the combined teachings of Kitamura et al., Meier, and Shi would inherently have the same properties, such as dissolution time in 10°C water of 300 seconds or less and a gloss-to-gloss static coefficient of friction of about 5 or less.
With regard to claim 42, Kitamura et al. teach in the case when the total parts by weight of the film is calculated based on percent by weight (paragraph [0008]), the PVOH is present in the amount of about 55 wt.% to about 82 wt.%.
With regard to claim 43, Kitamura et al. teach the amount of about 81 wt.% PVOH is slightly lower than Applicant’s claimed range of about 85 – 95 wt.%. However, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here 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, 245 (CCPA 1955); see also Peterson, 315F.3d at 1330, 65 USPQ2d at 1382. See MPEP 2144.05.
With regard to claim 46, Kitamura et al. also do not teach the gloss-to-gloss static coefficient of friction.
However, as discussed above, the water-soluble film taught by the prior art is substantially identical in structure and produced by substantially identical process as Applicant’s claimed film. The fact that applicant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See MPEP § 2112.
With regard to claim 48, Kitamura et al. teach the film contains 20 – 50 parts by weight plasticizer (phr) (paragraph [0008]).
With regard to claims 49 – 50, Kitamura et al. teach the plasticizer is a mixture of glycerol with at least one of the compounds trimethylolpropane and diglycerol (paragraphs [0008] & [0031]).
With regard to claim 51, Kitamura et al. teach the film contains a stabilizer (paragraphs [0008] & [0033]).
With regard to claim 52, Kitamura et al. also do not teach the gloss-to-gloss static coefficient of friction.
However, as discussed above, the water-soluble film taught by the prior art is substantially identical in structure and produced by substantially identical process as Applicant’s claimed film. The fact that applicant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See MPEP § 2112
With regard to claim 53, Kitamura et al. teach a water-soluble film formed into a sealed packaging material, such as a bag (pouch defining an interior pouch volume) (paragraphs [0002], [0054], & [0061]).
With regard to claims 54 – 56, Kitamura et al. teach the detergent composition for clothes (paragraphs [0002], [0054], & [0061]).
With regard to claim 74, Kitamura et al. teach in the case when the starch is used as an organic filler (paragraphs [0036] & [0040]), the average particle size is 0.5 to 10 µm (paragraph [0036]).
With regard to claim 77, Kitamura et al. teach their water-soluble film is soluble in cold water (paragraph [0004]), but do not explicitly teach a working example which tests the solubility in cold water for 90 seconds of a film containing about 8 phr starch and a 76 micron film has a cold water solubility of less than about 90 seconds as measured by MSTM-205.
However, as discussed above, the water-soluble film taught by the prior art is substantially identical in structure and produced by substantially identical process as Applicant’s claimed film. The fact that applicant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See MPEP § 2112
With regard to claims 78 – 79, Kitamura et al. also do not teach the tensile strength of the film.
However, as discussed above, the water-soluble film taught by the prior art is substantially identical in structure and produced by substantially identical process as Applicant’s claimed film. The fact that applicant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See MPEP § 2112.
As discussed above, Kitamura et al. do not teach heating the composition of the film higher than Applicant’s examples 1a, 1b, or 1c. Therefore, the combined teaches of Kitamura and Meir would inherently have the same properties, such as a tensile strength of greater than about 45.
With regard to claim 83, Kitamura et al. teach a water-soluble film formed into a sealed packaging material, such as a bag (pouch defining an interior pouch volume) comprising a detergent composition for clothes (paragraphs [0002], [0054], & [0061]). The film comprises 100 parts by weight polyvinyl alcohol resin (PVOH) (paragraph [0008]), such as a PVOH copolymer. Specifically, the PVOH copolymer has an anionic modification, wherein the anionic group is a carboxyl group, a sulfonic acid group, or a phosphoric acid group (not an acrylate) (paragraphs [0010], [0019], & [0025]), such as maleic acid (i.e. maleate), monoalkyl maleake, & dialkyl maleate (paragraph [0013]).
When the total parts by weight of the film is calculated based on percent by weight (paragraph [0008]), the PVOH is present in the amount of about 55 wt.% to about 82 wt.%. Furthermore, the film contains plasticizer and stabilizer (paragraphs [0008] & [0033]). Examples of starch include natural sources (unmodified) or chemically modified (paragraph [0040]). When starch is used as an organic filler (paragraphs [0036] & [0040]), it is present in the amount of 1 – 30 parts by weight (phr) (paragraph [0041]), which includes Applicant’s claimed range of about 5 phr to about 15 phr. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Kitamura et al. do not teach the amylose content of the starch.
