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 .
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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claims 1-15 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, 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.
Claims 1, 11, 15 have been amended to recite the limitation “a tensile strength at least about 1.5 times greater than the tensile strength of the polymeric matrix of the biodegradable plastic polymer”, which has not been discussed or supported by the specification. It is noted that paras. 11 and 12 state that the tensile strength of the fiber is greater than the polymer matrix, there is no discussion on it being “at least 1.5 times greater”.
Claims 1, 11, 15 have been amended to recite the limitation of “a bio-derived wax and having at least some of the bio-derived wax distributed within an internal structure of the fiber to have a surface energy…” which has not been discussed or supported in the specification. It is noted that the specification, paras. 154-155, discuss that fiber maybe be infused or permeated with wax, but does not recite the degree of the infusion or permeation nor does it discuss any internal structure of the fiber.
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.
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.
Claims 1-7, 9, 10 are rejected under 35 U.S.C. 103 as being unpatentable over Mohanty (US20120071591, herein Mohanty), in the view of Desrosiers (US20170241070, herein Desrosiers), as evidenced by Patel, Journal of the Mechanical Behavior of Biomedical Materials Volume 96, August 2019, Pages 1-8; Muniyasamy, Journal of Renewable Materials 2016, 4(2), 133-145; Zytner, ACS Omega 2020 5 (25), 14900-14910; Ribeiro, Sustainability 2023, 15(12), 9610; Sauvageon, Textile research journal, 2018, 88(9), 1047.
Regarding Claims 1, 4-7, 9, Mohanty teaches trash cans [0072], reads on container, comprising: poly(3-hydroxybutyrate-co-3-hydroxyvalerate) (PHBV) [0016] reads on the biodegradable plastic polymer. Evidence Ref Zytner teaches PHBV tensile strength 41.7 MPa. Evidence Ref Patel teaches the PHBV has the elastic modulus of 3 Gpa [P2; Table 1], lies in the claimed range. Evidence Ref Muniyasamy teaches PHBV biodegradation 90% [P133; Abstract].
Mohanty teaches hemp [0066], reads on the bio-derived fiber, wherein, the hemp has fiber dimension of average 13–15 mm long with a diameter between 15 and 20 µm [Evidence Ref_ Sauvageon, P1047, Right Column, Para. 1], and modulus of elasticity was (92.44-7.44) to (92.44+7.44) GPa, the mean of tensile strength was (564.98-167.03) to (564.98+167.03) MPa [Evidence Ref_ Ribeiro, Sustainability 2023, 15(12), 9610, Abstract], therefore, the tensile strength of the hemp fiber is more than 9.52 times of PHBV as set forth above, and the elastic modulus of hemp fiber is greater than the elastic modulus of the PHBV. Mohanty is silent on the bio-derived fiber infused with a bio-derived wax to have a surface energy of from about 45 mJ/m2 to about 50 mJ/m2, however, Desrosiers teaches the beewax based formulation infuse the natural fibric [0014; 0055], including hemp [0050], collectively matches “the bio-derived wax may include beeswax” [Instant App. Spec. P16; 0078]; “According to an example, the bio-derived fiber infused with the bio-derived wax may include a hemp fiber.” [Instant App. Spec. P16; 0076], hence, the specifically taught beeswax and hemp, can lead to the beeswax distributed to hemp fiber with certain degree, into the internal structure of the hemp fiber, moreover, the specificity of the beeswax and the hemp fiber can further lead to the hemp infused beeswax with claimed surface energy range. Mohanty and Desrosiers are both considered to be analogous to the claimed invention because they are reasonably pertinent to the problem faced by the inventor, that of using the hemp-based cellulose for container manufacturing with moldable, compostable and rigidity features. It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Mohanty and add the teachings of Desrosiers, and provide the beewax based formulation infuse the natural fibric [0014; 0055], including hemp [0050], and further apply into the composition formation. Doing so would lead to the desired property of the storage container is rigid enough to maintain their shape [0013] and compostable [0013] and with moldability [0064], indicates the product of container with the properties of rigidity, with moldability, and suitable for composting.
Regarding Claims 2, 3, 10, the Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Mohanty and Desrosiers teach all of the claimed ingredients, in the claimed amounts, and Mohanty teaches the composition as being made by a substantially similar process as of injection molding [0070]. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself, wherein, the instant application discloses injection molding [Instant App. US20230125125; 0179]. Therefore, the claimed effects and physical properties, i.e. the tensile strength, elastic modulus, water contact angle would necessarily arise from a composition with all the claimed ingredients and amounts. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Mohanty (US20120071591, herein Mohanty), and Desrosiers (US20170241070, herein Desrosiers) as applied in claim 7, and in the further view of Mentink (US20110196071, herein Mentink).
