DETAILED ACTION
Claim Status
Claim(s) 1-8, 11-20 is/are pending.
Claim(s) 1-8, 11-20 is/are rejected.
Claim(s) 9-10, 21 is/are cancelled by Applicant.
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 .
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 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.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 02/16/2026 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
The rejections under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement, in the previous Office Action mailed 11/17/2026 have been withdrawn in view of the Claim Amendments filed 02/16/2026.
Claim(s) 1-8, 11-20 is/are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for: (a) a limited range of biodegradable container or plate material as a whole; (b) a limited range of “composite surface layer” compositions as a whole; (c) a limited range of polyesters in the “composite surface layer”; does not reasonably provide enablement for the entire encompassed compositional range of “container or plate material”. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with these claims.
The propriety of a rejection based upon the scope of a claim relative to the scope of the enablement concerns (1) how broad the claim is with respect to the disclosure and (2) whether one skilled in the art could make and use the entire scope of the claimed invention without undue experimentation. See MPEP 2164.08. The disclosure as originally filed does not enable one of ordinary skill in the art to make “container or plate material” which exhibit the “sufficiently flexible” property (i.e., “that top edges of a container that is a pot or of a pot made from the plate material and being 11 cm in diameter at the top can be moved towards each other by 2 cm of the top diameter of the pot before the pot gets damaged”) over the entire scope of the present claims.
MPEP 2164.01(a) Undue Experimentation Factors [R-08.2012]
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There are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is "undue." These factors include, but are not limited to:
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(A) The breadth of the claims;
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(B) The nature of the invention;
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(C) The state of the prior art;
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(D) The level of one of ordinary skill;
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(E) The level of predictability in the art;
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(F) The amount of direction provided by the inventor;
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(G) The existence of working examples; and
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(H) The quantity of experimentation needed to make or use the invention based on the
content of the disclosure.
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In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988) (reversing the PTO’s determination that claims directed to methods for detection of hepatitis B surface antigens did not satisfy the enablement requirement). In Wands, the court noted that there was no disagreement as to the facts, but merely a disagreement as to the interpretation of the data and the conclusion to be made from the facts. In re Wands, 858 F.2d at 736-40, 8 USPQ2d at 1403-07. The Court held that the specification was enabling with respect to the claims at issue and found that "there was considerable direction and guidance" in the specification; there was "a high level of skill in the art at the time the application was filed;" and "all of the methods needed to practice the invention were well known." 858 F.2d at 740, 8 USPQ2d at 1406. After considering all the factors related to the enablement issue, the court concluded that "it would not require undue experimentation to obtain antibodies needed to practice the claimed invention." Id., 8 USPQ2d at 1407.
In particular, with respect to Wand factor (A) the claims are relatively broad -- for example, but not limited to:
• the majority of the claims encompasses a relatively broad range of materials in the aliphatic polyalcohol component in the polyester of the “composite surface layer”;
• the majority of the claims encompasses a relatively broad range of materials in the aliphatic polycarboxylic acid component in the polyester of the “composite surface layer”;
• the claims allow for substantial amounts of the type(s) and amount(s) of other components (e.g., other types of thermoplastic and/or thermosetting resins; non-polymeric components such as various organic or inorganic compounds, such as fillers, curing agents, pigments, and/or other additives; etc.) in the “biodegradable container or plate material” as a whole, as long as: (i) one layer in the “biodegradable container or plate material” contains cellulose-based material and does not contain polyester; and ; and (ii) the “composite surface layer” contains at least one cellulose-based material and the recited polyester; and (iii) a cellulose material in the polyester-free cellulose-based material and the cellulose-based material in the composite surface layer is continuous;
etc.
With respect to Wand factor (B), the present claims require the recited “biodegradable container or plate material” containing the recited “composite surface layer” containing the recited tricarboxylic acid-based polyester to exhibit the recited “sufficiently flexible” property.
With respect to Wand factor (C)-(E), the prior art does not specifically disclose or suggest how to produce “biodegradable container or plate material” containing the recited “composite surface layer” containing the recited tricarboxylic acid-based polyester which exhibits the recited “sufficiently flexible” property.
With respect to Wand factor (F)-(G), the disclosure as originally filed only provides guidance how to produce a “biodegradable container or plate material” containing the recited “composite surface layer” containing the recited tricarboxylic acid-based polyester which exhibits the recited “sufficiently flexible” property using relatively limited ranges of “biodegradable container or plate material” as a whole and limited types of polyester -- i.e., a “biodegradable container or plate material” effectively containing only:
• 82-90 wt% cellulose fiber pulp;
• 10-18 wt% polyester derived from:
(i) a polycarboxylic acid component which is almost entirely (>99%) of citric acid;
(ii) a polyol component which is almost entirely (>99%) pure glycerol.
