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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/17/2025 has been entered.
Response to Amendment
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior office action.
All outstanding rejections, except for those maintained below, are withdrawn in light of applicant’s amendment filed on 11/17/2025.
Claim Rejections - 35 USC § 103
Claim 6 is rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Hirose (JP 2006-045366, machine translation) in view of Matsushita (JP 2000-129143, machine translation).
Hirose discloses a composition comprising PHBH (poly(3-hydroxybutyrate-co-3-hydroxyhexanoate) and wood flour (paragraphs 0009 and 0013), wherein the wood flour includes a pulverized bamboo and can pass through a 200 mesh (paragraph 0015). The wood flour is added in an amount of 0.5-100 parts by weight per 100 parts by weight of PHBH (paragraph 0016), i.e., 0.5-50 wt %. Example 2 includes 100 parts by weight of PHBH and 10 parts by weight of wood flour 200 mesh (paragraph 0030), i.e, 9 wt % of bamboo powder and does not include petrochemically derived components, fossil fuel derived components, processing aid, or plasticizer additives. Hirose anticipates the ingredients of the claimed composition and teaches that compositions comprising PHBH and wood flour are ultimately “completely biodegraded” (paragraph 0016). It is therefore inherent that its composition is 100% biodegradable and industrially compostable according to ASTM D6400 like claimed since such properties are evidently dependent upon the nature of the composition used. Case law holds that a material and its properties are inseparable. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Hirose discloses that it is known that wood flour is known to improve strength and refers to JP 2000-129143 (Matsushita) as teaching the same (paragraph 0006).
Hirose fails to explicitly disclose the tensile strength such as claimed greater than 15 MPa.
Matsushita discloses a biodegradable molding material comprising wood flour and teaches that at least 1 wt % of wood flour is added to ensure that it imparts strength (paragraph 0012). Examples 1 and 2 are prepared by mixing polyhydroxybutyric acid with wood flour (paragraph 0017) and have a tensile strength of 341 and 370 kgf/cm2, respectively (Table 1), i.e., about 34 and 37 MPa.
Given that Hirose teaches that strength is improved by adding wood flour such as bamboo flour to a polyhydroxyalkanoate and further given that Matsushita exemplifies a formulation comprising polyhydroxyalkanoate and wood flour provides for tensile strength within the claimed range, it would have been obvious to one of ordinary skill in the art to prepare a composition having tensile strength of greater than 15 MPa.
Claims 1, 3-14, 22, and 24-28 are rejected under 35 U.S.C. 103 as being unpatentable over Oyama (JP 2002-088264, machine translation).
With respect to claims 1, 8, and 25, Oyama discloses a biodegradable resin composition which has “high biodegradability” and “high strength” comprising a biodegradable resin and a fine plant powder obtain by pulverization (abstract). The plant powder is preferably in an amount of 3-30 wt % (paragraph 0015). Oyama teaches that the biodegradable resin includes polyhydroxyalkanoates (paragraph 0018) and that the plant powder includes bamboo (paragraph 0010). Oyama teaches that the plant powder has average particle size of 300 µm or less and can be adjusted to 16 µm or less (paragraph 0012), wherein the smaller particle sizes make the plant powder more susceptible to decompositions by microorganisms but also provides a smaller decrease in strength compared to the biodegradable resin alone (paragraph 0013). The claimed particle range is 500 mesh (maximum size 25 µm) to 2000 mesh (maximum size 5 µm) and therefore overlaps with Oyama’s maximum of 16 µm or less. The examples of Oyama in Table 1 exhibit the highest rating of biodegradability where “almost no shape remains” after 2 weeks in leaf mold (paragraph 0045). Therefore, the composition is expected to be 100% biodegradable and industrially compostable according to ASTM D6400 like claimed. While Oyama teaches adding plasticizers and other additives, these are not required (paragraph 0025) and therefore meet claimed limitation excluding petrochemically derived components, fossil fuel derived components, processing aids, and plasticizer additives.
Oyama fails to disclose an example or a single embodiment with sufficient specificity so as to anticipate the claimed combination of PHA and bamboo powder.
However, case law holds that a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). Therefore, it would have been obvious to one of ordinary skill in the art to utilize polyhydroxyalkanoate as the biodegradable polymer and bamboo as the plant powder having a maximum size of 16 µm or less.
With respect to claims 3 and 4, Oyama does not explicitly disclose that the biodegradable composition comprising bamboo has less concentration of acidic components than a 100% PHA or PLA sample upon benzymatic degradation.
Even so, given that the biodegradable resin composition of Oyama includes bamboo powder which displaces some of the PHA biodegradable resin and further given that bamboo powder is not expected to release as much acid as PHA (i.e., a carboxylic acid based polymer), one of ordinary skill in the art would have expected the claimed reduction.
With respect to claim 5, 800 mesh has a maximum particle size of 15 µm. Oyama’s maximum particle size of the plant powder of 6 µm therefore overlaps with claimed range 800-2000 mesh.