Regarding Claim 8, Mohanty and Desrosiers teach the container as set forth above in claim 7. Mohanty is silent on the hemp fiber concentration. However, Mentink teaches “additional polymer, hemp” [0142] in the range of “2 and 40%” [0139] overlaps the claimed range. Mohanty and Mentink are both considered to be analogous to the claimed invention because they are reasonably pertinent to the problem faced by the inventor, that of using the hemp-based composition for container manufacturing via injection molding toward biodegradation and sustainability. It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Mohanty and add the teachings of Mentink, and provide the “additional polymer, hemp” [0142] in the range of “2 and 40%” [0139], and further apply into the composition formation. Doing so would lead to the product of container [0197] toward biodegradation and sustainability.
In the case where the claimed ranges "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). See MPEP § 2144.05.
Claims 11, 12, 13 are rejected under 35 U.S.C. 103 as being unpatentable over Mohanty (US20120071591, herein Mohanty), in the view of Desrosiers (US20170241070, herein Desrosiers), as evidenced by Patel, Journal of the Mechanical Behavior of Biomedical Materials Volume 96, August 2019, Pages 1-8; Muniyasamy, Journal of Renewable Materials 2016, 4(2), 133-145; Zytner, ACS Omega 2020 5 (25), 14900-14910; Ribeiro, Sustainability 2023, 15(12), 9610; Sauvageon, Textile research journal, 2018, 88(9), 1047.
Regarding Claims 11, 13, Mohanty teaches trash cans [0072], reads on container, comprising: poly(3-hydroxybutyrate-co-3-hydroxyvalerate) (PHBV) [0016] reads on the biodegradable plastic polymer. Evidence Ref Zytner teaches PHBV tensile strength 41.7 MPa. Evidence Ref Patel teaches the PHBV has the elastic modulus of 3 Gpa [P2; Table 1], lies in the claimed range. Evidence Ref Muniyasamy teaches PHBV biodegradation 90% [P133; Abstract].
Mohanty teaches hemp [0066], reads on the bio-derived fiber, wherein, the hemp has fiber dimension of average 13–15 mm long with a diameter between 15 and 20 µm [Evidence Ref_ Sauvageon, P1047, Right Column, Para. 1], and modulus of elasticity was (92.44-7.44) to (92.44+7.44) GPa, the mean of tensile strength was (564.98-167.03) to (564.98+167.03) MPa [Evidence Ref_ Ribeiro, Sustainability 2023, 15(12), 9610, Abstract], therefore, the tensile strength of the hemp fiber is more than 9.52 times of PHBV as set forth above, and the elastic modulus of hemp fiber is greater than the elastic modulus of the PHBV. Mohanty is silent on the bio-derived fiber infused with a bio-derived wax to have a surface energy of from about 45 mJ/m2 to about 50 mJ/m2, however, Desrosiers teaches the beewax based formulation infuse the natural fibric [0014; 0055], including hemp [0050], collectively matches “the bio-derived wax may include beeswax” [Instant App. Spec. P16; 0078]; “According to an example, the bio-derived fiber infused with the bio-derived wax may include a hemp fiber.” [Instant App. Spec. P16; 0076], hence, the specifically taught beeswax and hemp, can lead to the beeswax distributed to hemp fiber with certain degree, into the internal structure of the hemp fiber, moreover, the specificity of the beeswax and the hemp fiber can further lead to the hemp infused beeswax with claimed surface energy range. Mohanty and Desrosiers are both considered to be analogous to the claimed invention because they are reasonably pertinent to the problem faced by the inventor, that of using the hemp-based cellulose for container manufacturing with moldable, compostable and rigidity features. It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Mohanty and add the teachings of Desrosiers, and provide the beewax based formulation infuse the natural fibric [0014; 0055], including hemp [0050], and further apply into the composition formation. Doing so would lead to the desired property of the storage container is rigid enough to maintain their shape [0013] and compostable [0013] and with moldability [0064], indicates the product of container with the properties of rigidity, with moldability, and suitable for composting.
Regarding Claim 12, Regarding to the water contact angle, tensile strength, the Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Mohanty and Desrosiers teach all of the claimed ingredients, in the claimed amounts, and Mohanty teaches the composition as being made by a substantially similar process as of injection molding [0070]. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself, wherein, the instant application discloses injection molding [Instant App. US20230125125; 0179]. Therefore, the claimed effects and physical properties, i.e. the water contact angle, tensile strength would necessarily arise from a composition with all the claimed ingredients and amounts. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Mohanty (US20120071591, herein Mohanty), and Desrosiers (US20170241070, herein Desrosiers) as applied in claim 11, and in the further view of Mentink (US20110196071, herein Mentink).
