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 .
Election/Restrictions
Claims 15, 26 and 27 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group or species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on May 15, 2025.
Claim Rejections - 35 USC § 112
Claims 1-6, 9, 11, 13, 14, 16 and 19-24 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.
In claim 1, it is unclear what is meant by a “support” polymer since its supporting function is not apparent.
In claim 6, line 2, there is no express antecedent basis from claim 1 for the presence of “water”.
In claim 24, the metes and bounds of the subjective “low” melting point are indefinite as to scope. How low is “low”?
In claim 24, there is no express antecedent basis for “the composition of” the masterbatch.
Claim Rejections - 35 USC § 103
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.
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 1-3, 5, 9, 11, 13, 14, 16 and 19-24 are rejected under 35 U.S.C. 103 as being unpatentable over US 2018/0142097 (Guemard) as evidenced by US 2019/0316061 (Fuchs).
Guemard discloses a composition comprising:
at least one polyester inclusive of polylactic acid (PLA) and polybutylene succinate adipate (PBSA) [0070] (meets Applicants’ support polymer);
an enzyme solution (meets Applicants’ enzymatic solution) optionally mixed with a stabilizing component such as dextrin or starch [0064] (meets Applicants’ polysaccharide);
at least one additional natural polymer inclusive of polysaccharides such as starch [0031] (meets Applicants’ polysaccharide); and
at least one filler (not precluded from present “comprising” claims) (e.g., abstract, [0009-0012], [0031], [0063-0064], [0070-0072], [0076-0097], [0102-0123], examples, claims).
Illustratively, Guemard expressly exemplifies (Example 1) the production of a composition comprising the steps of:
(a) pre-mixing the enzyme solution Savinase 16L (as evidenced by Fuchs [0627]) (meets Applicants’ enzymatic solution) with stabilizing dextrin (meets Applicants’ polysaccharide) and drying, wherein said components would necessarily have been separately introduced into a mixing vessel either simultaneously or consecutively at a temperature less than the melting temperature of the PLA;
(b) combining the enzyme/dextrin pre-mixture with PLA (meets Applicants’ support polymer) in an extruder;
(c) mixing the components; and
(d) recovering the composition PLA.
In essence, claim 1 differs from Guemard’s exemplified method in that the enzyme solution and polysaccharide at pre-mixed in the same mixer as used to introduce the polymer. It would have been within the purview of one having ordinary skill in the art to pre-mix Guemard’s enzyme solution and dextrin in the same mixer as used to introduce the PLA, in the interest of efficiency, e.g., time-savings and minimize number of mixing vessels, with the reasonable expectation of success. Case law holds that selection of any order of performing process steps or mixing ingredients is prima facie obvious, in the absence of new or unexpected results, Ex parte Rubin, 128 USPQ 440, In re Gibson, 5 USPQ 230.
As to claim 2, the selection of any order of mixing ingredients is prima facie obvious, in the absence of new or unexpected results. Thus, it would have been within the purview of one having ordinary skill in the art to separately introduce Guemard’s enzyme solution and dextrin simultaneously, versus consecutively, with the reasonable expectation of success
As to claim 3, Guemard expressly exemplifies the polysaccharide dextrin [0145].
As to claim 5, it is within the purview of Guemard’ inventive disclosure [0064][0035], and obvious to one having ordinary skill in the art, to use enzyme aqueous solutions.
As to claim 9, given that Guemard necessarily mixes the enzyme solution and the polysaccharide at a temperature less than the melting temperature of the PLA (e.g., ~150°C) to form the enzyme formulation, it would have been within the purview of one having ordinary skill in the art to conduct said mixture at any temperature below the melting temperature of PLA inclusive of that presently claimed with the reasonable expectation of success.
As to claim 11, it is within the purview of one having ordinary skill in the art to carry out the preparation of the enzyme formulation as rapidly as possible (inclusive of presently claimed mixing time) in the interest of time efficiency with the reasonable expectation of success.
