DETAILED ACTION
Response to Amendment
This office action is in response to the Amendment filed on 9/04/2025. Claims 26 and 33 were canceled. Claim 36 was added. Claims 1-6, 8-16, 24-25, 27-32 and 34-36 are now pending in the application. Claims 24-25 and 27-31 were withdrawn without traverse in the reply filed on 12/16/2024.
In view of the amendment, a new ground of rejections of the claims under 103 were made.
This office action is made final.
Claim Analysis
Summary of Claim 1:
A composite material capable of being thermoformed into a three- dimensional object, comprising:
a first component formed by a renewable polymer and
a second component formed by a reinforcing material, wherein
-said first component comprises a thermoplastic polymer selected from the group consisting of biodegradable polyesters and mixtures thereof,
-said second component comprises particles of a hydrophilic material comprising sieved size of less than 0.5 mm,
said composite material further comprising:
- a third component formed by a polymer different from the polymer of the first component, said polymer of the third component being capable of forming regions of elasticity to provide for objects having properties of flexibility or semi-rigidity in at least one dimension,
- wherein the composite material comprises 30 to 70 parts by weight of the first component; 10 to 40 parts by weight of the second component; 10 to 40 parts by weight of the third component; 0.1 to 5 parts by weight of processing additives;
- wherein the third component is formed of polybutylene adipate terephthalate, PBAT, wherein the third component is formed of polybutylene adipate terephthalate, PBAT, wherein the composite material is configured such that the particles of the hydrophilic material swell inside the composite material upon absorption of water by an amount of swelling that is sufficient to cause cracks to form in the composite material, and wherein the cracks accelerate degradation of the composite material, and
wherein compounding of the first component, the second component , and the third component is carried out at a temperature in the range of 110 to 210 °C.
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 1-6, 8-14, 16 and 32 and 34-36 are rejected under 35 U.S.C. 103 as being unpatentable over Pärssinen (US 2016/0250063) in view of Miao et al. (CN107868285) and Fang et al. (CN106750486 A).
Regarding claims 1-2 and 36, Pärssinen teaches a composite material in the shape of a three dimensional object, comprising a first component formed by biodegradable polyesters and mixtures thereof, a second component formed by particles of a woody material (hydrophilic material) (claim 1), a third component formed by an elastic or soft polymer different from the polymer of the first component [0075]-[0076], which is capable of forming into the material regions of elasticity to confer to the composite material mechanical properties in the range from flexibility to semi-rigidity in at least one dimension of the object at ambient temperature (claim 2 ); wherein the second component comprises particles of the hydrophilic material having a dimension greater than 0.1 mm (claim 1), which overlaps with the claimed amount (less than 0.5 mm). Pärssinen further teaches the composite contain powdered material, such as sawdust (corresponding to wood flour), which typically have particles with a size of less than 0.5 mm*0.5 mm*0.5 mm [0068]. The reference also mentions wood filler size, origin and compounding considerations, with the wood remaining untreated ([0066]-[0067],[0070]. It is noted that wood particles in a PLA matrix have the natural tendency to degrade through hydrolysis, as the wood particles naturally absorbs moisture that will result into formation of cracks, thereby facilitating hydrolysis and accelerating degradation, which improves the composite’s biodegradability (see Petinakis et al., Polymer Degradation and Stability 95 (2010)1704-1707 (abstract and p.1705, Fig.2) and US 2016/0108243 A1 ([0139]-[0142]), as required by the instant claim. Additionally, Pärssinen teaches that the third component is a co-polyester (claim 9).
Pärssinen is silent on the co-polyester to be polybutylene adipate terephthalate (PBAT).
However, Miao et al. disclose a composite high strength biodegradable garbage bag comprising PLA, sawdust, PBAT, among other ingredients ([0009]-[0019]) and its effect on toughness (which implies flexibility) (abstract, p.1). It is noted that PBAT is a biodegradable and flexible polyester (see Polymer Engineering and Science-2019, left col., last Parag. p.2 and instant specification p.5, l.20-34). Considering Pärssinen teaches the third component is required to be a flexible or elastic polymer in order to achieve the desired semi-rigidity and flexibility in the object ([0015],[0021]). Therefore, it would have been obvious to one of ordinary skill in the art to use PBAT of Miao et al. as the third component in the composite material of Pärssinen with the reasonable expectation of success and the predictable result of providing an object with the desired semi-rigidity and flexibility.
