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
Examiner acknowledges applicant’s request for continued prosecution filed 2/18/2026. Pending claims are 286-320, claims 291-305 are withdrawn from consideration. Claims 286-290 and 306-320 are pending.
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 and 312 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.
Claim 312 discloses a composition that is a mixture of natural potato starch and other biologically sourced polymer and is free of plasticizers. This limitation is already included in independent claim 286.
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 following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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):
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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.
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 o f 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.
Response to Arguments
Applicants arguments submitted on 2/18/2026 are considered moot. The rejections of record are restated in a manner that reflects the claims. Specifically, as a composition not a label. The new rejection also take better position on the optional components for claim 286 which include antiblocking agent and coloring additive, as well as position that potato starch does not have any specific content other than the content of all the polymers, wherein potato starch may only be used in small amounts.
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.
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/KATARZYNA I KOLB/Primary Examiner, Art Unit 1767 March 10, 2026