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 Interpretation
First, the Office notes that there is no explanation in the disclosure regarding the nature or purpose of a “base material” in the composition for absorbing fluids of claims 10-20. The Office also notes that the base material as claimed could be in an amount of 1% up to 99% based on claim 10 or 17 thus further providing no suggestion as to any structurally limiting effect of “base” in base material. Base material is therefore broadly interpreted as referring to a material other than the glucomannan.
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 1-9 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for additives including biodegradable additives including corn (cob), walnut shells, newspaper, grass, wood chips, cedar pine, corn pulp and the like and clay as a non-biodegradable absorbent does not reasonably provide enablement for the full scope of biodegradable and non-biodegradable additives. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to practice the invention commensurate in scope with these claims.
In order to determine compliance with the enablement requirement of 35 U.S.C. 112(a), the Federal Circuit developed a framework of factors in In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988), referred to as the Wands factors to assess whether any necessary experimentation required by the specification is "reasonable" or is "undue." Consistent with Amgen Inc. et al. v. Sanofi et al., 598 U.S. 594, 2023 USPQ2d 602 (2023), the Wands factors continue to provide a framework for assessing enablement in a utility application or patent, regardless of technology area. See Guidelines for Assessing Enablement in Utility Applications and Patents in View of the Supreme Court Decision in Amgen Inc. et al. v. Sanofi et al., 89 FR 1563 (January 10, 2024). These factors include, but are not limited to:
(A) The breadth of the claims: Here, the scope of the claims relates to an infinite number of possible absorbent materials since biodegradable and non-biodegradable encompasses all compositions possible.
(B) The nature of the invention: Here, absorption materials and their additives are a complex technology since the range of additives and the range of possible uses for absorbent material is very broad.
(C) The state of the prior art: Here, the state of the prior art includes at least absorbent materials mixed with additives for chemical and water adsorption, support materials, fragrances, deodorizing agents, anti-bacterial properties, binders, dispersants, anti-sticking, anti-clumping agents, anti-dust agents, and each of these from a broad range of materials from natural sources including plant matter, inorganic oxide materials, salts, polymers, etc. Therefore, the state of the art represents a large number of potential additives meeting the claim limitation.
(D) The level of one of ordinary skill: The level of ordinary skill in the art is determined to be an ordinary chemist, biochemists, chemical engineer, material scientist, agricultural scientist, food scientists, or other technology professionals where adsorption of gases or liquids are relevant. Therefore, the level of ordinary skill in the art represents a great number of disciplines for which the claim subject matter is relevant.
(E) The level of predictability in the art: Adding additives to adsorbents yield unpredictable results since as a chemical processes there is a great degree of unpredictability.
(F) The amount of direction provided by the inventor: The Specification includes description of exemplary biodegradable additives including corn (cob), walnut shells, newspaper, grass, wood chips, cedar pine, corn pulp and the like at [0023] and clay as a non-biodegradable absorbent (see [0026]). The specification also provides for use of the absorbent for absorbing a large range of targets including water, oil, gas, blood, bodily fluids, urine, hazardous waste, hazardous materials, moisture in air, other volatiles in the air, feces, and the like (see [0045]). Therefore, the inventor has given direction to a very limited range of additives relative to the scope of the claim but a very broad use case for the absorbent materials.
(G) The existence of working examples: The inventor provides only a very limited number of working examples including three working examples including walnut shells and glucomannan (Example 1), clay and glucomannan (Example 2), and wheat and glucomannan (Example 3).
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure: The quantity of experimentation required to make use of the invention: There would be an unreasonable degree of experimentation for additives because the infinite number of possible compositions (powders and gases) involved and expected differences of effects when the compositions are changed.
Therefore, based on the evidence regarding each of the above factors, the specification, at the time of the application was filed, would not have taught one skilled in the art how to make and/or use the full scope of the claimed invention without undue experimentation.
Claims 10-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for additives including organic materials including corn (cob), walnut shells, newspaper, grass, wood chips, cedar pine, corn pulp and the like and clay as an inorganic absorbent does not reasonably provide enablement for the full scope of organic and inorganic base materials in claims 10 and 17. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to practice the invention commensurate in scope with these claims.
In order to determine compliance with the enablement requirement of 35 U.S.C. 112(a), the Federal Circuit developed a framework of factors in In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988), referred to as the Wands factors to assess whether any necessary experimentation required by the specification is "reasonable" or is "undue." Consistent with Amgen Inc. et al. v. Sanofi et al., 598 U.S. 594, 2023 USPQ2d 602 (2023), the Wands factors continue to provide a framework for assessing enablement in a utility application or patent, regardless of technology area. See Guidelines for Assessing Enablement in Utility Applications and Patents in View of the Supreme Court Decision in Amgen Inc. et al. v. Sanofi et al., 89 FR 1563 (January 10, 2024). These factors include, but are not limited to:
(A) The breadth of the claims: Here, the scope of the claims relates to an infinite number of possible absorbent materials since organic and inorganic base materials encompasses all materials possible.