Meier teaches transparent film dissolved in water for packaging materials (description, pgs. 2 – 3), such as blister packs (pouches) (top of pg. 4), wherein the films are composed of high amylose content starches, containing at least 50 wt.% amylose. The starch is chemically modified or non-modified (“unmodified”) (description, pg. 4). Transparent films containing a high amylose content may be easily dissolved in water (description, pgs. 2 – 3).
Therefore, based on the teachings of Meier, it would have been obvious to one of ordinary skill in the art at the time of the effective filing date to use starch containing high amylose content (greater than or equal to 50 wt.% by weight) in order to achieve a transparent film easily dissolved in water after use. Greater than or equal to 50 wt.% amylose overlaps with Applicant’s claimed range of 40% to 60%. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Kitamura et al. teach the films are not gelled (paragraph [0053]), but do not explicitly teach the starch is non-gelatinized.
Shi teaches a packaging film composition includes organic fillers in order to decrease self-adhesion, lower the cost, and increase the modulus of elasticity of polymer blends. Preferred organic fillers include ungelatinized starch granules (paragraph [0090]).
Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date for the starch organic filler taught by Kitamura et al. to be ungelatinized starch granules because Shi teaches ungelatinized starch organic filler can lower the cost and increase the modulus of elasticity of the polymer blend.
Kitamura et al. do not teach explicitly teach the water-soluble film is characterized by having a dissolution time of 300 seconds or less in 10°C water, as determined according to MSTM-205.
However, Kitamura et al. teach the water solubility of the film is dependent on polyvinyl alcohol as a main component (paragraphs [0001] – [0002]), copolymerization of polyvinyl alcohol with maleic acid (paragraph [0019]), the rate of polyvinyl alcohol modification (paragraph [0026]), the average degree of hydrolysis (paragraph [0027]). Cold water solubility is especially influenced by anionic group modification of the polyvinyl alcohol (PVA) resin (paragraphs [0004] - [0010]).
Kitamura et al. teach the same type of water-soluble polymer (PVOH with 4% maleate modification) present in the packaging film in the same amount (about 74%) as Applicant’s Example’s 1a and 1b shown below. Therefore, one of ordinary skill in the art would expect the water-soluble film taught by Kitamura et al. to inherently have a dissolution time of 300 seconds or less in 10°C water.
Kitamura et al. do not teach the film has a dissolution time of 300 seconds or less in 10°C (according to MSTM-205) or the gloss-to-gloss coefficient of friction.
Applicant’s Examples 2e & 2k are the only working examples tested by Applicant which meet each of these claim limitations.
Example 2e
Example 2k
Prior art teaching
Unmodified starch
7.87 phr
7.87 phr
Kitamura et al.:
1 – 30 parts by weight, per 100 parts PVOH (phr) for desired anti-blocking effect (i.e. desired coefficient of friction) (P0041)
PVOH
About 74 wt.%
About 74 wt.%
Kitamura et al.: about 55 wt.% to about 82 wt.%
Amylose content of the starch
25 wt.%
80 wt.%
Meier: greater than 50%, preferably 65 – 95 wt.%.
Gelatinized or non-gelatinized starch?
Non-gelatinized
Non-gelatinized
Shi et al. teach water-soluble films using non-gelatinized starch
Plasticizer
26 phr
26 phr
Kitamura et al:
20 – 50 parts by weight plasticizer (phr)
However, as discussed above, the water-soluble film taught by the prior art is substantially identical in structure and produced by substantially identical process as Applicant’s claimed film. The fact that applicant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See MPEP § 2112.
As discussed above, Kitamura et al. do not teach heating the composition of the film higher than Applicant’s examples 1a, 1b, or 1c. Therefore, the combined teachings of Kitamura et al., Meier, and Shi would inherently have the same properties, such as dissolution time in 10°C water of 300 seconds or less and a gloss-to-gloss static coefficient of friction of about 5 or less.
Claim 75 rejected under 35 U.S.C. 103 as being unpatentable over Kitamura, Shi, and Meier, as applied to claim 41 above, as evidenced by Eden et al. (U.S. Patent No. 5,236,977).
Kitamura et al. do not explicitly teach the gelatinization temperature of the film is between 75°C and 300°C.
