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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 10/24/2025 has been entered.
Priority
This application claims benefit of provisional applications 63/110,760 filed 11/06/2020 and 63/018,891 filed 05/01/2020. Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 10/24/2025 and 01/14/2026 comply with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Status of the Claims
Claims 30-34 and 36-45 are pending (claim set filed 03/18/2024) and are examined on the merits herein.
Withdrawal of Rejections
The response, Declaration under 37 C.F.R. 1.132 by Dale Handlin and Appendix to Specification filed on 10/24/2025 are acknowledged. All of the response, Declaration and arguments have been thoroughly reviewed and considered.
For the purposes of clarity of the record, the reasons for the Examiner's withdrawal and/or maintaining if applicable, of the substantive or essential claim rejections are detailed directly below and/or in the Examiner's response to arguments section.
The previous claims 30-34, 36-40, 44 and 45 rejection under 35 U.S.C. 102(a)(1) has been withdrawn necessitated by Applicant’s arguments.
The previous claims 41-43 rejection under 35 U.S.C. 103 has been withdrawn necessitated by Applicant’s arguments.
The previous claims 30, 39 and 44 double patenting rejection has been withdrawn.
New Rejections
Claim Rejections - 35 USC § 102
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 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.
First Rejection
Claims 30-34 and 36-45 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Li (Li et al. RSC Adv., 2016, 6, 12837-12849 on record in IDS).
Regarding claim 30, Li teaches soy protein polyurethane composite films which are fabricated by the process of blending waterborne polyurethane (WPU) and soy protein isolate (SPI), casting and evaporation (Abstract). Li describes that WPU is synthesized prior to blending with SPI. SPI is stirred in water to obtain slurry with pH adjusted to 10.0. Then SPI slurry is added to 10 wt% WPU aqueous dispersion and stirred at room temperature. After centrifuge degassing, the homogeneous composite solution is poured into PTFE board to evaporate and to obtain an even composite film (p. 12838, right column, last paragraph). The scheme of synthesis of composite soy protein-WPU film is presented on Scheme 2 (p. 12840). The structure, thermal and mechanical properties of the composite films were analyzed by Li and it was concluded that SPI showed good miscibility with castor oil-based WPU due to intermolecular interactions between WPU and SPI and that SPI increased hydrophilicity, thermal stability and tensile strength of the composite films (p. 12847, left column, last paragraph and right column, 1st paragraph).
Claim 30 is interpreted as directed to the structure of a soy protein dissolved within a polyurethane. Although the limitation “dissolved within a polyurethane” is product-by-process limitation MPEP 2113, in the interest of compact prosecution, the prior art has been applied to take into consideration the process step since Applicant’s arguments state that the claimed process step of dissolving the soy protein within the polyurethane provides the claimed properties. Therefore, since the prior art teaches not only the structure claimed but the product by process step claimed, it is the Examiner’s position the prior art meets the claimed properties. Note MPEP 2113 " 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. “
Further, pursuant to MPEP 2112.01(II), “Products of identical chemical composition cannot have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.” Thus, since Li teaches mixing the instant structural components, i.e. soy protein and polyurethane, and mentions good miscibility of soy protein within the polyurethane indicating that soy protein is dissolved within the polyurethane, the structure of Li teaching will inherently possess the properties of the claimed structure. Therefore, claim 30 is anticipated by Li teaching.
Claims 31-34, 36-38 and 41-43 are directed to different properties of the structure of claim 30 and do not contain limitations altering the structure. Therefore claims 31-34, 36-38 and 41-43 are anticipated by Li.
Regarding claims 39 and 40, Li teaches preparation of a series of SPI-WPU composite films with 10-90 wt% soy protein and 10-90 wt% WPU (p. 12840, Table 1). Thus, Li teaching anticipates claims 39 and 40. It is further pointed out that since the prior art teaches the same amount of the soy protein and polyurethane and the same process step of dissolving the soy protein within the polyurethane, the prior art must have the same properties as claimed.
