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 Interpretation
Instant claims as submitted on 3/3/2023 recite following: a carbon polymer, a plasticizer complex, a solvent a nanoclay a catalyst that breaks down carbons of the carbon polymers and a fertilizer material wherein the carbon polymers, the plasticizer complex, the solvent, the catalyst and the fertilizer material are mixed together at different stages to obtain a bioplastic material.
While specification can be utilized as a dictionary, it cannot be read into the claims. As such each ingredient listed in claim 1 is very broad in scope as long as the composition itself is a bio material it will meet the claims. Any polymer containing carbon, any plasticizer, catalyst, solvent, plasticizer and fertilizer will meet the claim.
Claim 1 is also in product by process claim as such patentable weight is given to the product and not to the process by which it is made.
With respect to term complex: A chemical complex by definition is a molecular entity formed by loose association involving two or more component molecular entities (ionic or uncharged), or the corresponding chemical species. The bonding between the components is normally weaker than in a covalent bond. The term has also been used with a variety of shades of meaning in different contexts: it is therefore best avoided when a more explicit alternative is applicable.
Claims 2 and 10 recite a composition and method respectively, wherein the bioplastic material when placed into soil is reusable as fertilizer. These claims are not directed to a composition or method of obtaining the composition as claimed in the independent claims. As such the claims are non-limiting and are directed to future use, which does not have to occur. The function of the product will further be viewed as inherent due to required presence of the fertilizer in the claimed composition.
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 3, 4 and 8 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.
Instant claim 3 depends on claim 1. Claim 3 recites polymer complex, which is not recited in claim 1. Claim 1 recites a carbon polymer. It should also be noted that claim 1 recites “carbon polymer((s)). It is unclear id applicants are trying to claim 1 polymer or more than one, especially when dependent claims 3 and 4 are directed to single polymer. Therefore claims 3 and 4 fail to limit independent claim 1.
Claim 8 recited the catalyst that breaks down a carbon compound of the carbon polymer. Claim 1 on which claim depends does not teach catalyst. Claim 1 discloses enzyme. If enzyme is meant to be the catalyst then catalyst is broader in scope than enzyme. Therefore claim 8 fails to limit the scope of independent claim 5. Additionally, term “the catalyst” lacks antecedent basis.
Applicant may cancel the claims, amend the claims to place the claims 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 § 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.
Claims 1-10 are 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.
Claim 1 recites term “plasticizer complex”. Instant specification defines plasticizer complex as vegetable glycerin, a regular glycerin, a fructose a resin (epoxy variety or casting resin), a lignin and the like [0024]. While applicants can be their own lexicographers, assigning new name to a term that is well defined in the chemical arts is a stretch. No re-definition of this well-known term has been provided and the exemplary compounds fall outside the scope of the art-accepted definition of a “complex” It is therefore not possible to determine the full metes and bounds of the claimed “plasticizer complex”. As depicted in claim interpretation above, there is no definition of ligand of any kind to allow formation of a plasticizer complex. Applicants appear to claim only plasticizer only and it is unclear how critical to the instant invention presence of the complex is.
Claim 1 further recites “a catalyst that breaks down carbons of the carbon polymers”. There is no catalyst that exists that is capable of braking down carbon. Instant specification [0012] also states that a catalyst breaks down a carbon compounds of the carbon polymer, which is definitely more acceptable than what is currently recited. Further, the catalyst will not break down compounds of carbon polymer. If anything, catalysts by lower energy barrier facilitated carbon-carbon bond scission leaving monomers intact not broken down as claims recite. The examiner further requests that applicants check the claim for consistency between plural polymers and single polymer. Such lack of consistency further renders claims indefinite because it is unclear if applicants recite single polymer or group of polymer.
Claim 3 recites “polymer complex”. Instant specification as originally filed fails to provide any definition as to what a polymer complex is. Applicants only disclose carbon polymer in [0024].
