DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This application is a national stage entry under 35 U.S.C. §371 of International Application No. PCT/IL2022/050240 filed 3/3/2022.
Acknowledgment is made of Provisional application No. 63/156,454, filed on Mar.
4, 2021, provisional application No. 63/208,073, filed on Jun. 8, 2021.
Claims 1-21 are pending.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 5 is 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.
Regarding claim 5, the phrase "e.g." renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Appropriate correction and/or clarification is required.
Election/Restrictions
Applicant’s election of Group I Claims 1, 3-9, 11-14 in the reply filed on 2/2/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
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 1-9, 11 are rejected under 35 U.S.C. 103 as being unpatentable over Luo et al. (WO 2021/017030, cited in IDS filed 11/6/2024) in view of Wiese et al. (US 2005/0175830) and Fisher et al. (US 2019/0256677).
A machine translation of WO2021/017030 is provided with this office action.
Regarding claim 1: Luo is directed to a composite material comprising:
Polylactic acid 5-30 wt%, a biodegradable copolyester 20-70 wt% (equivalent to a biodegradable polymeric matrix);
a plasticizer 5-15 wt%, and
a biodegradable filler 10-50 wt% of coffee grounds.
The biodegradable plasticizer is epoxy soybean oil (MP 0 ˚C), white oil (BP ˜300 ˚C), glycerin (MP 20 ˚C), polyethylene glycol (MP 0-70 ˚C), (equivalent to a biodegradable plasticizer in a liquid state at a temperature between 10-50 °C).
The filler is present in an amount of 10-50 wt% (equivalent to an amount sufficient for retaining the biodegradable plasticizer inside the polymeric matrix). Specifically, articles of tableware and packaging materials, and therefore retain the plasticizer inside the polymeric matrix.
Luo discloses biodegradable polymer of PLA, although doesn’t mention polyvinyl acetate or any copolymer thereof, at 5-35 wt% from the total weight of the matrix.
Fisher is directed to a composition comprising a mixture of PLA and polyvinyl acetate (PVAc). The polyvinyl acetate is present in an amount of 10-40 wt% based on the weight of the composition comprising PLA, PVAc, and plasticizer, wherein the plasticizer is used in an amount of 1-10 wt% of the composition ([0052] [0059] [0079] Fisher). Hence, the amounts of PVA clearly encompass the claimed amount. One skilled in the art would have been motivated to have included PVAc in the PLA composition of Luo since a combination of PLA and PVAc improves compatibility of the PLA with the plasticizer such that the plasticizer can be increased without plasticizer migration ([0053] Fishman). This is relevant since both Luo and Fishman generally disclose the same plasticizers ([0063] Fishman). Therefore, it would have been obvious to one skilled in the art at the time the invention was filed to have included PVAc in claimed amounts in the composition of Luo.
A porosity is not mentioned.
Weiss is directed to a method for producing foamed articles wherein the porosity is 40-90 vol% (abstract Weiss). One skilled in the art would have been motivated to have made a foamed article from the method of Weiss utilizing the composition of Luo to produce articles having porosity that can be loaded with additives for a wide variety of applications ([0005] Weiss). Therefore, it would have been obvious to one skilled in the art at the time the invention was filed to have made a foamed article from the method of Weiss utilizing the composition of Luo to arrive at claim 1 of the present invention.
Regarding claim 3: Polymeric based materials include polylactic acid.
Regarding claim 5: Plasticizers include epoxidized soybean oil, glycerin, polyethylene glycol (polyol), citric acid, and acetylated triethyl citrate (ATBC). (p. 2 Luo).
Regarding claim 5: The biodegradable filler is coffee grounds.
Regarding claim 7: The composition comprises 20-70 wt% of a biodegradable copolyester.
Regarding claim 8: The composition comprises 5-15 wt% plasticizer.
Regarding claim 9: The composition comprises 5-15 wt% plasticizer. While the upper limit of 15 wt% abuts the claimed amount of at least 15 wt%, the claim does recite a wt% basis for the amount, i.e. based on the total weight of the composition or based on 100 parts by weight of the biodegradable matrix. Given the breadth of the amount of “at least 15 wt%”, the claim includes amount different than at least 15 wt% based on the total weight of the composition, as in the case of Luo. In other words, it is reasonable to conclude that Luo includes amounts of at least 15 wt% based on 100 parts of the polylactic acid, for example.
Regarding claim 11: The pore size of 1-100 μm ([0055] Wiese).
Claims 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over Luo et al. (WO 2021/017030, cited in IDS filed 11/6/2024) in view of Wiese et al. (US 2005/0175830)
Regarding claim 12: Luo is directed to a product made from a composite material comprising:
Polylactic acid 5-30 wt% and a biodegradable copolyester 20-70 wt% (equivalent to a biodegradable polymeric matrix).
a biodegradable plasticizer 5-15 wt%, and
a biodegradable filler 10-50 wt% of nanometer coffee grounds.
The biodegradable plasticizer is epoxy soybean oil, white oil, glycerin, polyethylene glycol, citric acid (equivalent to a biodegradable plasticizer in a liquid state at a temperature between 10-50 °C).
The filler is present in an amount of 10-50 wt% (equivalent to an amount sufficient for retaining the biodegradable plasticizer inside the polymeric matrix). Specifically, articles of tableware and packaging materials, and therefore retain the plasticizer inside the polymeric matrix.
A porosity of at least 10 vol% is not mentioned. However, the composite composition produced in Luo is substantially identical to the composite composition produced in the instant invention, as discussed above.
Case law holds that the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I).
Hence, Luo suggests a product having a porosity within the scope of the claims. Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
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, since one skilled in the art would not understand how to obtain the claimed properties with only the claimed reactants, claimed amounts, and substantially similar process of making.
Regarding claim 13: The working examples comprise injection molding and extrusion.
Regarding claim 14: The water absorption rate of less than 1 wt% is disclosed in the working examples. Given that water is not present in the components used in the working examples, it is reasonably to conclude the product contains less than 10 wt% water.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT T BUTCHER whose telephone number is (571)270-3514. The examiner can normally be reached Telework M-F 9-5 Pacific Time Zone.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Lanee Reuther can be reached at (571) 270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT T BUTCHER/Primary Examiner, Art Unit 1764