Furthermore, Pärssinen discloses the composite material comprising 10 to 70 parts by weight of a biodegradable polyester; 25 to 60 parts by weight of wood particles; 5 to 40 parts by weight of a soft or elastic polymer (claim 13) .
Pärssinen is silent on the composite comprising additives.
Fang et al. disclose a composite material comprising PLA, wood powder, toughening agents such as PBS, 0.5-2 parts by weight of lubricant and 1-4 parts by weight of forming nucleating agent such as talc (claims 1-6). Fang et al. offer the motivation of using the amount of lubricant due to its ability to improve processability and surface quality of the composite while the amount of nucleating agent enhance mechanical properties and dimensional stability. In light of these benefits, it would have been obvious to one of ordinary skill in the art to use the additives of Fang et al. on the composite material of Pärssinen in view of Miao et al., thereby arriving at the claimed invention.
Pärssinen in view of Miao et al. and Fang et al. do not disclose the claimed ranges for the components of the composite material.
However, one of ordinary skill in the art at the time the invention was made would have considered the invention to have been obvious because the ranges taught by Pärssinen in view of Miao et al. and Fang et al., overlap the instantly claimed ranges and therefore are considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, MPEP 2144.05. Referring to the limitation of the composite material being capable of being thermoformed into a three dimensional object, it is noted that Pärssinen in view of Miao et al. and Fang et al. teach a composite material substantially identical to the claimed invention. Therefore, the composite material of Pärssinen in view of Miao et al. and Fang et al. is expected to be capable of being thermoformed.
The present claims include product by process language regarding “compounding of the first component, the second component and the third component is carried out at a temperature in the range of 110 to 210 °C (instant claim 1) or 150 to 210°C (instant claim 36) ”. The above argument establishes a rationale tending to show the claimed composite material is the same as what is taught by Pärssinen in view of Miao et al. and Fang et al.. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." (MPEP § 2113 (quoting In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)).) 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 unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983), MPEP 2113. Further, the Office notes that Pärssinen teaches the compounding of the first, second and third components is carried out at temperatures between 110-150°C [0070].
Regarding claims 3 and 12, Pärssinen teaches as examples of the biodegradable polyester polylactides, poly(lactic) acid and copolymers of lactic acid [0049], thereby reading on the renewable plant-based biodegradable polyesters, as required by the instant claims.
Regarding claim 4, Pärssinen teaches the composite material comprises a fourth component comprising a thermoplastic polymer used for achieving improved mechanical properties and to modify the surface properties of the composition [0092].
Pärssinen is silent on the composite material comprising a natural water soluble material.
Miao et al. teach a composite high strength biodegradable garbage bag comprising modified starch, urea, PLA, sawdust, PBAT, among other ingredients ([0009]-[0019]). It is noted that the solubility of urea is > 100 g/100 g of water which is equivalent to > 1000 gr/dm3 ( see Buskamp et al. US20002/0119904 A1, [0143]) . Miao et al. offer the motivation of using the urea to enhance the strength of the material and the degradation rate [0030]. In light of these benefits, it would have been obvious to one of ordinary skill in the art to add the urea on the composite of Pärssinen, thereby arriving at the claimed invention.
Regarding claim 5, Pärssinen discloses the third component is formed by a soft or elastic polymer selected from co-polyesters among other options (claims 8 and 10).
Pärssinen is silent on the claimed elongation at break of the third component.
Miao et al disclose a composite high strength biodegradable garbage bag comprising PLA, sawdust, PBAT, among other ingredients ([0009]-[0019]), wherein PBAT is well known in the art as a biodegradable, soft or elastic polyester. Therefore, it would have been obvious to one of ordinary skill in the art to use PBAT as the co-polyester (third component) in the composite material of Pärssinen. In view of the specification, the third component is an elastic biopolymer having an elongation a break of 100% or more (p.16, l. 20-25), and is selected from PBS and PBAT (p.5, l. 31-34). Pärssinen in view of Miao et al. teach PBAT as the third component. Therefore, the property of the elongation at break for the third component is expected to be the same as required by the instant claim 5.