(B) The nature of the invention: Here, absorption materials are a complex technology since the range of additives to an absorbent and the range of possible uses for absorbent material is very broad.
(C) The state of the prior art: Here, the state of the prior art includes at least absorbent materials mixed with materials for chemical and water adsorption, support materials, fragrances, deodorizing agents, anti-bacterial properties, binders, dispersants, anti-sticking, anti-clumping agents, anti-dust agents, and each of these from a broad range of materials from natural sources including plant matter, inorganic oxide materials, salts, polymers, etc. Therefore, the state of the art represents a large number of potential base materials meeting the claim limitation.
(D) The level of one of ordinary skill: The level of ordinary skill in the art is determined to be an ordinary chemist, biochemists, chemical engineer, material scientist, agricultural scientist, food scientists, or other technology professionals where adsorption of gases or liquids are relevant. Therefore, the level of ordinary skill in the art represents a great number of disciplines for which the claim subject matter is relevant.
(E) The level of predictability in the art: Adding materials to adsorbents yield unpredictable results since as a chemical processes there is a great degree of unpredictability.
(F) The amount of direction provided by the inventor: The Specification includes description of exemplary base materials including corn (cob), walnut shells, newspaper, grass, wood chips, cedar pine, corn pulp and clay (see [0026]). The specification also provides for use of the absorbent for absorbing a large range of targets including water, oil, gas, blood, bodily fluids, urine, hazardous waste, hazardous materials, moisture in air, other volatiles in the air, feces, and the like (see [0045]). Therefore, the inventor has given direction to a very limited range of base materials relative to the scope of the claim but a very broad use case for the absorbent materials.
(G) The existence of working examples: The inventor provides only a very limited number of working examples including three working examples including walnut shells and glucomannan (Example 1), clay and glucomannan (Example 2), and wheat and glucomannan (Example 3).
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure: The quantity of experimentation required to make use of the invention: There would be an unreasonable degree of experimentation for additives because the infinite number of possible compositions (powders and gases) involved and expected differences of effects when the compositions are changed.
Therefore, based on the evidence regarding each of the above factors, the specification, at the time of the application was filed, would not have taught one skilled in the art how to make and/or use the full scope of the claimed invention without undue experimentation.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-3, 7-8, 10, 12-14, and 16-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bergeron et al (US 2003/0232965).
Bergeron teaches a multicomponent synergistic compositions of polysaccharides as natural and biodegradable adsorbent materials or super absorbents, the absorbent comprising:
At least one polysaccharide and at least one or more polysaccharide-based components or gelling proteins;
The first component class of the composition can be selected from modified starches;
The second component class of the composition can be selected from the mannose containing polysaccharides;
The third component class of the composition is an ionic polysaccharide-based compound (see [0016-0019]).
Bergeron further discloses the mannose containing polysaccharides comprise glucomannans or polyglucomannans such as konjac gum or konjac flour (see [0052]). Bergeron further discloses examples of an absorbent composition comprising 5 to 46% of mannose containing polysaccharides (glucomannans or polyglucomannans as konjac flour) (see [0121] and [0124-0125] and Table IV and Table VII, and Table VIII) and where the percentages are based on weight (see [0106]). Bergeron therefore discloses in the examples an adsorbent comprising 5 to 46% glucomannan and at least one of a biodegradable additive.
Regarding claims 2-3, Bergeron discloses an adsorbent comprising 17% konjac flour (i.e., 17% glucomannan and 83% additives (see Example 55).
Regarding claim 7, Bergeron discloses the absorbent materials incorporated into baby diapers, incontinence products and sanitary napkins (i.e., where the glucomannan is in an amount to absorb water, blood, bodily fluids, urine, and/or feces) (see [0064]).
Regarding claim 8, Bergeron discloses a diaper material (see [0064]) or a cat litter using the absorbent material (see claim 42).
Regarding claim 10, Bergeron teaches a multicomponent synergistic compositions of polysaccharides as natural and biodegradable adsorbent materials or super absorbents, the absorbent comprising:
At least one polysaccharide and at least one or more polysaccharide-based components or gelling proteins;
The first component class of the composition can be selected from modified starches;
The second component class of the composition can be selected from the mannose containing polysaccharides;
The third component class of the composition is an ionic polysaccharide-based compound (see [0016-0019]).
Bergeron further discloses the mannose containing polysaccharides comprise glucomannans or polyglucomannans such as konjac gum or konjac flour (see [0052]). Bergeron further discloses examples of an absorbent composition comprising 5 to 46% of mannose containing polysaccharides (glucomannans or polyglucomannans as konjac flour or konjac gum) (see [0121] and [0124-0125] and Table IV and Table VII, and Table VIII). Bergeron therefore discloses an adsorbent comprising 5 to 46% glucomannan and at least one of an organic base material (the starches and ionic polysaccharides).