As to claim 13, it is within the purview of Guemard’s inventive disclosure [0107], and obvious to one having ordinary skill in the art, to use the polyester in a partially or totally molten state with the reasonable expectation of success.
As to claim 14, Guemard expressly exemplifies PLA [0142].
As to claim 16, Guemard discloses a mixing time of between 5 seconds to 3 minutes, preferably less than 1 minute [0111], depending on the melting temperature of the polyester. Thus, it would have been obvious to one having ordinary skill in the art to carry out the mixing of the polyester within the presently claimed time range with the reasonable expectation of success.
As to claims 19 and 20, Guemard expressly exemplifies calcium carbonate [0146].
As to claim 21, Guemard expressly exemplifies an extruder [0148].
As to claim 22, Guemard discloses the use of extruders having a main hopper and several successive heating zones wherein the components may be added at different times and temperatures during the process [0114]. Thus, it would been within the purview of one having ordinary skill in the art to use an extruder with at least four zones to enable the successive addition of the various components with the reasonable expectation of success.
As to claim 23, Guemard expressly exemplifies the production of a granulated composition [0149].
As to claim 24, the presently claimed contents fall within the purview of Guemard’s inventive disclosure (e.g., Table 1) and, as such, would have been obvious to one having ordinary skill in the art in accordance with the ultimate properties desired. Case law holds that differences in concentrations do not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating criticality for the claimed ranges. “Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation”, In re Aller, 105 USPQ 233.
Claims 4 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over US 2018/0142097 (Guemard ‘097) as evidenced by US 2019/0316061 (Fuchs) described hereinabove in view of US 2020/0190279 (Guemard ‘279).
As to claim 4, it is within the purview of the inventive disclosure of Guemard ‘097 to use polysaccharide stabilizing components, which implicitly include natural gums such as gum arabic. In this regard, Guemard ‘279 discloses starch derivatives and natural gums, e.g., gum arabic, as functional polysaccharide stabilizing carrier alternatives for similar-such liquid enzyme formulations (e.g., [0025], [0038]). Thus, the use of gum arabic in place of the exemplified starch stabilizing component used by Guemard ‘097 would have been obvious to one having ordinary with the reasonable expectation of success.
As to claim 6, given the content descriptions per the similar-such disclosure in Guemard ‘279 (e.g., Table 1), it would have been obvious to use an enzyme formulation in Guemard ‘097 meeting the presently claimed polysaccharide/enzyme/water contents with the reasonable expectation of success.
Response to Arguments
Applicant's arguments and amendments filed October 09, 2025 have been fully considered but they are not persuasive in overcoming the 35 USC 103 rejections based on US 2018/0142097 (Guemard).
Applicants’ argument that claim 1 differs from Guemard in that the enzyme solution is introduced on one side of the mixer and the polysaccharide on the other part is not commensurate in scope with claim 1, which does not require introducing the enzyme solution and the polysaccharide in separate parts of the mixer, just that they be introduced as separate components. While in Guemard the enzyme and polysaccharide are pre-mixed before being introduced into the mixer to prepare the masterbatch, it would have been within the purview of one having ordinary skill in the art to pre-mix Guemard’s enzyme solution and dextrin in the same mixer as used to introduce the PLA, in the interest of efficiency, with the reasonable expectation of success. Case law holds that selection of any order of performing process steps or mixing ingredients is prima facie obvious, in the absence of new or unexpected results, Ex parte Rubin, 128 USPQ 440, In re Gibson, 5 USPQ 230. Contrary to Applicants’ contention, the technical effect of this difference is not apparent in any of the specification experimental data. That is, there is no evidence demonstrating that pre-mixing the enzyme solution and polysaccharide in a separate mixing vessel, i.e., not the same mixer in which the polymer is introduced, versus pre-mixing them in the same mixer provides any unusual or unexpected results.
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 Ana L Woodward whose telephone number is (571)272-1082. The examiner can normally be reached M-F 8am-5pm.
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/ANA L. WOODWARD/Primary Examiner, Art Unit 1765