The IUPAC definition of polymer-polymer complex is as follows: Polymer complex is a molecular entity formed from two or more components that can be ionic or uncharged. Although the intrinsic binding energy between the individual interacting sites giving rise to the complex is weaker than a covalent bond, the total binding energy for single molecule may exceed the energy of a single covalent bond.
The IUPAC definition of polymer-metal complex defines complex as comprising metal and one ore more polymeric ligands. Basically, at least two components are required to form a complex. Multiple types of polymer complexes are known in the art. The claims and specification fail to specify what must be present in addition to form a polymer complex. Additionally since claims and specification are silent with respect to the definition of polymer complex, the critical part of the invention is not disclosed and not claimed.
Claim 3 further recites that a plasticizer complex is used in combination with protein or carbon polymer complex. Term “or” renders polymer complex optional, which polymers are required by instant claim 1. Additionally it is not clear if the “carbon polymer complexes” in claim 3 are the same as a “carbon polymer” in claim 1. As such it is further not clear if “or” means that a protein is present and the carbon polymer of claim 1 is still there just not in the form of a complex.
Claim 5 recites “supplying a heat with a predefined temperature to the second mixture, wherein once the second mixture converts to a gel-like semi-solid then transfer the gel-like semi-solid mixture to cooling system; incubating the gel-like semi-solid mixture to the cooling system for predefined period of time”
If applicants apply heat and incubate the second mixture, the enzyme would perform its function as it is an active compound. As such the step of adding nanoclay to the second mixture until nanoclay incorporates into carbon polymer cannot be performed. Applicants have not described how the nanoclay can be incorporated into incubated gel-like semi-solid mixture.
Claim 5 also recited terms “gel-like” and “semi-solid”. First term “gel-like” is indefinite for its use of term “like”, because the material properties between liquid and a solid cannot be determined without any sort of teachings in the specification. These properties would include the balance between viscosity and ability to hold its shape. Additionally, term “like” is a relative term which renders the claim indefinite. The term “like” is not defined by the claims, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Specifically the application does not define the degree of gelation/solidification required to read on term “gel-like” or “semi-solid”.
By definition gel refers to a coherent system where liquid phase is entrapped inside a crosslinked three-dimensional solid network that holds its shape and doesn’t flow.
Semi-solid is a state of matter that has high viscosity but can still deform under pressure. It is a paste like consistency.
As such composition cannot be “gel-like” and semi-solid at the same time. Applicants are not crosslinking the composition but utilizing enzymes to break down the polymer. Additionally, nanoclay which may induce gelation is added after the composition is heated gelled and cooled. Further, instant specification lacks any description as to how broken down polymer can form a gel-like composition.
Claim 6 states that solvent provides bonding between the plasticizer complex and the fertilizer material. By definition the purpose of the solvent is to dissolve the solutes to form a solution. While solvent can act as a medium for chemical reactions, by bringing the reactants together, the solvent cannot form bonding between the two reactants. Such bonding can form in presence of catalysts, crosslinking agents or other active substances which are neither disclosed or in any manner explained in the instant specification as originally filed. If the solvent participates in hydrogen bonding or ionic bonding between the plasticizer and fertilizer such occurrence has not be defined, disclosed or otherwise envisaged in the application as originally filed.
All dependent claims contain the deficiencies of independent claims.
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 1-10 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.
Claim 1 recites “catalyst that breaks down carbons of the carbon polymer”. This limitation in itself is impossible, because catalyst cannot break down carbons. Instant specification failed to provide any written description as to how such reaction is even possible. Additionally, the function of the catalyst is to lower the amount of energy, known as activation energy that is required to initiate chemical reaction. As such catalyst alone cannot break down carbon bonds. The instant specification as originally filed failed to provide any written description as to what the catalysts are, and there are thousands of possibilities to choose from. Instant specification fails to provide any written description for those skilled in the art on how to actually practice instant invention.
