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 .
Response to Arguments
In response to the non-final Office Action (dated 6 November 2025) the Applicant submits the following:
-- Claims 1 and 10 have been amended to establish the new limitation of “…the polyethylene component being present in amounts greater than the remaining components of the composition and serves as the base resin.”
-- Claims 2, 9 & 12 were grammatically amended.
The arguments provided by the Applicant have been fully considered but are moot in view of the new grounds of rejection presented below.
This rejection is FINAL.
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.
Claims 1, 2 & 4-15 rejected under 35 U.S.C. 112(a) 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.
Regarding claim 1, the amended independent base claim 1 now contains the limitation of “…the polyethylene component being present in amounts greater than the remaining components of the composition and serves as the base resin” (Claim 1, lines 11-12). Contrary to what Applicants state, paragraph [0057] of the patent publication does not provide the subject matter to establish said limitation and further, nothing has been found in the specification to indicate this limitation.
Therefore, claim 1 is rejected for the introduction of new matter. See MPEP §§ 2163.06 & 608.04.
Regarding claims 2 & 4-15, said claims all depend from claim 1 either directly or indirectly. Said claims also inherit all limitations from claims which they depend upon and are thus, similarly rejected.
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.
Claims 1, 2 & 4-15 are rejected under 35 U.S.C. § 112(b) for being indefinite.
Regarding claim 1, the amended independent base claim 1 now introduces indefiniteness into the claims. It’s unclear whether polyethylene is contained in the composition in a greater amount than the total amount of remaining components (for instance, 51% PE, 25% biodegradable resin & 24% PBAT, resulting in 51% PE & 49% remaining components), or if polyethylene must be present in amounts greater than individual amounts of the remaining components (for instance, 34% PE, 33% biodegradable resin, & 33% PBAT, resulting in 34% PE & 66% remaining components).
Furthermore, the scope of ‘remaining components’ is indefinite. The claim language utilizes ‘comprising’ and is thus open to include other components in addition to PE, biodegradable resin & PBAT. It is not possible to determine whether PE must be present in amounts greater than only the biodegradable resin and PBAT, or if it must be present in amounts greater than all other components encompassed by the term ‘comprising’.
Claim 1 is further rejected under 35 U.S.C. § 112(b) over the phrase ‘base resin’ (Claim 1, line 12). The phrase is not defined in the specification and does not have a consistent accepted meaning in the art. Most importantly, the phrase would not be understood by those of ordinary skill in the art to impart the meaning relied upon in the Applicant’s arguments. Furthermore, it is not possible to determine if said phrase serves to further limit the amount &/or chemical nature of the claimed polyethylene.
Regarding claims 2 & 4-15, said claims all depend from claim 1 either directly or indirectly. Said claims also inherit all limitations and indefiniteness from claims which they depend upon and are thus, similarly rejected.
Conclusion
THIS ACTION IS MADE FINAL. 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 CHRISTIAAN ROELOFSE whose telephone number is (571)272-2825. The examiner can normally be reached Monday-Friday 8:00-4:00 EST.
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, Robert Jones can be reached at (571)270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/CHRISTIAAN ROELOFSE/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
Prosecution Insights