Regarding claim 6, Pärssinen discloses 25-60 parts by weight of wood particles (claim 13), which is equivalent to 27.27 wt.% to 50 wt.% of lignocellulosic particles, which overlaps with the claimed amount (5-40 wt.%), thereby a prima facie case of obviousness being established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997).
Regarding claims 8 and 9, Pärssinen teach the first component forms the matrix of the composite and the particles of the second component in the composition can have a random orientation or they can be arranged in a desired orientation [0046], which implies some particles can protrude which results in a rough surface.
Pärssinen is silent on the property of water absorption of the claimed tubular object (claim 8) and the property of surface roughness (claim 9).
The water absorption and the surface roughness are directly related to the composition of the material. The composite material of Pärssinen is substantially identical to the claimed invention. Pärssinen in view of Miao et al and Fang et al. discloses the same composite material as discussed in the rejection of claim 1. Therefore, the properties of water absorption and surface roughness of the composite material of Pärssinen are expected to be the same as required by the instant claims.
Regarding claim 10, Pärssinen teaches the wood particles are derived from wood-raw material by cutting or chipping to a dimension greater than 0.1 mm (claim 1 and [0068]), wherein wood chips of deciduous or coniferous wood species are preferred [0066], as required by the instant claim.
Regarding claim 11, Pärssinen discloses a composite material that is shaped into a three dimensional object, wherein the object have a thickness of 0.1-100 mm [0042], which overlaps with the claimed range (0.2 mm to 0.5 mm), thereby a prima facie case of obviousness being established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997).
Regarding claim 13, Pärssinen discloses as examples of biodegradable thermoplastic polymers mixtures of polycaprolactone polymer (PCL) with polylactide, poly (lactic acid), polyglycolides as well as copolymers of lactic acid and glycolic acid (claim 6 and [0047]- [0049]), as required by the instant claim.
Regarding claims 14 and 32, Pärssinen is silent on the composite material comprising additives.
However, Fang et al. disclose a composite material comprising PLA, wood powder, toughening agents such as PBS, (claims 1-6), additives 0.5 -2 parts of lubricant (claim 1) including stearic acid such as magnesium stearates (p.2), PE was or paraffine wax (claim 5) and 1-4 parts by weight of forming nucleating agent such as talc (claims 1 and 6), thereby reading on the metal stearates of claim 14 and claim 32 and waxes and mineral fillers of claim 32. Fang et al. offer the motivation of using the amount of lubricant due to its ability to improve processability and surface quality of the composite. In light of these benefits, it would have been obvious to one of ordinary skill in the art to use the magnesium stearates of Fang et al. on the composite material of Pärssinen in view of Miao et al and Fang et al., thereby arriving at the claimed invention.
Regarding claim 16, Pärssinen discloses the composite material comprising 10 to 70 parts by weight of a biodegradable polyester (PLA disclosed in paragraph [0049]); 25 to 60 parts by weight of wood particles having a dimension greater than 0.1 mm (claim 1), which overlaps with the claimed sieved size and 5 to 40 parts by weight of a soft or elastic polymer (claim 8) (claim 13). The limitation of the PBAT as the third component is discussed in the rejection of claim 1. It is noted the wax is an optional component.
Pärssinen in view of in view of Miao et al. do not disclose the claimed ranges for the components of the composite material.
However, one of ordinary skill in the art at the time the invention was made would have considered the invention to have been obvious because the ranges taught by Pärssinen in view of Miao et al., overlap the instantly claimed ranges (40-70 pbw of PLA, 10-40 pbw of wood particles, 10-30 pbw of PBAT and 0-1 pbw of wax), therefore are considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, MPEP 2144.05.
Regarding claims 33 and 34, Pärssinen in view of Miao et al. and Fang et al. are silent on the pre-dried particles of a hydrophilic material. Pärssinen in view of Miao et al. and Fang et al. are further silent on any chemical or physical treatment of the hydrophilic particles.