Regarding claim 44, Li teaches soy protein isolate (SPI) (p. 12838, right column, 2nd paragraph). Thus, Li teaching anticipates claim 44.
Regarding claim 45, Li teaches treatment of SPI with NaOH at pH 10.0 that can chemically modify soy protein. Besides, Li discloses that soy protein forms hydrogen bonds with WPU indicating soy protein modification (p. 12842, left column, 1st paragraph). Thus, Li teaching anticipates claim 45.
Second Rejection
Claims 30-34 and 36-44 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Madbouly (Madbouly and Lendlein Macromol. Mater. Eng., 2012, 297, 1213-1224 on record in IDS).
Regarding claim 30, Madbouly teaches synthesis of degradable polyurethane/soy protein polymer blends (Abstract). Madbouly describes that polyurethane (PU) is synthesized prior to blending with soy protein (SP). SP formulation is dispersed in water and then mixed with PU dispersion at room temperature with vigorous stirring for 1h. The blend solutions are cast into petri-dishes and dried (p. 1215, left column, 2nd paragraph). The obtained samples were optically clear. Their structure and thermal properties indicated SP and PU miscibility over the entire composite range (p. 1217, left column, 2nd and 3rd paragraphs). Additionally, the miscibility over the entire range of concentrations was confirmed by decrease in melting point and melting enthalpy with increasing SP content (p. 1218, right column, 1st paragraph).
Claim 30 is interpreted as directed to the structure of a soy protein dissolved within a polyurethane. Although the limitation “dissolved within a polyurethane” is product-by-process limitation MPEP 2113, in the interest of compact prosecution, the prior art has been applied to take into consideration the process step since Applicant’s arguments state that the claimed process step of dissolving the soy protein within the polyurethane provides the claimed properties. Therefore, since the prior art teaches not only the structure claimed but the product by process step claimed, it is the Examiner’s position the prior art meets the claimed properties. Note MPEP 2113 " 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. “
Further, pursuant to MPEP 2112.01(II), “Products of identical chemical composition cannot have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.” Since Madbouly teaches mixing the instant structural components, i.e. soy protein and polyurethane, and mentions good miscibility of soy protein within the polyurethane over the entire range of concentrations that indicates that soy protein is dissolved within the polyurethane. Therefore, the structure of Madbouly teaching will inherently have the properties of the claimed structure. Thus, claim 30 is anticipated by Madbouly.
Claims 31-34, 36-38 and 41-43 are directed to different properties of the structure of claim 30 and do not contain limitations altering the structure. Therefore claims 31-34, 36-38 and 41-43 are anticipated by Madbouly.
Regarding claims 39 and 40, Madbouly teaches preparation of SPI-PU blends with 10-60 wt% soy protein and 40-90 wt% WPU (p. 1217, left column, 2nd paragraph). Thus, Madbouly teaching anticipates claims 39 and 40. It is further pointed out that since the prior art teaches the same amount of the soy protein and polyurethane and the same process step of dissolving the soy protein within the polyurethane, the prior art must have the same properties as claimed.
Regarding claim 44, Madbouly teaches soy protein isolate (SPI) (p. 1214, right column, 3rd paragraph). Thus, Madbouly teaching anticipates claim 44.
Response to Arguments
Applicant’s arguments, filed 10/24/2025 and Declaration under 37 C.F.R. 1.132 by Dale Handlin, with respect to prior art of Liu have been fully considered and are persuasive. The previous claims 30-34, 36-40, 44 and 45 rejection under 35 U.S.C. 102(a)(1) and claims 41-43 rejection under 35 U.S.C. 103 have been withdrawn.
Upon further consideration new rejections are applied as described above.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LIOUBOV G KOROTCHKINA whose telephone number is (571)270-0911. The examiner can normally be reached Monday-Friday: 8:00-5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sharmila G Landau can be reached at (571)272-0614. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/L.G.K./Examiner, Art Unit 1653
/SHARMILA G LANDAU/Supervisory Patent Examiner, Art Unit 1653