With respect to claims 6 and 26, Oyama teaches that the resin composition has “high strength” (abstract) which is directly related to tensile strength. While Oyama does not explicitly disclose the numerical tensile strength, it would have been obvious to one of ordinary skill in the art to prepare a resin composition having tensile strength greater than 15 MPa given that the property is dependent on the materials used (i.e., PHA and bamboo powder) and Oyama teaches high strength.
With respect to claim 7, Oyama does not teach that PHA or bamboo powder is functionalized with a group that would react with solvents. Therefore, Oyama’s resin composition is expected to be non-reactive with water, dimethicone, glycerin, and/or ethyl alcohol.
With respect to claim 9, Oyama exemplifies a resin composition that is formed into a sheet with a thickness of about 1 mm (paragraph 0030).
With respect to claim 10, Oyama discloses a sheet (paragraph 0030) which is not made from pellets. Even so, the pellets are part of a product-by-process step. Case law holds that even 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.” See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
With respect to claim 11, Oyama teaches that the resin composition is used to make seedling pots (paragraph 0028) which are containers that would be expected to have a thickness of greater than 0.1 mm.
With respect to claims 12 and 13, Oyama teaches that the resin composition has excellent storage stability (paragraph 0027). In Table 1, the inventive examples exhibited “not much change” when immersed in water at 80°C for 24 hours (paragraph 0047).
Given that Oyama teaches excellent storage stability when exposed to water and heat, one of ordinary skill in the art would have expected the article to have a shelf life of greater than 12 or 36 months.
With respect to claim 14, given that both polyhydroxyalkanoate and bamboo powder are natural, they are not toxic. Also, Oyama teaches that the plant powders make the resin composition more susceptible to microorganisms (paragraph 0013). In Table 1, comparative examples 3 and 4 which do not include plant powder have poor biodegradability (paragraph 0048). Therefore, the resin composition is expected to have greater decomposition rate than 100% PHA.
With respect to claim 22, Oyama teaches that a smaller particle size of the plant powder provides more uniformly dispersed resin compositions (paragraph 0022). Therefore, it would have been obvious to one of ordinary skill in the art to form a monolithic article from the resin composition comprising PHA and bamboo powder.
With respect to claim 24, Oyama does not explicitly disclose the density of the resin composition. Even so, given that density is an inherent property to a material, it would have been obvious to one of ordinary skill in the art to prepare an article having claimed resin composition consisting of PHA and bamboo powder and expect a density of at least 1.29 g/cm3.
With respect to claim 27, 1000 mesh has a maximum particle size of 10 µm. Oyama’s maximum particle size of the plant powder of 6 µm or less therefore overlaps with claimed range 1000-2000 mesh.
With respect to claim 28, 2000 mesh has a maximum particle size of 5 µm. Oyama’s maximum particle size of the plant powder of 6 µm or less includes less than 6 µm and therefore closely overlaps with claimed 2000 mesh.
Claims 6 and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Oyama (JP 2002088264, machine translation) in view of Matsushita (JP 2000-129143, machine translation).
The discussion with respect to Oyama in paragraph 6 above is incorporated here by reference.
Oyama discloses that the resin composition exhibits “high strength” (abstract) but fails to disclose the specific tensile strength values greater than 15 MPa.
Matsushita discloses a biodegradable molding material comprising wood flour and teaches that at least 1 wt % of wood flour is added to ensure that it imparts strength (paragraph 0012). Examples 1 and 2 are prepared by mixing polyhydroxybutyric acid with 10 wt % wood flour (paragraph 0017) and have a tensile strength of 341 and 370 kgf/cm2, respectively (Table 1), i.e., about 34 and 37 MPa. It is the examiner’s position that the tensile strength is dependent on the types of materials used.
Given that Oyama and Matsushita are drawn to biodegradable resin compositions having high tensile strength comprising polyhydroxybutyrate and wood powder and further given that Matsushita teaches compositions having tensile strength of 34 and 37 MPa, it would have been obvious to one of ordinary skill in the art to obtain a resin composition having claimed tensile strength of at least 15 MPa.
Response to Arguments
Applicant's arguments filed 11/17/2025 have been fully considered but they are not persuasive. Specifically, applicant argues that it is unexpected to utilize a bamboo powder having high mesh size of 500-2000 to obtain more biodegradable and environmentally friendly while maintaining tensile strength properties compares to smaller mesh size.
It is the examiner’s position that such properties are expected. Specifically, Oyama teaches that the plant powder (which includes bamboo powder) has average particle size of 300 µm or less and can be adjusted to 16 µm or less (paragraph 0012), wherein the smaller particle sizes make the plant powder more susceptible to decomposition by microorganisms but also provides a smaller decrease in strength compared to the biodegradable resin alone (paragraph 0013). The claimed particle range is 500 mesh (maximum size 25 µm) to 2000 mesh (maximum size 5 µm) and therefore overlaps with Oyama’s maximum of 16 µm or less.
Conclusion
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/VICKEY NERANGIS/Primary Examiner, Art Unit 1763
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