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 .
Election/Restrictions
Applicant’s election without traverse of Group II, in the reply filed on September 23, 2025, is acknowledged. Claim 1-4 and 9-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
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 5-8 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 enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Regarding claims 5-8, claim 5 recites a method for creating a sustainable yarn capable of both anaerobic and aerobic degradation, adding in an elastomer, at a percentage of formulation of approximately 5% by weight, and processing coffee grounds, polyethylene terephthalate, elastomer, and anaerobic biodegradability agent into a yarn textile. The claims require forming a yarn textile with the properties of being sustainable and capable of both anaerobic and aerobic degradation, based on the manner of forming the yarn textile. Therefore, the claimed properties appear dependent on the claimed combination of the coffee grounds, polyethylene terephthalate, elastomer, and anaerobic biodegradability agent, each in the claimed amounts. However, Applicant’s specification does not identify a composition, specifically an elastomer, which is necessarily compatible with the claimed components, and which would necessarily result in a structure with the claimed properties. Additionally, Applicant’s specification lacks any examples which would further clarify the claimed elastomer, such as properties of the elastomer itself, nor does Applicant provide a definition of “elastomer”.
Absent any guidance as to the identity of the elastomer, one of ordinary skill would be required to identify or discover an elastomer used in the claimed amount and determine if it is necessarily compatible with the claimed components and interacts with the claimed components in combination, which necessarily results in the claimed properties. Requiring one of ordinary skill to determine an elastomer suitable for accomplishing the claimed result within the claimed parameters would require undue experimentation, as Applicant’s specification provides no guidance as to determining the identity of such an elastomer. Therefore, the claimed subject matter contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
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 5-8 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.
Regarding claims 5-8, claim 5 recites a method for creating a sustainable yarn textile comprising providing processed coffee grounds as a base for a yarn textile, portioning said coffee grounds to a percent of formulation as claimed, adding polyethylene terephthalate at a percentage of formulation as claimed, adding in an anaerobic biodegradability acceleration agent at a percentage of formulation as claimed and processing into a yarn textile. It is unclear if providing the coffee grounds as a base for a yarn textile entails a coffee ground base supporting a yarn textile, or coffee grounds which are used to form a base used in forming a yarn textile.
Additionally, the claim recites “formulation” but does not refer to any particular components which are used to form a formulation, including whether the coffee grounds, polyethylene terephthalate, elastomer, and acceleration agent are formed from the same or separate formulations, prior to being processed into a yarn textile.
Additionally, it is unclear what the percentages “by weight” are necessarily in reference to. For example, it is unclear if the percentages are by weight of separate formulations, cumulative formulations, the yarn textile, the recited components, or some other standard.
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 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over US Pub. No. 2023/0227621 to Bassi in view of US Pub. No. 2020/0305540 to Castro Ramos and US Pub. No. 2023/0151194 to Lau.
Regarding claims 5-7, Bassi teaches a method for processing textile waste into recycled plastic granules including pelletizing a powder of fabric and mixing with a plastic compound and extruding (Bassi, Abstract, paragraphs 0139-0154). Bassi teaches pulverizing a recycled fabric (Id., paragraphs 0014-0023), wherein the fabric comprises up to 100% synthetic fibers and comprises a mixture of fibers including elastane and/or polyester among others (Id., paragraphs 0074-0086). Bassi teaches that the plastic compound is particularly a plastic that is biodegradable, such as polyethylene terephthalate (Id., paragraphs 0100-0108). Bassi teaches that it is possible to mix plastic compound pellets of different compositions, such that the resulting plastic granule has selected properties depending on the intended end use of the resulting plastic granule (Id., paragraph 0154).
Bassi does not appear to teach including coffee grounds and extruding as a yarn textile, and adding an anaerobic biodegradability acceleration agent.
Regarding the claimed coffee grounds and end use, Castro Ramos teaches a process for obtaining ecological footwear using recycled or waste organic materials, including coffee waste and recycled polyester, and producing fibers (Castro Ramos, Abstract). Castro Ramos teaches that percentages of between 5 and 90% of organic material such as coffee waste are added (Id., paragraph 0010). Castro Ramos teaches that coffee waste is used in immediate drying ovens, a polymer resin is mixed separately, and then the organic matter is added to the polymer (Id., paragraph 0012). Castro Ramos teaches that the waste is fused into a single resin, and as a result an organic polymer that in turn is biodegradable is achieved, as the organic matter decomposes the polymer in time without leaving toxic residues (Id., paragraph 0012). Castro Ramos teaches that the polymer is used to produce pellets by extrusion, and used for the manufacture of woven textiles and moldings (Id., paragraphs 0008, 0012, 0022, 0037, Fig. 1).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form the plastic compound of Bassi, and adding coffee waste in an amount, such as the claimed amount, and extruding the formed resin into fibers and textiles, as taught by Castro Ramos, motivated by the desire of forming a plastic material comprising inert organic matter which is ecological and biodegradable, and which can be predictably used to form moldings or fibers and textiles.