Regarding Claim 14, Mohanty and Desrosiers teach the container as set forth above in claim 11. Mohanty is silent on the hemp fiber concentration. However, Mentink teaches “additional polymer, hemp” [0142] in the range of “2 and 40%” [0139] overlaps the claimed range. Mohanty and Mentink are both considered to be analogous to the claimed invention because they are reasonably pertinent to the problem faced by the inventor, that of using the hemp-based composition for container manufacturing via injection molding toward biodegradation and sustainability. It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Mohanty and add the teachings of Mentink, and provide the “additional polymer, hemp” [0142] in the range of “2 and 40%” [0139], and further apply into the composition formation. Doing so would lead to the product of container, food packaging [0196-197] toward biodegradation and sustainability.
In the case where the claimed ranges "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). See MPEP § 2144.05.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Mohanty (US20120071591, herein Mohanty), in the view of Desrosiers (US20170241070, herein Desrosiers) and Freund (US20050274075, herein Freund), as evidenced by Patel, Journal of the Mechanical Behavior of Biomedical Materials Volume 96, August 2019, Pages 1-8; Muniyasamy, Journal of Renewable Materials 2016, 4(2), 133-145; Zytner, ACS Omega 2020 5 (25), 14900-14910; Ribeiro, Sustainability 2023, 15(12), 9610; Sauvageon, Textile research journal, 2018, 88(9), 1047.
Regarding Claim 15, Mohanty teaches biodegradable composite [0038], comprising: poly(3-hydroxybutyrate-co-3-hydroxyvalerate) (PHBV) [0016] reads on the biodegradable plastic polymer. Evidence Ref Zytner teaches PHBV tensile strength 41.7 MPa. Evidence Ref Patel teaches the PHBV has the elastic modulus of 3 Gpa [P2; Table 1], lies in the claimed range. Evidence Ref Muniyasamy teaches PHBV biodegradation 90% [P133; Abstract]. Mohanty teaches the composition further comprising: hemp [0066], reads on the bio-derived fiber, wherein, the hemp has fiber dimension of average 13–15 mm long with a diameter between 15 and 20 µm [Evidence Ref_ Sauvageon, P1047, Right Column, Para. 1], and modulus of elasticity was (92.44-7.44) to (92.44+7.44) GPa, the mean of tensile strength was (564.98-167.03) to (564.98+167.03) MPa [Evidence Ref_ Ribeiro, Sustainability 2023, 15(12), 9610, Abstract], therefore, the tensile strength of the hemp fiber is more than 9.52 times of PHBV as set forth above, and the elastic modulus of hemp fiber is greater than the elastic modulus of the PHBV. Mohanty is silent on the bio-derived fiber infused with a bio-derived wax to have a surface energy of from about 45 mJ/m2 to about 50 mJ/m2, however, Desrosiers teaches the beewax based formulation infuse the natural fibric [0014; 0055], including hemp [0050], collectively matches “the bio-derived wax may include beeswax” [Instant App. Spec. P16; 0078]; “According to an example, the bio-derived fiber infused with the bio-derived wax may include a hemp fiber.” [Instant App. Spec. P16; 0076], hence, the specifically taught beeswax and hemp, can lead to the beeswax distributed to hemp fiber with certain degree, into the internal structure of the hemp fiber, moreover, the specificity of the beeswax and the hemp fiber can further lead to the hemp infused beeswax with claimed surface energy range. Mohanty and Desrosiers are both considered to be analogous to the claimed invention because they are reasonably pertinent to the problem faced by the inventor, that of using the hemp-based cellulose for container manufacturing with moldable, compostable and rigidity features. It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Mohanty and add the teachings of Desrosiers, and provide the beewax based formulation infuse the natural fibric [0014; 0055], including hemp [0050], and further apply into the composition formation. Doing so would lead to the desired property of the storage container is rigid enough to maintain their shape [0013] and compostable [0013] and with moldability [0064], indicates the product of container with the properties of rigidity, with moldability, and suitable for composting.
Mohanty is silent on the wetting a bio-derived fiber with a wax emulsion including a bio-derived wax, however, Freund teaches “natural fiber bundles, a sizing agent may be added, such as wax emulsion, for sufficient wet strength during use.” [0032] indicates the mixing of the biofiber with wax emulsion. Mohanty and Freund are both considered to be analogous to the claimed invention because they are reasonably pertinent to the problem faced by the inventor, that of using the biofiber based composition for container manufacturing toward sustainability and biodegradation. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Mohanty and add the teachings of Freund, and provide the “natural fiber bundles, a sizing agent may be added, such as wax emulsion, for sufficient wet strength during use.” [0032] into the composition formation. Doing so would further impart sufficient wet strength [0032], and further lead to the product of biofiber based biodegradable container, molded pulp seed pots [0030] as taught by Freund.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 mailing date of this final action.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Zhen Liu whose telephone number is (703)756-4782. The examiner can normally be reached Monday-Friday 9:00 am - 5:00 pm.
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 on (571)272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Z. L./Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767
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