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 .
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. 16/489,264, filed on 8/27/2019.
Claim Objections
Claim 13 is objected to because of the following informalities:
Claim 13 recites “wherein a manufacturing process thereof comprising”. Examiner recommends amending to read “manufactured by a process comprising”.
Appropriate correction is required.
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 1-15 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 “an edible and biodegradable utensil” and claim 3 recites “wherein the degradable plastic is polybutylene-succinate (PBS)”. Though PBS is biodegradable, it does not appear to be edible. As claim 3 is drawn to a plastic which is not edible, it is not clear if the invention is edible. As such it is unclear how to examine claim 3 and therefore it will not be examined. Claims 2 and 4-15 are similarly rejected as they depend from claim 1.
Claims 1, 5-7, and 13-15 recite “30% ~60% rice flour”, “20°C ~60°C”, etc. The use of a tilde creates uncertainty as to the meaning of the numbers. A tilde is used to mean “approximately”, yet in the context of the claims it is unclear what the first number would be in relation to. The examiner assumes the claims are meant to be written “30-60% rice flour”, “20°C-60°C”, etc. and will examine the claims as such.
Claim 5 recites “forming a stock by injection molding”. It is unclear what the “stock” is and what it is formed from. It cannot be distinguished whether the stock is merely the mixed composition which has been injection molded, or if it is entirely separate of the mixed composition.
Claim 8 recites “and an disposed at a front end of the material pipe”. It is unclear because there appears to be something missing between the words “an” and “disposed” so the examiner is unsure what is disposed at the front end of the material pipe.
Claim 9 recites “an external diameter” following claim 8 reciting “the external diameter of the compression section increases in a direction from the feed section of the measuring section”. It is unclear whether the external diameter of claim 9 is the same portion as that of claim 8 or distinct.
Claim 13 recites the limitation "the composition" on line 3. There is insufficient antecedent basis for this limitation in the claim.
Claim 13 recites the limitation "the mixed composition" on line 4. There is insufficient antecedent basis for this limitation in the claim.
Claim 13 recites the limitation "the extruded finished product" on line 8. There is insufficient antecedent basis for this limitation in the claim.
Claim 13 recites the limitation "the finished product" on the 3rd to last line. There is insufficient antecedent basis for this limitation in the claim.
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.
The factual inquiries 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.
Claims 1-15 are rejected under 35 U.S.C. 103 as being unpatentable over DeLaprym (2014/0272010 A1) found in applicant’s IDS filed 2/22/2023 in view of Shepard (US 2009/0123627 A1) found in applicant’s IDS filed 2/22/2023 and Yang (CN 101602882A).
Regarding Claim 1, DeLaprym teaches an edible and biodegradable utensil (edible utensils Abstract; product is completely edible and biodegradeable Par. 0033)
comprising: rice flour, corn flour, soy flour, multigrain flour, and plant fiber (traditional wheat flours such as all purpose, whole wheat, bread flour; gluten free flour, nut flours, rice flour, soy flour, maize flour, potato flour, or any other commercially known powdered grain Par. 0037). It is noted that flours contain plant fiber.
and 15% ~35% liquid (30% liquid Par. 0035)
DeLaprym teaches combinations of rice flour, corn flour, soy flour, multigrain flour, and plant fiber, but does not teach tapioca flour, degradable plastic, or the specifically claimed percentages of rice flour, tapioca flour, corn flour, soy flour, multigrain flour, and plant fiber, and degradable plastic.
Shepard, in the same field of endeavor, teaches tapioca flour (gluten-free flour comprising tapioca starch).
It would have been obvious, at the time of filing, to apply the tapioca starch of Shepard as a flour in the utensil of DeLaprym, as well as applying Shepard’s use of a variety of flours within one flour composition. As DeLaprym teaches the use of gluten free flours as well as the use of any commercially known powdered grain (Par. 0037), one having ordinary skill in the art would have been motivated to look to the art for known gluten free flour compositions.
