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 their response dated 6/9/2026 the applicants argued that neither Mentnik (US 2011/0086949) or Rosen (US 2015/0125639) disclose a plasticizer-free composition. Applicant’s arguments with respect to the two references are not persuasive for following reason:
Rejection over Mentnik,
Examiner agrees, that Mentnik discloses plasticizer, however that does not mean that the plasticizer is a required component. The Abstract of Mentnik states that the composition comprises 50-99.95 wt.% of starch and 0.05-50 wt.,% of nanofiller. These two components are required. If fact applicants independent claim is so broad that the only required component is a polymer. While in [0009] which is background of the invention Mentnik discloses use of plasticizers in amount of 15-25 wt.% the paragraph is followed by [0010] which states that plasticizing starch with above plasticizers level, the resulting properties are mediocre as materials obtained are highly viscous and very easily damaged. This is followed by several paragraphs that disclose negative aspects of the plasticized starch including lack of the compatibility with synthetic polymers [0014].
Mentnik further states in [0027] that his invention overcomes the drawbacks of the plasticized starch by including nanoparticles and nonamylaceous polymer such as PLA [0035]. This is followed by statement that plasticizers can be utilized but they are optional [0051].
In fact independent claim 26 of Mentnik discloses composition comprising 50-99.5 of polymer comprising starch and 0.05-50 wt.% of nanofiller. While examiner agrees that there are examples that are directed to using plasticizers, that even if it is preferred embodiment, such does not teach away from the rest of the disclosure which only comprises starch, polymer and nanofiller. This basic combination is indeed taught and claimed by Mentnik.
While applicants argue that claim 26 does not teach plasticizer but it does not exclude one either. Applicants are correct, since term “comprising” can include other components such as plasticizers listed in the dependent claims. However, it also does not mean that plasticizer has to be used which is further described in [0051] where the reference clearly states that plasticizers are optional.
It should also be noted that instant invention while indicating that the composition is plasticizer-free it does teach use of stiff polymers blended with polymers that have glass transition of less than 0oC. [0141]. While these polymers are not called plasticizers, they do impart plasticity into composition because polymers with such glass transition temperature are already flexible at room temperature and below. Similarly they will reduce Tg of the blend so in a way, the composition is still technically “plasticized”.
Rejection over Rosen:
Prior art of Rosen discloses composition (claim 1) that comprises biodegradable polyester, starch, filler and binding agent. There are no plasticizers recited in his claim or disclosure. It is examiner’s position that applicants read into teachings of Rosen aspects that are not substantiated by the prior art. Specifically, applicant indicated that Rosen teaches water as plasticizer which is indicated by melting polyester and starch in twin screw extruder to 180oC, wherein the extruder comprises air venting and/or degassing.
The examiner agrees that the air vents in extruder are added to remove air, moisture and volatile material before extrusion, however this by no means is an indication of adding plasticizers. Applicants appear to interpret ambient moisture in the air as plasticizer, which is not a component that is purposefully added to the composition. If ambient moisture is what applicants view as plasticizer, then the same will be true for applicant’s own invention. Air inherently contains moisture regardless the location. The content of moisture depends on several aspect, one of which is humidity in the air. The applicants will inherently have moisture in their premix unless their composition is mixed in inert atmosphere (in absence of air). Such inert atmosphere is not recited in applicants’ specification as originally filed. In other words, applicants’ composition will also inherently include moisture and therefore plasticizer.
Rejection over Mentnik or Rosen in view of Chen, was not argued.
With respect to applicant argument directed at the skin layer:
Applicants indicated that claim 306 is specifying the physical form in which the composition exists, This including physical limitations on the composition.
Examiner disagrees. Composition as defined in independent claim is a pre-mixture not a film or skin layer. Consequently using composition as a skin layer is in fact an intended use. Applicant’s own specification states that the pre-mixture has to be processed with carrier polymer to form test samples and extrusion blown film [0112-0113] it is implied by the fact that applicants test pieces are molded. Consequently the pre-mix is not the same composition as the final test piece [0166-0167]. Skin layer [0017] is in fact part of the multilayer label which is not the same as composition pre-mix. Consequently, instant claims are read that the pre-mix is capable of making skin layer. Claims directed to composition define applicants pre-mix not the structural aspect of that composition once it is molded. In this case the limitation of skin layer, links the claim to specific use or purpose as such article limitations are intended use.
In summary applicants’ arguments are not persuasive and rejections of record are not overcome.
