DETAILED ACTION
This Office Action is responsive to the amendment filed on 12/18/2025.
The objections and rejections not addressed below are deemed withdrawn.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office Action.
The present application is being examined under the pre-AIA first to invent provisions.
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.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/18/2025 has been entered.
Claim Rejections - 35 USC § 103
Claims 75, 84-86, and 95 are rejected under 35 U.S.C. 103 as being unpatentable over Verrall, US2008/0110370 (of record) in view of Yoshino, JP2004010634.
A machine translation of Yoshino was used to prepare this Action.
Verrall discloses a composition comprising polyvinyl alcohol (PVOH), a crosslinking agent, and chitosan (abstract). Said composition is used in the production of films (for claim 75) (¶0028).
Regarding the claimed PVOH (A): As noted above, the prior art composition is required to contain PVOH (for claim 75) (abstract, ¶0012). Verrall teaches that the amount of PVOH in the prior art composition is in the range of 50 to 90 wt% (¶0013); note that this range is entirely encompassed by the claimed range (for claim 75).
Regarding the claimed crosslinking agent (B): As noted above, the prior art composition comprises a crosslinking agent (abstract, ¶0012). Said crosslinking agent is present in an amount in the range of 0.1 to 10wt% (¶0024); note that this range is entirely encompassed by the claimed range ((for claim 75). As such crosslinking agent, Verrall discloses the use of citric acid, maleic acid, oxalic acid, malonic acid, and succinic acid (¶0023); the structures of these compounds are shown below.
Citric acid
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117
207
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Maleic acid
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182
118
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Oxalic acid
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162
215
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Malonic acid
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129
234
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Succinic acid
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177
116
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Greyscale
Note that these compounds are all either a tricarboxylic acid (for claim 75) (citric acid) or a dicarboxylic acid (for claim 75) (maleic acid, oxalic acid, malonic acid, succinic acid). Each of these compounds therefore correspond to the claimed crosslinking agent (B) which is a nonpolymeric material (for claim 75).
Regarding the claimed bioplastic (C): As noted above, the prior art composition is required to contain chitosan (abstract, ¶0012), corresponding to the claimed bioplastic (for claim 75). Verrall teaches that the prior art composition comprises chitosan in an amount in the range of 1 to 20 wt% (¶0020); note that this range is entirely encompassed by the claimed range (for claim 75).
Regarding the claimed additive (D): Verrall teaches that the prior art composition may contain up to 10 wt%, overlapping the claimed range (for claims 75, 84) of auxiliary agent(s) such as a filler (¶0025), corresponding to the claimed additive (for claims 75, 84).
Regarding claim 85: “[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on inherency under 35 U.S.C. 102, on prima facie obviousness under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same…" as that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (MPEP § 2112). As discussed in the previous paragraphs, the prior art renders obvious a composition that contains the same components combined in the same amounts as used to define the instant composition. As the prior art composition appears to be the same as the claimed composition, it is reasonably expected that it would have the same properties as the claimed composition. The burden is therefore shifted to the applicant to provide evidence that the properties used to define the claimed composition would not be present in the composition taught by Verrall.
Regarding claims 86, 95: As discussed in the previous paragraphs, the prior art composition comprises 50 to 90 wt% PVOH, overlapping the claimed ranges (for claims 86, 95); 0.1 to 10 wt% crosslinking agent, overlapping the claimed ranges (for claim 86); and 1 to 20 wt% chitosan, overlapping the claimed range (for claim 86).
Verrall is silent regarding the production of a water free composition comprising PVOH, a crosslinking agent, and chitosan.
Yoshino discloses the production of crosslinkable compositions comprising PVOH, a polysaccharide such as chitosan (¶0007), and a polycarboxylic acid crosslinking agent (abstract; ¶0006, 0014, 0016). As taught by Yoshino, it was known in the art that such crosslinkable compositions could be obtained by mixing the components with one another in powder form-i.e., in the absence of solvent(s) (¶0019).
Verrall and Yoshino are both directed towards the same field of endeavor-i.e., production of crosslinkable blends of PVOH and polysaccharides such as chitosan. Note that Verrall teaches that the only required components of the film-forming composition of US2008/0110370 are PVOH, a crosslinking agent, and chitosan (abstract, ¶0013) and that films can be made according to any suitable method (¶0028). Given that Verrall teaches that the prior art film may be made via any method and that Yoshino teaches that it was known that blends of PVOH, crosslinking aids, and chitosan could be made by dry-blending the components in powder form, it therefore would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the teachings of Verrall by combining the PVOH, crosslinking agent, and chitosan in powder form, as taught by Yoshino, with the reasonable expectation of obtaining a crosslinkable composition.
Claim(s) 96 and 97 are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Verrall, US2008/0110370 (of record) in view of Yoshino, JP2004010634 (of record), as applied to claims 75, 84-86, and 95 above, and further in view of Huang, CN201511008963 (of record).