The supplemental NOORDZIJ Declaration filed 02/16/2026 states that “several suitable containers as claimed in claim 10 of the presently pending claims in the application have been made containing amounts of polyester representative of the full range of 0.5-50 wt.%” and further states that “several containers were produced using the process described in Example 3 of the original specification”. However, the NOORDZIJ Declaration filed 02/16/2026 does not appear to provide any experimental data regarding: (i) the flexibility of said containers containing less than 10 wt% or greater than 18 wt% of the polyester of Example 3; and (ii) the use of any other polyesters except for the polyester of Example 3.
With respect to Wand factor (H), in view of the evidence provided by the Examples in the specification with respect to the effect of: (i) different amounts of polyester (e.g., Comparative Example 5, etc.); and (ii) different types of polyesters (e.g., Comparative Example 8, etc.); on the physical properties of the “biodegradable container or plate material”, it is the Examiner’s position that undue experimentation would be required to produce a “biodegradable container or plate material” which exhibits the recited “sufficiently flexible” property using “biodegradable container or plate material” compositions which are encompassed by the present claims, but are materially different from those used in the working Examples in the specification.
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• The present claims use the open term “comprising” with respect to the composition of the “biodegradable container or plate material” as a whole, which allows for nearly any amount(s) of other type(s) of materials in the “biodegradable container plate material” as long as the recited components are present in the recited amounts.
• The present claims use the open term “comprising” with respect to the composition of the “composite surface layer” as a whole, which allows for nearly any amount(s) of other type(s) of materials in the “composite surface layer”, as long as the recited components are present in the recited amounts.
• The present claims use the term “derived from” with respect to the polyester, which (in the absence of any explicit definitions to the contrary) is interpreted as equivalent to the open term “comprising” or “comprises”, which allows for nearly any amount(s) of other repeat units (e.g., derived from aromatic dicarboxylic or tricarboxylic or tetracarboxylic acid; derived from aromatic diols or triols or tetrols, etc.) in the polyester as along as units derived from the recited aliphatic polyalcohol component and the recited aliphatic polycarboxylic acid component are present in the recited amounts
• The present claims use the term open term “comprises” with respect to the aliphatic polyalcohol component, which is interpreted as equivalent to the open term “comprising” or “comprises”, which allows for non-trivial amounts of nearly any other type(s) of aliphatic polyalcohol (e.g., aliphatic diols such as ethylene glycol, diethylene glycol, propanediol, butanediol, hexanediol, neopentyl glycol, 1,4-cyclohexanedimethanol (CHDM), etc.; aliphatic tetra-functional polyols such as pentaerythritol, ditrimethylolpropane, erythritol, etc.) as long as glycerol is present in amounts of 50 mol% of more.
• The present claims use the term open term “comprises” with respect to the aliphatic polycarboxylic acid component, which is interpreted as equivalent to the open term “comprising” or “comprises”, which allows for non-trivial amounts of nearly any other type(s) of aliphatic polycarboxylic acid (e.g., aliphatic dicarboxylic acids such as glutaric acid, adipic acid, succinic acid, sebacic acid, etc.; aliphatic tetracarboxylic acids such as 1,2,3,4-butanetetracarboxylic acid (BTCA), ethanetetracarboxylic acid, cyclobutane-1,2,3,4-tetracarboxylic acid (CBTA), 1,2,4,5-cyclohexanetetracarboxylic acid, etc.) as long as citric acid is present in amounts of 50 wt% of more.
• The present claims allow the “cellulose-based material” to contain up to 50 wt% of non-cellulose material.
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For example, the compositional limitations of the present claims allow for, but are not limited to:
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(1) a “biodegradable container or plate material” in which the polyester is derived from
• an aliphatic polycarboxylic acid component comprising:
• 50 wt% or more of citric acid;
• up to 50 wt% of aliphatic polycarboxylic acid(s) other than citric acid (e.g., glutaric acid, adipic acid, succinic acid, sebacic acid; aliphatic tetracarboxylic acids, etc.);
• an aliphatic polyalcohol component comprising:
• 50 mol% or less of glycerol;
• up to 50 mol% or less of aliphatic polyalcohol(s) other than glycerol (e.g., ethylene glycol, diethylene glycol, propanediol, butanediol, hexanediol, neopentyl glycol,
trimethylolpropane, pentaerythritol, etc.).