Claim 5 discloses use of carbon polymer, solvent, plasticizer complex, enzyme, fertilizer and nanoclay to create gel-like semi-solid composition. The examiner assumes that enzyme, as the only active ingredient serves as a catalyst since none of the other ingredients are disclosed or defined as being active ingredients. By definition, in chemistry enzyme is a biological catalyst that speeds up a specific chemical reaction in living organism (microorganism) that speeds up a specific chemical reaction (in this case degradation of polymer or C-C bond scission. Enzymes by themselves cannot break down polymers. While they are central to the process, enzyme require the presence of water and a specific environmental conditions to function properly. Some enzymes need compounds called cofactors to catalyze the reaction. Specification as originally filed, fails to describe exactly what the enzymes are and what conditions are required for the reaction to occur. As such instant specification provides no written description to one of ordinary skill in the art on how to practice instant invention.
Claim 5 recites “supplying a heat with a predefined temperature to the second mixture, wherein once the second mixture converts to a gel-like semi-solid then transfer the gel-like semi-solid mixture to cooling system; incubating the gel-like semi-solid mixture to the cooling system for predefined period of time”.
Claim 5 also recited terms “gel-like” and “semi-solid”. First term “gel-like” is indefinite for its use of term “like”, because the material properties between liquid and a solid cannot be determined without any sort of teachings in the specification. These properties would include the balance between viscosity and ability to hold its shape. Instant specification as originally filed fails to provide any written description as to how the applicants obtain “gel-like” and semi-solid mixture considering gels are crosslinked networks.
By definition gel refers to a coherent system where liquid phase is entrapped inside a crosslinked three-dimensional solid network that holds its shape and doesn’t flow. Semi-solid is a state of matter that has high viscosity but can still deform under pressure. It is a paste like consistency that can flow very slowly. As such composition cannot be “gel-like” and semi-solid at the same time. Applicants are not crosslinking the composition but utilizing enzymes to break down the polymer. Instant specification lacks any description as to how broken down polymer can form a gel-like composition and what conditions are required to achieve that.
Claim 6 states that solvent provides bonding between the plasticizer complex and the fertilizer material. By definition the purpose of the solvent is to dissolve the solutes to form a solution. While solvent can act as a medium for chemical reactions, by bringing the reactants together, the solvent cannot form bonding between the two reactants. Such bonding can form in presence of catalysts, crosslinking agents or other active substances which are neither disclosed or in any manner explained in the instant specification as originally filed. The only solvent disclosed by the applicants is water [0024]. Water as mentioned above can be a bridging agent between fertilizers and plasticizer complex, which facilitates interaction rather than create a durable chemical bond. The effectiveness of this interaction depends on the chemical nature of the specific plasticizer complex and fertilizer involved as well as the amount of water present. Instant specification as originally filed fails to meet written description requirement which would provide not only the type of plasticizer complex but also fertilizers involved in the chemical reaction as well as specific conditions under which such reaction can occur. If the solvent participate in hydrogen bonding or ionic bonding between the plasticizer and fertilizer such occurrence has not be defined, disclosed or otherwise envisaged in the application as originally filed.
Furthermore claim 6 confuses issue because instant claims also state that plasticizer complex also bonds with the carbon polymer broken down by the catalyst. As such the actual structure of polymer and plasticizer is confusing. Nothing in the specification explains this phenomenon especially when all three carbon polymer, plasticizer complex and fertilizer are bonded together.
While instant specification lists banana pith and coir pith as fertilizers, the two compounds function differently and require proper processing to be effective. Coir pith is primarily a soil amendment for improving structure and water retention while banana pith is a source of potassium and other nutrients. Instant specification further failed to disclose proper processing of each of the named fertilizers and how such fertilizers can work with plasticizer complex. The written description requirement has not been met. Additionally, the applicants have not provided any explanation as to what the plasticizer complex really is, and what ligands were utilized to form the complex. This feature is critical to establish proper working conditions and content of each to even figure out how the fertilizer and plasticizer complex will bond.
Instant claim 5 also states that the heat is applied under predefined temperatures and it is incubated for predefined amount of time. As shown above the amounts, temperatures and conditions for the components of the composition to perform required functions are critical aspect of the instant invention. Specification as originally filed, failed to meet written description requirement specify each of the conditions, which are critical conditions that allow the reaction to take place.