However, Pärssinen teaches a composite material as discussed in the rejection of claim 1, wherein the compounding of the first component and second component, and any other components is carried out in an extruder at temperatures ranging from 110 °C to 150°C [0070]. Although Pärssinen does not explicitly disclose a moisture content of the wood particles, it is a common industry practice that wood flour or fiber needs to be dry (<1% moisture content) to facilitate adequate mixing with the polymer and provide maximum extruder output rate. It is noted that high moisture levels adversely affect the extrusion process due to the release of volatiles (water vapor) during processing (See Gardner et al. Extrusion of Wood Plastic Composites, 2010, Wood drying p.2: 3rd and 4th paragraph). Therefore, it would be obvious to one of ordinary skill in the art to use pre-dried particles of the hydrophilic material having moisture content below 2 %, thereby arriving the claimed invention as recited by instant claim 33.
Referring to claim 34, Pärssinen’s disclosure including the examples ([0066],[0067],[0113]) does not teach that the hydrophilic material were exposed to a chemical or physical treatment, as required by the instant claim.
Regarding claim 35, Pärssinen in view of Miao et al. and Fang et al. are silent on the percentage of degradation of the composite material as recited by the instant claim.
The degradation of the composite material depends on the composition and the environmental exposure. Pärssinen in view of Miao et al. and Fang et al. teach a composite material substantially identical to the claimed invention as discussed in the rejection of claim 1, claim 11 and claim 33. Where the claimed and prior art products are substantially identical in structure or composition, or are produced by substantially identical processes, a prima facie case of obviousness has been established. Therefore, the degradation requirements of the composite material or Pärssinen in view of Miao et al. and Fang et al. would be expected to be the same as required by the instant claim.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Pärssinen (US 2016/0250063) in view of Miao et al. (CN107868285) and Fang et al. (CN106750486 A) as set forth above for claims 1-6, 8-14, 16 and 32 and further in view of Nascimento et al. (US 2009/0018235 A1).
Regarding claim 15, The disclosure of Pärssinen in view of Miao et al. and Fang et al. (CN106750486 A) is adequately set forth in paragraph 7 and incorporated herein by reference.
Pärssinen in view of Miao et al. and Fang et al. are silent on the addition of particles of dye material.
In the same field of endeavor, Nascimiento et al. teach a biodegradable polymeric composition comprising at least one biodegradable polymer, at least one natural filler or natural fiber, including wood flour to prepare an environmentally degradable material that can be used in the manufacture of tubes and packages (abstract, [0057]-[0061]). Nascimiento et al. further teaches the addition of optional additives such as pigments [0069], thereby reading on the particles of fine divided dye material capable of conferring properties of color to the composite material. Given that Nascimento et al. teach the use or pigments in a biodegradable composite which is processed at high temperatures (abstract, [0057]-[0061],[0069],[0091]), therefore it would be obvious to one of ordinary skill in the art, to use the pigments of Nascimiento et al. into the composite of Parsinnen to achieve a desirable color, without affecting mechanical properties or processability, thereby arriving to the claimed invention.
Claims 1-3, 5-6, 8-12, 14-16, 32 and 36 are rejected under 35 U.S.C. 103 as being unpatentable over Yang (CN 106147158 A as listed in the IDS dated 8/11/2025, full English Machine translation herewith), as evidenced by Sigma-Aldrich, Particle Size Conversion Table.
Regarding claims 1-2 and 36, Yang teaches a biodegradable wood-plastic composite material [0009] and a product thereof (which correspond to the composite material and the three dimensional object), comprising 10-95 parts of polylactic acid resin, 1-65 parts of wood flour, 1-15 parts of polyadipic acid/butylene terephthalate resin (PBAT), 0.5-5 parts of a lubricant (which correspond to additives), 1-15 parts of an impact modifier, among other components (abstract), thereby reading on the first, second and third component, wherein the fineness of the wood powder is 70-80 mesh (which correspond to particles comprising a sieved size less than 0.21 mm, as evidenced by the Particle Size Conversion Table by Sigma-Aldrich).
Yang does not disclose the claimed ranges for the components of the composite material.
However, one of ordinary skill in the art at the time the invention was made would have considered the invention to have been obvious because the ranges taught by Yang overlaps the instantly claimed ranges and therefore are considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, MPEP 2144.05.