Regarding the anaerobic biodegradability acceleration agent, Bassi teaches the inclusion of a biodegradable polyethylene terephthalate. Additionally, Lau teaches an anaerobic biodegradation accelerator for a host polymeric material, the accelerator including a carrier matrix, a biotic component, and a biodiversity promoter (Lau, Abstract). Lau teaches that the carrier matrix includes a biodegradable and/or nonbiodegradable material including polyethylene terephthalate, thermoplastic elastomers, and combinations thereof, in an amount of 30% to 90% of the total weight of the accelerator (Id., paragraphs 0016-0017). Lau teaches that the biotic component includes enzymes in an amount of greater than 0% to 20% of the total weight of the accelerator (Id., paragraphs 0018-0022). Lau teaches that the biodiversity promoter includes amino acids, in an amount of greater than 0% to 20% of the total weight of the accelerator (Id., paragraphs 0025-0026). Note that Lau teaches the inclusion of additional components which may be present at 0% (Id., paragraphs 0028-0036). Lau teaches that the host polymeric material includes polyethylene terephthalate (Id., paragraph 0037). Lau teaches that a skilled artisan can reasonably modify, vary or optimize the production method, based on the desired biodegradability (Id., paragraph 0076). Lau teaches that the accelerator-incorporated polymeric material can be made into or used for resins after extrusion (Id., paragraph 0077). Lau teaches that the biodegradation accelerator accelerates biodegradation of host polymeric materials (Id., paragraphs 0002, 0005).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form the plastic compound of the prior art combination, and adding an anaerobic biodegradation accelerator comprising a biotic component including an enzyme and a biodiversity promoter, such as in the claimed amount, as taught by Lau, motivated by the desire of forming a plastic material comprising accelerators known in the art to advantageously accelerate and facilitate biodegradation of polymeric material under anaerobic conditions.
Regarding the claimed amounts of the coffee grounds, polyethylene terephthalate including recycled and virgin polyethylene terephthalate, elastomer, and anaerobic biodegradability acceleration agent, the prior art combination teaches using the claimed components in combination, in amounts which overlap with the claimed ranges. Note that Applicant’s specification does not set forth objective or quantitative properties associated with a “recycled” polyethylene terephthalate and a “virgin” polyethylene terephthalate such that there is a patentable distinction. Therefore, the recitation of “recycled” and “virgin” only appears to indicate the source of the polyethylene terephthalate prior to use in the claimed method. The same reasoning applies to the recitation of recycled coffee grounds.
Additionally, the prior art combination establishes that a skilled artisan can reasonably modify, vary or optimize the production method, based on the desired biodegradability. Note that 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). The existence of overlapping or encompassing ranges shifts the burden to Applicant to show that his invention would not have been obvious. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003). Therefore, absent evidence of unexpected results based on the particularly claimed amounts of the components, the prior art combination renders obvious the claimed amounts.
Alternatively, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form the plastic compound of the prior art combination, and adjusting and varying the components and the amounts, such as within the claimed ranges, as taught by the prior art, motivated by the desire of forming a plastic material having the desired properties including biodegradability.
Regarding the claimed yarn textile being capable of both anaerobic and aerobic degradation, since the prior art combination teaches an anaerobic biodegradation accelerator and since the prior art combination a substantially similar structure and composition as claimed, it is reasonable for one of ordinary skill to expect that the yarn textile is capable of both anaerobic and aerobic degradation as claimed. Products of identical structure cannot have mutually exclusive properties. The burden is on Applicant to prove otherwise.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over US Pub. No. 2023/0227621 to Bassi in view of US Pub. No. 2020/0305540 to Castro Ramos and US Pub. No. 2023/0151194 to Lau, as applied to claims 5-7 above, and further in view of “Molecular Insights into the Enhanced Performance of EKylated PETase toward PET Degradation” to Chen.
Regarding claim 8, the prior art combination teaches that the accelerator may comprise a biodiversity promoter including amino acids, in an amount of greater than 0% to 20% of the total weight of the accelerator. Additionally, Chen teaches biomodification of PETase enzyme by fusing a zwitterionic polypeptide consisting of alternating-charged glutamic acid and lysine residues to the C-terminus of PETase (Chen, Abstract). Chen teaches that increasing the fusion peptide length leads to improved catalytic performance (Id.). Chen teaches that thermal stability assays performed for the obtained mutants compared to the native PETase showed that each of the obtained proteins exhibited better stability than the native enzyme (Id., pages 7362-7365, Figure 2). Chen teaches that the conformational transformations in PETase enhance the catalytic efficiency and facilitate the catalytic performance toward PET degradation by improving both the enzyme stability and catalytic activity (Id., page 7368).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form the plastic compound of the prior art combination, and including an amino acid such as glutamic acid to the enzyme, as taught by Chen, motivated by the desire of predictably enhancing the thermal stability of the enzyme and improving PET degradation.
Conclusion
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/PETER Y CHOI/ Primary Examiner, Art Unit 1786