If applicants apply heat and incubate the second mixture, the enzyme would perform its function as it is an active compound. As such the step of adding nanoclay to the second mixture until nanoclay incorporates into carbon polymer cannot be performed. Applicants have not described how the nanoclay can be incorporated into incubated gel-like semi-solid mixture. Specification as originally filed does not provide any written description on how to incorporate nanoclay into gelled composition, especially one that has been already molded into requires shape. Instant application fails to even teach the shape of the molded composition.
While example [0026] discloses range of amounts for carbon polymer and plasticizer complex, it is silent with respect to the content of other critical components such as catalyst, fertilizer or nanoclay as well as temperature at which the composition was heated. The example states that the solution starts to solidify and transform into gel-like product. Applicants example fails to support invention as claimed, because the example, which supposed to reflect what claimed invention, does not utilize catalyst, fertilizer or nanoclay and therefore polymer chain scission can’t be performed. the example does not clarify as to what contributed to formation of gel-like or semi-solid product disclosed in the example. The example does not support applicant’s claim which states that fertilizer and plasticizer bond, as none of the fertilizer is used and therefore bond does not occur.
Instant claim 8 recites a catalyst that breaks down carbon compounds of the carbon polymer in order to restructure as the carbon polymer bonds with the plasticizer complex.
In chemistry, while catalyst can break down polymer a new catalytic processes are being develop to restructure the polymer bonds. Polymer is broken into smaller components and instant specification fails to indicate what these components are and how extensive is the chain scission. Instant specification failed to describe how such polymer is broken down. The polymer can be depolymerized, which is evident by applicant’s statement of breaking down carbon compounds. The polymers once broken down can be repolymerized (upcycling). In more advanced method catalysts can be used not to just create new polymers but also to manipulate and reorganize the carbon based structure itself. None of these possibilities have been described in the instant specification. Breaking down polymer appears to be one part of the invention but it appears that making of new polymers modified by plasticizer also seems to be part of the disclosure. Neither one meets written description requirement, and what is formed is not chemically defined.
In summary, the nature of the invention, the scope of all embodiments (including the conditions) do not meet written description requirement.
In [0027] of the instant specification the applicants state that one of ordinary skill in the art can modify and/or adapt various application such specific embodiments without departing from the generic concept, and therefore such adaptations and modification should and are intended to be comprehended within the meaning and range of equivalents of the disclosed embodiments.
This statement leads examiner to believe that instant invention is a concept which under US IP law cannot be patented. Patents protect tangible inventions. While concept must first be formed to establish an invention, it must then be embodied in practical useful invention.
Under 112 1st paragraph and 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.
With respect to 112 2nd paragraph requirements, 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.
Instant specification fall short of defining instant invention in a manner that can be practiced. Lack of description with respect to enzymes, catalysts, proteins, solvents that provides bonding and catalyst that can restructure the polymer bonds have not been described. Polymer complex and plasticizer complex have not been described in a manner that would show what the respective complex is for each.
In the light of the above, the examiner will not be able to establish proper rejection until claims are cleaned up and proper definitions of each are described. Such amendment may not even be possible based on what the instant specification teaches. In the event applicants do amend the claims such that they will be in proper condition for examination, the next office action will be final as necessitated by amendment. If the applicants would like to discuss this matter further, the applicants are welcome to an interview with the examiner.
Priority
Applicants claimed priority to IN 202041038102 filed on 9/3/2020 and the application is 371 of PCT/IN2021/050263 filed 3/15/2021.
The office did not receive certified copy of IN 202041038102. While parts of the PCT prosecution are included in the application file, the certified copy of the PCT application (or WO publication) have not been submitted. All certified copies of the priority documents have to be obtained in order to received benefit of foreign priority.
Correspondence
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/KATARZYNA I KOLB/Primary Examiner, Art Unit 1767 September 16, 2025