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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 April 25, 2025 has been entered.
Examiner’s Note
The Examiner acknowledges the amendments of claims 13, 21 – 22, 24, 26 – 27, 30 – 31, 33 – 36, & 91, the addition of new claims 92 – 100, and the cancellation of claims 1 – 12, 14 – 20, 23, 25, 28 – 29, 32, & 37 – 90.
Election/Restrictions
Newly submitted claims 13, 21 – 22, 24, 26 – 27, 92, 94 – 95, & 98 – 99, are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
The groups of inventions do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
PCT Rule 13.2 (reproduced below for convenience) stipulates:
13.2 Circumstances in Which the Requirement of Unity of Invention Is to Be Considered Fulfilled
Where a group of inventions is claimed in one and the same international application, the requirement of unity of invention is referred to in Rule 13.1 shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same corresponding special technical features. The expression "special technical feature" shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The common inventive feature of the present claims is a biodegradable material comprising a layer of a first polymer, a layer of a second polymer, and a linking agent (see claim 92 of the claims filed 4/25/2025 and claim 10 of the claims filed 1/11/2022). This common technical feature cannot define a special technical feature because it does not make a contribution over the prior art.
As discussed in the restriction requirement mailed 1/22/2024, Gaserod et al. (US 20087/003392 A1) teach said common technical feature.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 13, 21 – 22, 24, 26 – 27, 92, 94 – 95, & 98 – 99 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Claims 30 – 31, 33 – 36, 91, 93, 96 – 97, & 100 are examined herein.
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.
Claims 30 – 31, 33 – 36, 91, 93, 96 – 97, & 100 are rejected 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. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
With regard to independent claim 91, the claim recites “a first polymer comprising a polysaccharide polymer or a salt or solvate thereof; a second polymer comprising a cellulose ether or a salt or a solvate thereof.” The term “comprising” suggests the first polymer and second polymer may contain more than one polymer. However, it is not possible for a single polymer to contain more than one polymer. Therefore, the use of the term “comprising” is new matter because Applicant does not have support for a first polymer or a second polymer to be formed by more components than a single polymer.
Claims 30 – 31, 33 – 36, 93, 96 – 97, & 100 are dependent on claim 91 and therefore also rejected.
With regard to claim 30, the claim recites “the second polymer is selected from the group consisting of an alginic acid polymer, or a solvate thereof, and an ulvan polymer, or a salt or solvate thereof.” However, claim 30 is dependent on claim 91, which recites the first polymer is a polysaccharide or a salt or solvate thereof and the second polymer is a cellulose ether or a salt or solvate thereof. According to Applicant’s specification, alginic acid polymer and ulvan polymer are examples of a polysaccharide, not a cellulose ether (spec, pg. 18).
With regard to claim 31, the claim recites the second polymer is a compound of the formula ID. However, claim 31 is dependent on claim 91, which recites the first polymer is a polysaccharide or a salt or solvate thereof and the second polymer is a cellulose ether or a salt or solvate thereof. According to Applicant’s specification, formula ID is a polysaccharide (first polymer), not a cellulose ether (spec, pg. 19).
With regard to claim 33, the claim recites the first polymer is a compound of formula V. However, claim 31 is dependent on claim 91, which recites the first polymer is a polysaccharide or a salt or solvate thereof and the second polymer is a cellulose ether or a salt or solvate thereof. According to Applicant’s specification, formula V is a cellulose ether (second polymer), not a polysaccharide (spec, pgs. 28 – 29).
With regard to claims 34 – 36, the claim recites the first polymer is hydroxypropyl methylcellulose. However, claim 34 is dependent on claim 91, which recites the first polymer is a polysaccharide or a salt or solvate thereof and the second polymer is a cellulose ether or a salt or solvate thereof. According to Applicant’s specification, hydroxypropyl methylcellulose is a cellulose ether (spec, pg. 13).
Furthermore, with regard to claim 36, which is dependent on claim 91, the claim recites the second polymer comprises an alginic acid polymer. According to Applicant’s specification, alginic acid polymer is a polysaccharide, not a cellulose ether (spec, pg. 18).
Therefore, with regard to claims 30 – 31 & 33 – 36, it is assumed Applicant intended to recite the first polymer is an alginic acid, an ulvan polymer, or formula ID, and the second polymer is hydroxypropyl methylcellulose or formula V. However, correction by amendment is required.
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 30 – 31, 33 – 36, 91, 93, 96 – 97, & 100 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.
With regard to independent claim 91, the claim is drawn to a substrate (product), but the body of the claim recites limitations to a water vapor barrier on the surface of said substrate, and as such, the recited water vapor barrier is not a component of the product to which the claim is drawn. With regard to the prior art rejection below, the examiner has assumed Applicant intended to recite a biodegradable material in the preamble, wherein said biodegradable material consists of a biodegradable substrate and a water vapor barrier on a surface of said substrate. However, clarification by amendment of the claim is requested.
Claims 30 – 31, 33 – 36, 93, 96 – 97, & 100 are dependent on claim 91 and therefore also rejected.
With regard to claims 30 – 31, 33 – 36, 93, 96 – 97, & 100, the preambles of the dependent claims do not match the preamble of the independent claim 91.
With regard to claim 93, the phrase "may be" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 100 recites the limitations “the first solution,” “the second solution,” “the solution into which it is dissolved,” and “the xanthum gum stabilizer” in the water vapor barrier of claim 96. There is insufficient antecedent basis for these limitations in the claim.
Response to Arguments
Applicant’s arguments, see Remarks, filed April 25, 2025, with respect to the rejection(s) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICOLE T GUGLIOTTA whose telephone number is (571)270-1552. The examiner can normally be reached M - F (9 a.m. to 10 p.m.).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Frank Vineis can be reached at 571-270-1547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICOLE T GUGLIOTTA/Examiner, Art Unit 1781
/FRANK J VINEIS/Supervisory Patent Examiner, Art Unit 1781