Shepard does not teach comprising: a) 30% ~60% rice flour
b) 10% ~50% tapioca flour;
c) 10% ~50% corn flour;
d) 5% ~25% soy flour;
e) 5% ~25% multigrain flour;
f) 1% ~20% plant fiber;
g) 5% ~20% degradable plastic
Regarding 30% ~60% rice flour, 10% ~50% tapioca flour, 10% ~50% corn flour, 5% ~25% soy flour, 5% ~25% multigrain flour, and 1% ~20% plant fiber, DeLaprym teaches 40%-80% (60%±20%) total powdered grain within the utensil (Par. 0035), as well as using different flours to vary consistency, taste, and/or flavor (Par. 0037). As the entirety of powdered grains in the present invention has a range of 61%-100% total powdered grain (flour and plant fiber), DeLaprym discloses a range which overlaps with the claimed amount. It would have been obvious to one having an ordinary skill in the art to modify DeLaprym to have 61-100% powdered grain. It would have been prima facie case of obviousness to have selected the overlapping portion of the range (i.e. 61-80%) from the taught range of 40-80% (as seen above). In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); See MPEP 2144.05 (I).
Further, it would have been within the skill of one having ordinary skill in the art to adjust the percentages of each individual component to achieve the desired consistency, taste, and/or flavor (DeLaprym Par. 0037).
The claim differs from the above combination in specifically reciting 5-20% degradable plastic.
Yang, in the same field of endeavor, teaches using degradable plastic in utensils for the purpose of providing tensile and bending strength (bio-based resin is a polymer blended with one or more resins Par. 21; biodegradable bio-based resin Par. 37; cutlery Par. 39)
It would have been obvious to one having ordinary skill in the art, at the time of filing, to apply the degradable plastic of Yang into the edible utensil of modified DeLaprym. One would have been motivated to make this modification to produce a product with good tensile and bending strength Par. 39).
Yang does not teach 5% ~20% degradable plastic.
Regarding 5% ~20% degradable plastic, since the reference teaches a blend it would have been obvious to one having ordinary skill in the art to select an amount of a degradable plastic which would provide the desired structure including tensile and bending strength (Yang Par. 39) of the resulting utensil when applied to the components of DeLaprym and Shepard.
Regarding Claim 2, DeLaprym further teaches the liquid is milk, soy milk or water (liquid is milk or soy milk or water Par. 0041)
Regarding Claim 4, DeLaprym and Shepard do not teach the degradable plastic is polyhydroxyalkanoate (PHA).
Yang teaches the degradable plastic is polyhydroxyalkanoate (PHA) (polymer is PHA Par. 21).
It would have been obvious to one having ordinary skill in the art, at the time of filing, to apply the degradable plastic of Yang into the edible utensil of modified DeLaprym. One would have been motivated to make this modification to produce a product with good tensile and bending strength Par. 39).
Claim 5 recites, the edible and biodegradable utensil according to claim 4, manufactured by a process comprising: a mixing step of mixing the composition that is put into a mixing machine; an injection step of putting the mixed composition into an injection machine, forming a stock by injection molding, cooling the stock at 20℃~60℃ for 30 seconds~90 seconds, wherein the thickness of the stock is 1mm~4mm; a molding step of putting the stock into a lower mold, and closing the lower mold with an upper mold, such that the stock is clamped between the lower mold and the upper mold; a drying step of sending the closed upper mold and lower mold into a drying line to perform a drying process, so as to form the stock into a finished product; a finished product packaging step of separating the upper mold and the lower mold from each other, removing the finished product from the lower mold, and carrying out batch packaging into a carton.
This limitation recites process limitations in the product claim. As such, the limitations are interpreted as analogous to a process limitation in a product-by-process claim. It has been held that even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. It is the patentability of the product claimed and not of the recited process steps which must be established. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. MPEP 2113. Once a product appearing to be the same or similar is found and a 35 USC 102/103 rejection is made, the burden shifts to the applicant to show an unobvious difference. MPEP 2113.
Of the limitations of claim 5, none contribute structurally to the final product and therefore does not provide a patentable distinction over the product taught by the prior art.
Claim 6 recites, the edible and biodegradable utensil according to claim 5, wherein the injection step is carried out at a temperature of 120℃~140℃.
This limitation recites process limitations in the product claim. As such, the limitations are interpreted as analogous to a process limitation in a product-by-process claim. It has been held that even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. It is the patentability of the product claimed and not of the recited process steps which must be established. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. MPEP 2113. Once a product appearing to be the same or similar is found and a 35 USC 102/103 rejection is made, the burden shifts to the applicant to show an unobvious difference. MPEP 2113.