Regarding claim 12, Bergeron discloses an adsorbent comprising 17% konjac flour (i.e., 17% glucomannan and 83% additives (see Example 55).
Regarding claim 13, Bergeron discloses a cat litter using the absorbent material (see claim 42).
Regarding claim 14, Bergeron discloses an adsorbent comprising 17% konjac flour (i.e., 17% glucomannan and 83% additives (see Example 55).
Regarding claim 16, Bergeron discloses a cat litter using the absorbent material (see claim 42).
Regarding claim 17, Bergeron discloses a method of manufacturing a blended absorbent material comprising mixing wheat starch with konjac gum glucomannan in an amount of 40.21% (see [0121])
Regarding claim 18, Bergeron discloses where the base material comprises wheat starch and where mixing is with 40.21% konjac gum glucomannan (see [0121]).
Regarding claim 19-20, Bergeron discloses a method where the blend is made by vigorously mixing in a vial (see [0121] referring to [0106]). One ordinary skill in the art would recognize that vigorous mixing in a vial requires a stirrer.
Claim Rejections - 35 USC § 103
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.
Claim(s) 4 and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bergeron.
As applied to claim 1, Bergeron discloses an absorbent material comprising 5 to 46% by weight glucomannan and at least one biodegradable and non-biodegradable additive.
As applied to claim 10, Bergeron discloses an absorbent material comprising 5 to 46% by weight glucomannan and at least one organic or inorganic base material.
Regarding claims 4 and 15, Bergeron does not specifically disclose the material comprising 6 to 12% by weight of the glucomannan. As set forth in MPEP 2144.05, in the case where the claimed range “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). It would have been obvious to one of ordinary skill in the art at the time of filing of the invention to prepare an adsorbent as taught by Bergeron where the amount of konjac flour is in any workable or optimum range overlapping with the prior art range 5 to 46% including the claimed range to produce an adsorbent according to Bergeron.
Claim(s) 5-6, 9, and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bergeron as applied to claims 1 or 10 above, and further in view of Mu et al (US 2023/0276766 which has an earlier foreign priority date of March 7, 2022).
As applied to claim 1, Bergeron discloses an absorbent material comprising 1-99% by weight glucomannan and at least one biodegradable and non-biodegradable additive.
As applied to claim 10, Bergeron discloses an absorbent material comprising 1-99% by weight glucomannan and at least one organic or inorganic base material.
Regarding claim 5, Bergeron does not disclose an absorbent material comprising a biodegradable additive selected from corn cobs, walnut shells, newspaper, grass, wood chips, cedar pine, corn pulp, and x-DDGs.
Mu teaches a cat litter comprising:
100 parts of plant fiber waste;
1-7 parts of bacteriostat;
1-34 parts of deodorant;
1-17 parts of adsorbent;
1-47 parts of binder
1-94 parts of water absorbing agent; and
20-80 parts of water (see [0015]).
Mu further teaches a cat litter comprising glucomannan as absorbent.
Mu discloses that plant fiber waste as a support for the cat litter granulation process (see [0019-0020]). Mu further teaches grass fiber as the plant fiber waste (see [0166]). It would have been obvious to one of ordinary skill in the art at the time of filing of the invention to prepare the absorbent material comprising glucomannan as disclosed by Bergeron where the absorbent material comprises grass fiber as a supporting material as disclosed by Mu so that the absorbent can be granulated into cat litter with bacteriostat and deodorant properties.
Regarding claim 6, Mu discloses a cat litter comprising clay (i.e., a non-biodegradable material) as a deodorant (see [0166]). It would have been obvious to one of ordinary skill in the art at the time of filing of the invention to prepare the absorbent material comprising glucomannan as disclosed by Bergeron where the absorbent material comprises as a deodorant additive as disclosed by Mu so that the absorbent material can be used as a cat litter with deodorant properties.
Regarding claim 9, Mu discloses a cat litter comprising clay (i.e., a non-biodegradable material) as a deodorant (see [0166]). It would have been obvious to one of ordinary skill in the art at the time of filing of the invention to prepare the absorbent material comprising glucomannan as disclosed by Bergeron where the absorbent material comprises as a deodorant additive as disclosed by Mu so that the absorbent material can be used as a cat litter with deodorant properties.
Regarding claim 11, Mu discloses a cat litter comprising clay (i.e., a non-biodegradable material) as a deodorant (see [0166]). It would have been obvious to one of ordinary skill in the art at the time of filing of the invention to prepare the absorbent material comprising glucomannan as disclosed by Bergeron where the absorbent material comprises as a deodorant additive as disclosed by Mu so that the absorbent material can be used as a cat litter with deodorant properties.
Citation of Pertinent Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Pang et al (CN 110150162) discloses a konjac glucomannan cat litter comprising a copolymer with acrylic acid (see Abstract).
Conclusion
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/MICHAEL FORREST/Primary Examiner, Art Unit 1738