Yang is silent on the composite material being capable of being thermoformed into a three dimensional object. Yang is further silent on the composite material being configured such that the particles of the hydrophilic material swell upon the absorption of water and form cracks that accelerate degradation of the composite material.
However, Yang as applied above results in a that is substantially identical to the claimed composite material, which comprises PLA, wood flour having a size of less than 0.5 mm and PBAT in amounts that overlap with the claimed amounts of the components. Therefore, the composite material of Yang is expected to be capable of being thermoformed and the particles of the hydrophilic material are expected to swell upon absorption of water to form cracks into the composite that would result in the acceleration of the degradation of the composite, as disclosed in the instant specification (p.26:15-23). Because the PTO does not have proper means to conduct experiments, the burden of proof is now shifted to Applicant to show otherwise. (See In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977); In re Fitzgerald, 205 USPQ 594 (CCPA 1980).)
The present claims include product by process language regarding “compounding of the first component, the second component and the third component is carried out at a temperature in the range of 110 to 210 °C (instant claim 1) or 150 to 210°C (instant claim 36) ”. The above argument establishes a rationale tending to show the claimed composite material is the same as what is taught by Yang. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." (MPEP § 2113 (quoting In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)).) 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 unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983), MPEP 2113.
Regarding claim 2, Yang teaches the composite material comprising PBAT (abstract), wherein PBAT correspond to the third component used in the present invention (instant claim 1 and p.11 of instant specification), therefore PBAT is considered to read in the component having properties of flexibility and semi-rigidity.
Regarding claims 3 and 12, Yang teaches the composite material comprising PLA that is made from starch and has good degradability (abstract, [0006]) thereby reading on the renewable plant-based biodegradable polyesters, as required by the instant claims.
Regarding claim 5, Yang teaches the composite material comprises PBAT as discussed in the rejection of claim 1. In view of the instant claim 1, the third component is PBAT, therefore, the property of the elongation at break for the third component is expected to be the same as required by the instant claim.
Regarding claim 6, Yang teaches 1-65 parts by weight of wood flour (abstract), preferably 20-30 parts by weight [0031], which is equivalent to 8.33 to 37.26 wt.% of wood flour in the composite material.
Regarding claims 8 and 9, Yang is silent on the property of water absorption of the claimed tubular object (claim 8) and the property of surface roughness (claim 9).
However, the water absorption and the surface roughness are directly related to the composition of the material. The composite material of Yang is substantially identical to the claimed invention. Yang teaches the same composite material as discussed in the rejection of claim 1. Therefore, the properties of water absorption and surface roughness of the composite material of Yang are expected to be the same as required by the instant claims.
Regarding claim 10, Yang teaches the wood particles is at least one of biomass materials such as wood chips, bamboo chips, peanut shells, sawdust, bamboo shavings, peanut shells, cotton stalks, and wheat straw, wherein the fineness of the wood powder is 70-80 mesh (which correspond to a sieved size of less than 0.21 mm) ([0018], [0031]), as required by the instant claim.
Regarding claim 11, Yang teaches the wood composite material is used in different applications including cosmetic packaging and daily necessities, as well as plate, bowls, etc. [0023], which are produced by melt extrusion [0042]. Case law holds that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP 2111.02. Yang teaches a substantially identical biodegradable composite material as the claimed invention, therefore, the composite material of Yang is expected to be capable of being shaped by melt processing into an article with the claimed dimensions as recited in the instant claim 11.
Regarding claim 12, Yang teaches the composite material comprises polylactic acid (abstract, examples) as required by the instant claim.
Regarding claim 14, Yang teaches the composite material comprises 0.5 – 5 parts by weight of lubricant (which is equivalent to about 0.21 wt.% to about 30 wt.%), wherein the lubricant is selected from an ester-type flow modifier, vinyl bis-stearamide, low molecular weight polyethylene wax, erucamide, and stearic acid series (claim 5 and abstract). Further, in the case where the claimed ranges “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).) It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range taught by Yang.
Regarding claim 15, Yang teaches the composite material comprises a colorant (claim 10, [0021]), as required by the instant claim.