(2) a “biodegradable container or plate material” in which the polyester is derived from
• a polycarboxylic acid component comprising:
• 60-90 mol% or more of an aliphatic polycarboxylic acid component comprising:
• 50 wt% or less of citric acid;
• up to 50 wt% of aliphatic polycarboxylic acid(s) other than citric acid (e.g., glutaric acid, adipic acid, succinic acid, sebacic acid; aliphatic tetracarboxylic acids, etc.);
• 10-40 mol% or less of non-aliphatic polycarboxylic acid component comprising:
• aromatic dicarboxylic acid(s);
• aromatic tricarboxylic acid(s);
• aromatic tetracarboxylic acid(s);
• unsaturated or fatty acid polycarboxylic acid(s);
• a polyalcohol component comprising:
• 60-90 mol% or more of an aliphatic polycarboxylic acid component comprising:
• 50 mol% or less of glycerol;
• up to 50 mol% of aliphatic polyalcohol(s) other than glycerol (e.g., ethylene glycol, diethylene glycol, propanediol, butanediol, hexanediol, neopentyl glycol,
trimethylolpropane, pentaerythritol, etc.);
• 10-40 mol% or less of non-aliphatic polycarboxylic acid component comprising:
• aromatic diol(s);
• aromatic triol(s);
• aromatic tetra-functional polyol(s);
• unsaturated or fatty acid polyol(s);
(3) a “biodegradable container or plate material” comprising:
• a “layer of a polyester-free cellulose-based material” containing 10-50 wt% of other non-polyester thermoplastic and/or non-polyester thermosetting polymers (e.g., cationic starch; polyacrylamide; etc.);
• a “composite surface layer” containing up 50 wt% of other polyester and/or non-polyester thermoplastic and/or polyester or non-polyester thermosetting polymers;
(4) a “biodegradable container or plate material” as a whole containing non-trivial amounts (e.g., 10 wt% or 30 wt% or 40 wt%, etc.) of non-cellulose material and/or additives (e.g., curing agents; fillers; waxes; etc.);
(5) a “biodegradable container or plate material” wherein a portion of the cellulose material in the “polyester-free cellulose-based material” and a portion of the cellulose-based material in the “composite surface later” is different;
(6) a “biodegradable container or plate material” containing other layers of various, unspecified compositions;
etc.
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Applicant has not provided adequate guidance to one of ordinary skill in the art as to how to produce a “biodegradable container or plate material” containing the recited “composite surface layer” containing the recited polyester which exhibits the recited “sufficiently flexible” property without undue experimentation using:
(i) a “biodegradable container or plate material” as a whole in which the cellulose material and the citric acid-based polyester represents less than the effective entirety of the overall “biodegradable container or plate material”; and/or
(ii) a “composite surface layer” contains cellulose-based material which is materially different from the cellulose-based material of the “layer of a polyester-free cellulose-based material”; and/or
(iii) a citric acid-based polyester which is materially different from the citric acid-based polyester utilized in the working Examples in the specification; and/or
(iv) a “biodegradable container or plate material” as a whole contains non-trivial amounts of other components (e.g., other types of thermoplastic and/or thermosetting resins; non-polymeric components such as various organic or inorganic compounds, such as fillers, curing agents, pigments, and/or other additives; etc.); etc.
in view of the evidence in the specification with respect to the effect of: (i) different polyester materials; (ii) different polyester contents; on the flexibility and/or other physical properties of the “biodegradable container or plate material”.
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Therefore, in view of the above, the disclosure as originally filed does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention (i.e., a “biodegradable container or plate material” containing the recited “composite surface layer” containing the recited citric acid-based polyester which exhibits the recited “sufficiently flexible” property) commensurate in scope with the present claims without undue experimentation, particularly in view of the deficiencies and missing information in the NOORDZIJ Declaration filed 08/15/2025.
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.
The rejections under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, in the previous Office Action mailed 11/17/2026 have been withdrawn in view of the Claim Amendments filed 02/16/2026.
Claim(s) 4-5, 7-8, 17, 20 is/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 pre-AIA the applicant regards as the invention.
Claim 4 is vague and indefinite because the phrase “the aliphatic polyalcohol is selected from the group” appears inconsistent with the parent claim which requires the aliphatic polyalcohol to at least partially comprise glycerol, and it is unclear whether the above phrase is: (i) intended to replace the required glycerol; or (ii) in addition to the required glycerol (e.g., the aliphatic polyalcohol “further comprises” or “is further selected from” one of the selected polyalcohols, other than glycerol).
Claim 5 is vague and indefinite because the phrase “the polyalcohol comprises at least...” is confusing, and it is unclear whether the above phrase is: (i) intended to replace the required glycerol; or (ii) in addition to the required glycerol (e.g., the aliphatic polyalcohol “further comprises” or “is further selected from” one of the selected polyalcohols.