Claim Interpretation
Instant claim 286 is directed to a compostable composition comprising 75-99% of plasticizer free, biodegradable polymer which contains natural potato starch and other biologically sourced polymer, wherein term “other” includes any polymer that is sourced from biological resources, and these days that also includes olefins.
Claim 286 also contains “up to 20% by weight of coloring additive” wherein “up to” only discloses upper range, as such lower range can also be zero.
Claim 286 also contains “up to 5% by weight of anti-blocking agent” wherein “up to” signifies upper range, as such lower range can also be zero.
Claims are directed to a home compostable composition, as such the only required limitation is that the composition be compostable but its use is unlimited.
Instant claims 306-310 recite that the composition is in a form of a skin layer (claim 306) wherein claims 307-309 disclose properties of the skin layer such as thickness and opacity. This renders skin layer an article, which is an intended use of the composition disclosing properties once made into a layer. Claim 310 further includes other structural limitation which include core layer and compostable label. The claims while definite fail to narrow the scope of the composition as they are directed to the intended use. In this case, the patentable weight is given to a composition and not to the article that is to be made.
With respect to claim 320 “less than 15 wt.% of stiff polymer” includes zero.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 306-310 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Rejection of claims 306-310 from previous office action is incorporated here by reference. The claims were rejected for failing to further limit the scope of independent claim 286. Specifically, the claims are directed to a skin layer which is an article that has specific opacity and is part of the label that comprises additional core layers. These claims are not directed to limitations that will narrow down the scope of the composition. These are article claims which are viewed as intended use.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 286-290, 309-315, 318-320 are rejected under 35 U.S.C. 102(a)(1) or 102(a)(2) as being anticipated by Mentnik (US 2011/0086949).
With respect to claims 286, 287, 290, 311-313, Mentnik discloses a composition comprising (measured on dry basis):
PNG
media_image1.png
376
432
media_image1.png
Greyscale
Starch of Mentnik is granular starch defined as a native starch or starch that is modified to have properties as natural starch [0082].
Starch can be selected from grain starch and tuber starch wherein tuber starch is potato or cassava [0083].
Wherein nanomeric product includes lamellar clay [0126] wherein cationic polymer is utilized to intercalate and exfoliate the clays [0127] wherein clays are anti-blocking agents. Other nanoparticulates include silica, talc and zeolites, also good anti-blocking agents [0142]. Mixture of the nanomeric products is also defined to contain metal oxides, such as titanium dioxide, aluminum oxide and the like which are also known for its properties as pigments [0140]. In any event the content of the pigment for the purpose of claim 286 can also be zero as stated in the claim interpretation.
With respect to claims 288 and 290, Mentnik discloses preferred nonamylaceous polymer c as polymer made from carbon renewable origin [0155] and include PBAT, PBSA and the like [0153] as such all polymers listed in the paragraphs are either biodegradable and sourced from natural resources.
With respect to claims 309-310, as mentioned above, patentable weight is given to the composition and not its intended use. As such claims are rejected over Mentnik because they do not further narrow the scope of the independent claim 286, therefore the composition of claim 286 is the only limitation that has to be met. The composition of Mentnik is capable of making films.
With respect to claim 314, the composition of Mentnik can have a glass transition temperature as low as -50oC [0216].
With respect to claims 315, 318, 319, polymers such as PBAT is utilized in amount of at least 50% by weight [0156], claim 319 is rejected because Mentnik as shown above discloses that the polymers other than starch are made from natural resources consequently the entire carbon content is bio-sourced.
With respect to claim 320, composition disclosed above does not teach stiff polymer.
Claims 286-288, 306-313, 316, 318-320 are rejected under 35 U.S.C. 102(a)(1) or 102(a)(2) as being anticipated by Rosen (US 2015/0125639).
With respect to claim 286, 287, 290, 311, 316, Rosen teaches following composition comprising 30-50% by weight of biodegradable polymer and 20-40% by weight of starch that is sourced from corn, potatoes or sunflower (Abstract). The two ingredients make the composition biodegradable of compostable. Composition comprises further 0.5-1.5 % by weight of silica or calcium oxide which are also known for their anti-blocking properties [0018]. Iron oxide utilized in amount of 0.1-0.2% by weight is also used as pigments [0019]. Total polymeric content is 50-90% by weight based on the upper and lower ranges for both starch and biodegradable polymer.
With respect to claim 288, Rosen does not teach PLA meeting content of less than 5%.
With respect to claims 306-310, the composition recited in these claims is the composition of independent claim 286, which is met. The limitations directed to skin, layer, core, label and opacity are non-limiting because these claims are directed to intended us and the article made from the composition.