Regarding claim 16, Yang teaches a biodegradable wood-plastic composite material [0009] comprising 10-95 parts of polylactic acid resin, 1-65 parts of wood flour having particles comprising a sieved size of 70-80 mesh (which correspond to particles of less than 0.21 mm), 1-15 parts of polyadipic acid/butylene terephthalate resin (PBAT), 0.5-5 parts of a lubricant such as low molecular polyethylene wax (abstract, claim 5). In the case where the claimed ranges “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).) It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range taught by Yang.
Regarding claim 32, Yang teaches the wood flour is dried in a high mixer at a set temperature of 110°Cprocessing additives such as vinyl bis-steramide, erucamide, (claim 5), inorganic filler including talc, calcium carbonate or wollastonite (claim 9), as required by the instant claim.
Response to Arguments
Applicant' s arguments, see p. 7-13, filed 09/04/2025, with respect to the rejections of the claims over Pärssinen et al. in view of Miao et al. and Fang et al. have been fully considered but they are not persuasive. However, in light of the amendment, a new ground of rejection is made under 103 over Yang.
Regarding the rejection of claim 1 over Pärssinen et al. in view of Miao et al. and Fang et al. as evidenced by Petinakis, Applicant finds no express, implied, or inherent teaching in the referenced Pärssinen (20160108243) or Petinakis of sufficient swelling to cause the cracks that accelerate degradation. Examiner acknowledges that Parsinnen or Petinakis do not teach explicitly the hydrophilic material absorbs water to cause sufficient swelling to produce cracks that accelerate degradation. However, Pärssinen et al. in view of Miao et al. and Fang et al. teach a substantially identical composite material as the claimed invention comprising the same components in amounts that overlap, wherein the wood flour comprises particles having a sieved size that overlaps with the claimed invention. Therefore, It would be reasonable to one of ordinary skill in the art to infer that the particles of the hydrophilic material are expected to swell upon absorption of water to form cracks into the composite that would result in the acceleration of the degradation of the composite. Although, Petinakis is silent about the “sufficient swelling” that causes cracking, however Petinakis teaches the degradability increases because of absorption of water that starts from the hydrophilic fillers that promotes water penetration (through cracks) and accelerates the hydrolysis and microbial attack.
Applicant states “As noted above, the cited Pärssinen (20160250063) does disclose the following: “For example a suitable barrel temperature can be in the range of about 110
to 150° C from hopper to die, while the screw rotation speed was between 25-50 rpm. These are, naturally, only indicative data and the exact settings will depend on the actual apparatus used." (end of paragraph [0070]). Taken out of context, this might seem applicable to amended claim 1. However, as detailed above, this is not consistent with the context or the moldability temperatures of the cited Pärssinen (20160250063), and should therefore be disregarded.”. In response, attention is drawn to the rejection as set forth above, wherein the limitation of the processing temperature of amended claim 1 is considered as a product by process limitation, wherein patentability is determined by the product, not by the process by which is made. Examiner acknowledges that Pärssinen discloses the composite material is formable at a temperature of 50 to 70°C ([0059], claim 29). However, the reference discloses compounding the first, second and third component at a temperature of the cylinder and screw rotation speed that avoid decomposition of wood chip structure and provide as example a barrel temperature range of about 110-150°C, which implies for initial compounding with fillers such as wood flour, the processing temperature is between 110-150°C to be able to melt the thermoplastic polyester (i.e. PLA, polycaprolactone, PCL) and obtain an homogeneous composite. It is noted that Parsinnen teaches in a preferred embodiment, the first component is preferably polycaprolactone (PCL) or a PCL copolymer [0047], but the reference also discloses the incorporation of other biodegradable copolymers including PLA ([0048]-[0049], claim 6). Thus, Parsinnen implies that PLA/PCL containing composites can be compounded with fillers at temperatures of about 110-150°C while still providing moldability at 50-70 °C. It is for these reasons that Applicant’s arguments are not found persuasive.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OLGA L. DONAHUE whose telephone number is (571)270-1152. The examiner can normally be reached M-F 8:00-5:00.
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/OLGA LUCIA DONAHUE/
Examiner, Art Unit 1763
/JOSEPH S DEL SOLE/Supervisory Patent Examiner, Art Unit 1763
Prosecution Insights