Claims 7 and 20 are vague and indefinite because there is insufficient antecedent basis for the limitation “tricarboxylic acid”
Claim 7 is vague and indefinite because the phrase “tricarboxylic acid is selected from the group” appears inconsistent with the parent claim which requires the aliphatic polycarboxylic acid to at least partially comprise citric acid, and it is unclear whether the above phrase is: (i) intended to replace the required citric acid; or (ii) in addition to the required citric acid (e.g., the aliphatic polycarboxylic acid “further comprises” or “is further selected from” one of the selected polycarboxylic acid, other than citric acid).
Claim 8 is vague and indefinite because the phrase “the polycarboxylic acid comprises...” appears inconsistent with the parent claim which requires the aliphatic polycarboxylic acid to at least partially comprise citric acid, and it is unclear whether the above phrase is: (i) intended to replace the required citric acid; or (ii) in addition to the required citric acid (e.g., the aliphatic polycarboxylic acid “further comprises” or “is further selected from” one of the selected polycarboxylic acid, other than citric acid).
Claim 17 is vague and indefinite because the phrase “the aliphatic polyalcohol is selected from the group” appears inconsistent with the parent claim which requires the aliphatic polyalcohol to at least partially comprise glycerol, and it is unclear whether the above phrase is: (i) intended to replace the required glycerol; or (ii) in addition to the required glycerol (e.g., the aliphatic polyalcohol “further comprises” or “is further selected from” one of the selected polyalcohols, other than glycerol.
Claim 20 is vague and indefinite because itaconic acid and succinic acid are dicarboxylic acids, and not tricarboxylic acids.
Claim 20 is vague and indefinite because the phrase “tricarboxylic acid is selected from the group” appears inconsistent with the parent claim which requires the aliphatic polycarboxylic acid to at least partially comprise citric acid, and it is unclear whether the above phrase is: (i) intended to replace the required citric acid; or (ii) in addition to the required citric acid (e.g., the aliphatic polycarboxylic acid “further comprises” or “is further selected from” one of the selected polycarboxylic acid, other than citric acid).
Claim Rejections - 35 USC § 103 (AIA )
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.
The rejections under 35 U.S.C. 103 based on NILSSON (US 2012/0276400) in the previous Office Action mailed 09/10/2024 has been withdrawn from consideration in view of the new grounds of rejection necessitated by the Claim Amendments filed 11/18/2024 and 02/16/2026.
Response to Arguments
Applicant's arguments filed 02/16/2026 have been fully considered but they are not persuasive.
(A) Applicant argues that the Claim Amendments filed 02/16/2026 fully address the rejections under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph.
While the Claim Amendments filed 02/16/2026 address the rejections under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph (presence of new matter), the Claim Amendments filed 02/16/2026 do not adequately resolve the outstanding rejections under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph (regarding inadequate scope of enablement) for the reasons discussed in detail above in the rejections under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, in the present Office Action.
(B) Regarding the second NOORDZIJ Declaration filed 02/16/2026, the Declaration fails to address the outstanding rejections regarding inadequate scope of enablement for the reasons discussed in detail above in the rejections under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, in the present Office Action. Specifically, the additional examples discussed in the NOORDZIJ Declaration filed 02/16/2026 all utilize the polyester described in Example 3, and therefore fail to provide persuasive additional evidence regarding scope of enablement for: (i) polyester-free cellulose-based material; (ii) composite surface layer; and/or (iii) polyesters; which are materially different from the very limited inventive Examples in the specification.
The disclosure as originally filed only provides guidance how to produce a “biodegradable container or plate material” containing the recited “composite surface layer” containing the recited citric acid-based polyester which exhibits the recited “sufficiently flexible” property using: (i) limited ranges of “biodegradable container or plate material” as a whole; and (ii) very limited types of polyester -- i.e., a “biodegradable container or plate material” effectively containing only:
• 82-90 wt% cellulose fiber pulp;
• 10-18 wt% polyester derived from:
(i) a polycarboxylic acid component which is almost entirely (>99%) of citric acid;
(ii) a polyol component which is almost entirely (>99%) pure glycerol.
Additionally, the NOORDZIJ Declaration filed 02/16/2026 does not appear to provide any additional objective evidence regarding: (i) the flexibility of said containers containing less than 10 wt% or greater than 18 wt% of the polyester of Example 3; and (ii) the use of any other polyesters except for the polyester of Example 3.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Vivian Chen (Vivian.chen@uspto.gov) whose telephone number is (571) 272-1506. The examiner can normally be reached on Monday through Thursday from 8:30 AM to 6 PM. The examiner can also be reached on alternate Fridays.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Callie Shosho, can be reached on (571) 272-1123. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
The General Information telephone number for Technology Center 1700 is (571) 272-1700.
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September 29, 2026
/Vivian Chen/
Primary Examiner, Art Unit 1787