With respect to claim 311, the total weight of the polymeric material in Rosen is 50-90 wt.% based on the ranges disclosed in Abstract.
With respect to claim 312, the composition disclosed does not require plasticizer.
With respect to claim 313, the two polymers are non-cellulosic. The biodegradable polymer includes PHA, PHB, PLC [0051].
With respect to claim 316, when one starch is utilized, its content will encompass the claimed range of 24-40% by weight (see abstract).
With respect to claims 318 and 319, the polymer of Rosen are natural polymers from renewable resources [0061] wherein only 30-50% of the composition may come from non-renewable resources.
With respect to claim 320, Rosen does not disclose any stiff polymers.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 289 and 290 are rejected under 35 U.S.C. 103 as being unpatentable over Mentnik (US 2011/0086949) or Rosen (US 2015/0125639) in view of Chen (US 2016/0253927).
Discussion of Mentnik from paragraph 1 of this office action or discussion of Rosen from paragraph 2 of this office action is incorporated here by reference.
In summary both Mentnik and Rosen disclose compositions comprising starch and a biodegradable polymer, wherein both disclose potato starch. While both references teaches use of components such as clays or inorganic oxides, the references need further clarification with respect to anti-blocking properties and pigment properties.
Chen discloses compostable composition comprising starch and biodegradable polymer provides a deeper dive into antiblocking agents and pigments.
Antiblocking agents such as silica or diatomaceous earth utilized in amount of 2-10 % by weight, are utilized based on the purpose of the composition. Use of anti-blocking agents results in smoother processing, better performance and higher quality products. The compounds like silica or clays were disclosed in both Mentnik or Rosen, but their properties as anti-blocking agents were not explicitly recited. However, since compounds and their properties are mutually exclusive, silicas and other compounds would also serve as antiblocking agent in any composition. The
The courts have held that “a compound and all its properties are mutually inseparable”, In re Papesch, 315F.2d 381, 137 USPQ 42, 51 (CCPA 1963). Further, attention is drawn to MPEP 2112.01, which states that “products of identical chemical composition cannot have mutually exclusive properties. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.”, In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
With respect to claims 289 and 290, Chen further discloses additional component which is a pigment. Coloring additives are well known in the art and impart color to the final product. Coloring additive, specifically titanium dioxide imparts white color [0042]. Chen further discloses that coloring agents are also utilized in starch based composition to impart opacity. Chen discloses tradenames such as Pigment White 6 or CI77891, which also utilizes carrier resin to facilitate incorporating pigment into polymeric component. Wherein to achieve desired opacity, the content of titanium dioxide is in a range of 1-10 % by weight or 1-20% by weight [0055].
In the light of the above disclosure it would have been obvious to one having ordinary skill in the art at the time instant invention was filed to utilize pigment of Chen and still obtain instant invention. Chen discloses use of pigments, which impart color properties to the starch based composition, and in case of titanium dioxide it is opacity. Incorporating such pigment into the composition of Mentnik or Rosen would also improve aesthetic properties, wherein the composition can have a desired color or opacity.
Claim 316 is rejected under 35 U.S.C. 103 as being unpatentable over Rosen (US 2015/0125639) in view of Mentnik (US 2011/0086949)
Discussion of Rosen from paragraph 2 of this office action is incorporated here by reference. Rosen discloses composition comprising starch and biodegradable polymers; however, Rosen fails to provide one of ordinary skill in the art any options as to what the biodegradable polymer can in other than PHA or PHB disclosed therein.
Starch based composition are made so that the end use article can be decomposed, without leaving any environmental impact.
Mentnik discloses a version of such composition wherein the composition comprises starch such as potato starch and biodegradable polymer. The polymers of Mentnik include already taught polymers of Rosen which include PHA and PHB [0013] but also PBAT, PCL, PVA or PVOH. Each one of them are bio-sourced and will not adversely affect biodegradability of the articles of Rosen.
In the light of the above disclosure, it would have been obvious to one having ordinary skill in the art at the time instant invention was filed, to utilize other biodegradable polymers well known in the art and still obtain claimed invention. Utilizing polymer such as PBAT in lieu of PHA will still allow the end product to decompose.
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATARZYNA I KOLB whose telephone number is (571)272-1127. The examiner can normally be reached M-F.
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, Mark Eashoo can be reached at 5712701046. 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.
/KATARZYNA I KOLB/Primary Examiner, Art Unit 1767 July 1, 2026
Prosecution Insights