A machine translation of Huang-previously supplied to applicant as part of the Office Action mailed on 1/31/2025-was used for the preparation of this Action.
The disclosures of Verrall and Yoshino are discussed earlier in this Action.
Verrall is silent regarding the preparation of a homogeneous composition and pelletization.
Huang discloses the production of thin films (abstract) from crosslinked PVOH-based compositions (page 2: lines 21-28). As taught by Huang, it was known that films could be made from such compositions by dry mixing the components in a high speed mixer to uniformly (i.e., homogeneously) mix the components to obtain a mixed powder (for claim 96), put the mixed powder into a granulator to granulate it (i.e., form pellets (for claim 97), and use the particle to make a blown film (page 3: lines 7-15).
Verrall and Huang are both directed towards the production of water-dissolving films from PVOH-based compositions. Furthermore, note that Verrall teaches that the composition used to prepare the film of US2008/0110370 may be made using any suitable method (¶0028). Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to modify the process of Verrall by dry mixing the components to make a uniform powder, granulating said powder, and blowing the granulate, with the reasonable expectation of obtaining a crosslinked film that was soluble in water as desired.
Response to Arguments
Applicant's arguments filed 12/18/2025 have been fully considered but they are not persuasive.
Applicant argues that Verrall and Yoshino are not directed towards the same field of endeavor since Yoshino does not specifically disclose the production of a film. This is not persuasive. As discussed in the previous Actions, both Verrall and Yoshino disclose the production of crosslinkable compositions comprising a blend of polyvinyl alcohol (PVOH), a polysaccharide such as a chitosan, and a crosslinking agent. Furthermore, both Verrall (0008) and Yoshino (0030) disclose the use of such compositions in the production of sealing materials. Given that both references disclose compositions which 1) comprise the same components and 2) are suitable for use in the same general field, it is maintained that they are directed towards the same field of endeavor.
Applicant argues that Verrall requires that the film of US2008/0110370 is made via slurry method because that is the only method disclosed; however, as noted in the previous Action, Verrall specifically discloses that the prior art film may be made by any known method. Assuming, arguendo, that Verrall requires that the film be formed via a slurry casting method, applicant's argument is not be persuasive. See Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959) (Prior art reference disclosing a process of making a laminated sheet wherein a base sheet is first coated with a metallic film and thereafter impregnated with a thermosetting material was held to render prima facie obvious claims directed to a process of making a laminated sheet by reversing the order of the prior art process steps.). See also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results); In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) (Selection of any order of mixing ingredients is prima facie obvious.) (MPEP 2144.04(IV)(C)).
As noted above, Yoshino teaches that it was known that powder mixing and slurry mixing were known alternative methods for combining PVOH, polysaccharide, and crosslinking agent to form a crosslinkable composition. Barring a showing of evidence demonstrating unexpected results, it would have been obvious to one of ordinary skill in the art to modify the process of Verrall by combining the PVOH, chitosan, and crosslinking agent in powder form-thereby forming a water-free composition. Even assuming that Verrall requires that the film be cast from a slurry, and ordinary artisan would recognize that said water-free composition could then be slurried in water and cast into a film. Note that the claimed invention is a composition, not a process. So long as the prior art renders obvious a composition comprising the recited elements, it would not be persuasive to argue that Verrall renders obvious using that composition in a different method than the process envisioned by applicant.
With regards to the argument that Yoshino discloses the use of water in some of the disclosed preparation methods, it has been held that "a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including non-preferred embodiments," Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.). "Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or non-preferred embodiments,” In re Susi 440 F.2d 442, 169 USPQ 423 (CCPA 1971). (MPEP § 2123 [R-5]). The mere fact that Yoshino discloses that aqueous methods were known for the production of crosslinkable compositions does not teach away from its disclosure that it was known in the art that such compositions could be made by combining the components in powder form.
Furthermore, to the extent that Yoshino teaches that solvent-based methods could be used, the prior art further teaches that non-aqueous liquids can be used as the solvent (0020). Contrary to applicant's argument, Yoshino's disclosure of aqueous methods does not teach away from its broad disclosure that non-aqueous methods were known.
"[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom." In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968) (MPEP 2144.01). As noted above, Yoshino explicitly discloses that crosslinkable compositions of PVOH, polysaccharide, and crosslinking agent could be made via mixing the components in powder form. The term "powder" is generally used to refer to a dry solid form of a compound. Given that Yoshino specifically refers to powder mixing as an alternative to solvent based methods, an ordinary artisan would reasonably infer that the prior art teaching of powder mixing refers to a method of mixing the components in the absence of any solvent. An ordinary artisan would therefore reasonably expect such methods to form a water-free composition.
Conclusion
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/JEFFREY S LENIHAN/Primary Examiner, Art Unit 1765