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 .
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 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.
Claims 1-11, 13-17, 19-20 are pending. Applicant’s previous election of group I, claims 1-11, 13-17, 19, still applies and claims 20 remain withdrawn.
Response to Amendment
Applicant’s amendment of 09/18/25 has been entered. Applicant's amendment has necessitated new grounds of rejection and the remarks are not persuasive.
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.
Claim 19 is 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. The range in claim 19 is already in claim 17. 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.
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 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.
If this application currently names joint inventors: in considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
When something is indicated as being “obvious” this should be taken as shorthand for “prima facie obvious to one having ordinary skill in the art to which the claimed invention pertains before the effective filing date of the invention”.
When a range is indicated as overlapping a claimed range, unless otherwise noted, this should be taken as short hand to indicate that the claimed range is obvious in view of the overlapping range in the prior art as set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claim(s) 1-11, 13-17, 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cham et al. (U.S. 2022/0032586) in view of the Bioplast 10/2019 NPL document in view of Thibado et al. (U.S. 2021/0395469).
Regarding claims 1-11, 13-17, 19, Cham teaches a packaging film with two outer layers of biodegradable (compostable) resin that serve as printable and/or sealable layers on either side of a core barrier layer of butenediol modified vinyl alcohol copolymer (as in claim 11), with optional adhesive layers between the core layer and the outer layers (see abstract, [0028], [0040], [0042], [0056], [0057], [0061], [0066], [0073]), with the barrier layer and adhesive layers together forming a three layer core system as in claims 7-9. The adhesive layers in Cham, i.e., the fourth and sixth layers of claims 8-10, may be PBAT which is a modified polyolefin (i.e., modified polybutylene) as claimed ([0074]) (this is further obvious in view of Thibado, below). Directly attached to either side of the three layer core system discussed above are the respective first and second outer layer systems, which are respectively constituted by all layers on the first and second sides of the core system (i.e., the claims do not limit how many layers are in the first and second outer layers systems, so any layer that directly contacts the first/second side of the core system may be included in the respective outer layer system to make the overall outer layer system directly contact the corresponding side of the core layer system).
Cham does not disclose that the outer printable/sealable layers are formed of a starch polymer thermoplastic bioresin. However, the bioplast NPL document shows that the same resin of the present disclosure that corresponds to claims 6 and 16 was known to be beneficial by being biodegradable, easily processed, having a low water vapor permeability, printable, sealable and suitable for using in packaging, such that it would have been obvious to have used such a material for the outer printable/sealable layers of Cham because the material has the above beneficial properties. Such a material is inherently a starch resin as claimed, and resists permeation as in claims 5, 15, 17, under the conditions of claims 17 and 19.
Modified Cham does not disclose that the outer bioplast resin layers are formed as three bioplast resin layers, respectively, (as in claims 3, 4, 13 and 14) however the claims do not recite any difference between these respective three layers (i.e., they may be made of the same bioplast resin) such that the stack of three identical layers is not patentably distinct from a single thicker layer formed of the same material, because in either case the final article will have the same overall thickness of the same overall material.
Modified Cham does not disclose that the BVOH core/barrier polymer has the properties of claims 1 and 2 and 17. However, Thibado is also directed to biodegradable packaging films and teaches that the same barrier layer material as in the present application (similar to the barrier material suggested in Cham, and inherently water soluble as in claims 1 and 2 and 17) was known to provide the desired biodegradeable barrier properties of Cham (see abstract, [0079]) such that it would have been obvious to have used the particular barrier material of Thibado in modified Cham because Thibado shows that it provide the desired functionality (i.e., biodegradable barrier) for the same overall application (packaging film). Thibado also discloses a suitable adhesive material (inherently as in claim 10, based on the present examples) for adhering the core barrier layer to adjacent outer layers (see abstract, [0079]) such that it would have additionally been obvious to have used this adhesive material for the fourth and sixth layers as claimed in Cham because Thibado teaches that they provide the desired functionality (biodegradable adhesive) for packing films.
The above film, and all the individual layers therein, is inherently resistant to water and oxygen permeation to at least some extent at the claimed temperature/humidity ranges and is compostable at a second temperature/humidity range, as in claims 1 and 17. It is further noted that the claims place no limit on the time for composting or the degree of decomposition required to qualify as composted, nor is there any upper limit on the temperature/humidity for composting conditions.
Response to Arguments
Applicant’s remarks are moot in light of the new grounds of rejection which were necessitated by Applicant's amendment. Remarks which are still deemed relevant are addressed below and are not persuasive.
Applicant argues that Cham requires water insoluble polymers in the core layer. First, the polymers cited by Applicant in this regard are not required. Second, Applicant provides no evidence that such polymers are insoluble. Third, the claims do not require that the layer is completely water soluble.
Cham is not limited to beverage packaging, though the product set forth in the rejection above would not be unsuitable for such a use anyway because the water soluble layer is a core layer.
Applicant argues that it would not be obvious to modify the combination of reference to achieve the claimed compostability. This is not necessary because the layers are explicitly disclosed as being compostable and are made of the same materials as in the present application and the composting conditions are still open ended as claimed. Applicant’s remarks related to storage conditions are without evidence and are not required in the prior art anyway.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 extension fee 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 date of this final action.
References cited in any corresponding foreign applications have been considered but would be cumulative to the above. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL B NELSON whose direct telephone number is (571)272-9886 and whose direct fax number is (571)273-9886 and whose email address is Michael.Nelson@USPTO.GOV. The examiner can normally be reached on Mon-Sat, 7am - 7pm.
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, Callie Shosho can be reached on 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300 (faxes sent to this number will take longer to reach the examiner than faxes sent to the direct fax number above).
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/MICHAEL B NELSON/
Primary Examiner, Art Unit 1787
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