However, Eden et al. teach starch with high amylose content, without an alkali present during cooking, has a gelatinization temperature in the range of 135°C to 170°C (Col. 2, Lines 43 – 47).
As discussed above for claim 41, Meier teaches a high amylose content (greater to or equal to 50 wt. %) is preferable for desired properties in water soluble packaging materials.
Therefore, Applicant’s claimed gelatinization temperature is an inherent property of the teachings of Kitamura et al. and Meier. The fact that applicant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See MPEP § 2112.
Response to Arguments
Applicant's arguments with regard to the claimed starch content filed 11/04/2025 have been fully considered but they are not persuasive. Applicant’s arguments were addressed in the previous office action. As discussed in the previous office action, to establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960). As discussed in previous office actions, Applicant’s does not provide data for the endpoints of the claimed ranges, values slightly above the upper endpoint, or values slightly below the lower endpoint.
Applicant argues, “Meier generally describes starch-based films that can be used as transparent windows in packages such as envelopes and cardboard boxes. Meier broadly describes that the films can consist of at least one nonmodified and/or at least one modified amylose or starch – effectively, any starch. The starch has an amylose content of greater than 50%, preferably from 65% to 95% by weight. However, Meier provides no motivation to the person of ordinary skill in the art to particularly select a starch having an amylose content in the range of 40% to 60%, as claimed, as a starch in the polyvinyl alcohol-based film of Kitamura. Meier provides no distinction between starches having an amylose content within the claimed range of 40% to 60% and starches having an amylose content outside this range, for instance within its preferred range of 65% to 95%, let alone when used in combination with PVOH, as claimed. However, as described above, the present application demonstrates the claimed range of amylose content was critical to achieving a combination of superior coefficient of friction content was critical to achieving a combination of superior coefficient of friction and superior dissolution compared to Examples 2a, 2d, and 2j, whose compositions differed from that of Example 2g only in the amylose content of the unmodified starch – 1%, 25%, and 80%, respectively, all outside the claimed range. In particular, the example film comprising an 80% amylose starch, Example 2j, had a high coefficient of friction of >5, indicating poor film-to-film anti-stick properties. Such benefits could not have been predicted based on the disclosures of Meier and Kitamura. In contrast, Meier provides no motivation for a person of ordinary skill in the art to particularly select a starch having an amylose content of 40% to 60% as claimed over starches having an amylose content outside this range with any expectation of a benefit” (Remarks, Pg. 8).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. As previously discussed, the range greater than 50% amylose overlaps with Applicant’s claimed range of 40% to 60%. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Furthermore, as previously discussed, Applicant has failed to provide sufficient data to demonstrate the criticality of their claimed amylose content range of 40% to 60%. A starch content of 80% is too far outside the claimed range of 40% to 60% for demonstrating the criticality of the claimed range.
Applicant argues, “Shi discloses blends of polymers for use in packaging applications, in particular blends of polylactic acid (PLA) and polyethylene terephthalate (PET), and articles manufactured therefrom. Shi describes that polymer blends disclose therein can be free of any inorganic or organic filler or optionally can include inorganic and/or organic fillers. The Office asserts that it would have been obvious to a person of ordinary skill in the art to particularly select an ungelatinized starch as a starch or the film of Kitamura in view of a single recitation in Shi of ‘ungelatinized starch granules’ as an optional organic filler in polymer blends of Shi. However, Shi does not describe any expectation of a benefit to be derived from particularly selecting an ungelatinized starch as a starch in the PVOH-based film of Kitamura, nor does Shi provide motivation to a person of ordinary skill in the art to particular select a non-gelatinized starch to modify a water-soluble polyvinyl alcohol-based film, as Shi is silent with respect to water-soluble films in general and polyvinyl alcohol in particular” (Remarks, Pgs. 8 – 9).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. As discussed in the previous office actions, Shi teaches ungelatinized starch organic filler is a preferred filler because it has a low cost and increases the modulus of elasticity of the polymer blend.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant argues with regard to claim 75, “Eden does not remedy the deficiencies of the combination of Kitamura, Shi, and Meier” (Remarks, Pg. 9).
EXAMINER’S RESPONSE: Applicant is directed to the discussion above.
Conclusion
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/NICOLE T GUGLIOTTA/Examiner, Art Unit 1781
/FRANK J VINEIS/Supervisory Patent Examiner, Art Unit 1781