Of the limitations of claim 6, none contribute structurally to the final product and therefore does not provide a patentable distinction over the product taught by the prior art.
Claim 7 recites, the edible and biodegradable utensil according to claim 5, wherein the drying process is carried out at a temperature of 65℃~150℃ for 1 to 8 hours.
This limitation recites process limitations in the product claim. As such, the limitations are interpreted as analogous to a process limitation in a product-by-process claim. It has been held that even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. It is the patentability of the product claimed and not of the recited process steps which must be established. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. MPEP 2113. Once a product appearing to be the same or similar is found and a 35 USC 102/103 rejection is made, the burden shifts to the applicant to show an unobvious difference. MPEP 2113.
Of the limitations of claim 7, none contribute structurally to the final product and therefore does not provide a patentable distinction over the product taught by the prior art.
Claim 8 recites, the edible and biodegradable utensil according to claim 5, wherein the injection machine comprises: a material pipe, in a hollow shape, and having a channel axially formed therein, and an disposed at a front end of the material pipe; a screw rod, passed through and installed in the channel of the material pipe, and having a feed section, a compression section and a measuring section, and a thread convexly formed on an outer edge of the screw rod and disposed at the feed section, the compression section and the measuring section, and the feed section and the measuring section are in an isometric cylindrical shape, and the external diameter of the measuring section is greater than the external diameter of the feed section, and the external diameter of the compression section increases in a direction from the feed section to the measuring section, and the screw rod comprises a screw rod head disposed at a front end thereof; a nozzle, coupled and combined with the injection head; and a heating unit, surrounding and covering the external peripheral surface of the material pipe, the external peripheral surface of the injection head and the external peripheral surface of the nozzle.
This limitation recites process limitations in the product claim. As such, the limitations are interpreted as analogous to a process limitation in a product-by-process claim. It has been held that even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. It is the patentability of the product claimed and not of the recited process steps which must be established. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. MPEP 2113. Once a product appearing to be the same or similar is found and a 35 USC 102/103 rejection is made, the burden shifts to the applicant to show an unobvious difference. MPEP 2113.
Of the limitations of claim 8, none contribute structurally to the final product and therefore does not provide a patentable distinction over the product taught by the prior art.
Claim 9 recites, the edible and biodegradable utensil according to claim 8, wherein the compression section has an external diameter falling between the external diameter of the feed section and the external diameter of the measuring section.
This limitation recites process limitations in the product claim. As such, the limitations are interpreted as analogous to a process limitation in a product-by-process claim. It has been held that even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. It is the patentability of the product claimed and not of the recited process steps which must be established. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. MPEP 2113. Once a product appearing to be the same or similar is found and a 35 USC 102/103 rejection is made, the burden shifts to the applicant to show an unobvious difference. MPEP 2113.
Of the limitations of claim 9, none contribute structurally to the final product and therefore does not provide a patentable distinction over the product taught by the prior art.
Claim 10 recites, the edible and biodegradable utensil according to claim 8, wherein the screw rod has a compression ratio between 2.7 and 3.
This limitation recites process limitations in the product claim. As such, the limitations are interpreted as analogous to a process limitation in a product-by-process claim. It has been held that even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. It is the patentability of the product claimed and not of the recited process steps which must be established. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. MPEP 2113. Once a product appearing to be the same or similar is found and a 35 USC 102/103 rejection is made, the burden shifts to the applicant to show an unobvious difference. MPEP 2113.
Of the limitations of claim 10, none contribute structurally to the final product and therefore does not provide a patentable distinction over the product taught by the prior art.
Claim 11 recites, the edible and biodegradable utensil according to claim 8, wherein the screw rod comprises a patterned part disposed proximate to the screw rod head.
This limitation recites process limitations in the product claim. As such, the limitations are interpreted as analogous to a process limitation in a product-by-process claim. It has been held that even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. It is the patentability of the product claimed and not of the recited process steps which must be established. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. MPEP 2113. Once a product appearing to be the same or similar is found and a 35 USC 102/103 rejection is made, the burden shifts to the applicant to show an unobvious difference. MPEP 2113.
Of the limitations of claim 11, none contribute structurally to the final product and therefore does not provide a patentable distinction over the product taught by the prior art.
Claim 12 recites, the edible and biodegradable utensil according to claim 8, wherein the measuring section has an auxiliary thread formed at an outer edge thereof, and staggered from the thread.
This limitation recites process limitations in the product claim. As such, the limitations are interpreted as analogous to a process limitation in a product-by-process claim. It has been held that even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. It is the patentability of the product claimed and not of the recited process steps which must be established. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. MPEP 2113. Once a product appearing to be the same or similar is found and a 35 USC 102/103 rejection is made, the burden shifts to the applicant to show an unobvious difference. MPEP 2113.
Of the limitations of claim 12, none contribute structurally to the final product and therefore does not provide a patentable distinction over the product taught by the prior art.
Claim 13 recites, the edible and biodegradable utensil according to claim 1, wherein a manufacturing process thereof comprising: a mixing step of putting the composition into a mixing machine for mixing; an extrusion step of putting the mixed composition into an extrusion machine to extrude the mixed composition to form a tubular or sheet material, and then cooling the tubular or sheet material at 20℃~60℃ for 30 seconds~90 seconds, wherein the thickness of the tubular or sheet material is 1mm~4mm, a roll cutting step of directly cutting the extruded finished product into a required length when the extrusion step extrudes and forms the tubular material, or roll-cutting the sheet material by a roll cutting machine to form the finished product, a finished product packaging step of performing a batch packaging of the roll-cut finished product into a carton.
This limitation recites process limitations in the product claim. As such, the limitations are interpreted as analogous to a process limitation in a product-by-process claim. It has been held that even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. It is the patentability of the product claimed and not of the recited process steps which must be established. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. MPEP 2113. Once a product appearing to be the same or similar is found and a 35 USC 102/103 rejection is made, the burden shifts to the applicant to show an unobvious difference. MPEP 2113.
Of the limitations of claim 13, the only which contributes structurally to the final product is the thickness of the tubular or sheet material is 1mm~4mm, which would result in a final product with a thickness of 1mm-4mm.
DeLaprym teaches the thickness of the tubular or sheet material is 1mm~4mm (thickness of 1/8-1/4” Par. 0074).
DeLaprym does not teach the thickness of the tubular or sheet material is 1mm~4mm.
Regarding the thickness of the tubular or sheet material is 1mm~4mm, DeLaprym discloses a range which overlaps with the claimed amount. It would have been obvious to one having an ordinary skill in the art to modify DeLaprym to have a thickness of 1mm~4mm. It would have been prima facie case of obviousness to have selected the overlapping portion of the range (i.e. 3.175mm-4mm) from the taught range of 3.175mm-6.35mm (1/8-1/4” as seen above). In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); See MPEP 2144.05 (I).
Claim 14 recites, the edible and biodegradable utensil according to claim 13, wherein the extrusion step is performed at 100℃~140℃.
This limitation recites process limitations in the product claim. As such, the limitations are interpreted as analogous to a process limitation in a product-by-process claim. It has been held that even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. It is the patentability of the product claimed and not of the recited process steps which must be established. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. MPEP 2113. Once a product appearing to be the same or similar is found and a 35 USC 102/103 rejection is made, the burden shifts to the applicant to show an unobvious difference. MPEP 2113.
Of the limitations of claim 14, none contribute structurally to the final product and therefore does not provide a patentable distinction over the product taught by the prior art.
Claim 15 recites, the edible and biodegradable utensil according to claim 13, wherein the drying process is performed at 65℃~150℃ for 1 to 8 hours.
This limitation recites process limitations in the product claim. As such, the limitations are interpreted as analogous to a process limitation in a product-by-process claim. It has been held that even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. It is the patentability of the product claimed and not of the recited process steps which must be established. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. MPEP 2113. Once a product appearing to be the same or similar is found and a 35 USC 102/103 rejection is made, the burden shifts to the applicant to show an unobvious difference. MPEP 2113.
Of the limitations of claim 15, none contribute structurally to the final product and therefore does not provide a patentable distinction over the product taught by the prior art.
Conclusion
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/A.M.R./Examiner, Art Unit 1792
/VIREN A THAKUR/Primary Examiner, Art Unit 1792