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 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 28 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 28, the term “high” is a relative term which renders the claim indefinite. The term “high” is not defined by the claim, 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. It is therefore unclear what exact levels of toughness are claimed. Importantly, while the instant Specification does specify that a “high” level of toughness is “similar to non-crystalline polypropylene” (c.f. instant Specification at [0004]), the Specification fails to particularly explain what constitutes a “similar” value, and thus the Specification fails to provide a definite standard for toughness.
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.
Claim 21 is 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.
Regarding claim 21, the claim merely requires that the material within claim 19 is used to coat a substrate. This limitation is recognized as an intended use limitation. Intended use limitations properly limit a claim only when the intended use results in a structural difference between the claimed invention and the prior art (see MPEP 2111.02.II.). In this case, the requirement that the material “is used to coat a substrate” implies no further limitation on the claimed biodegradable bioplastic material, and thus the intended use limitation does not result in a structural difference. Claim 21 therefore fails to further limit the subject matter of claim 19, on which it depends.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) 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.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 5, 10, 17, 19-32, and 34 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 of Salam (U.S. Patent No. 12,331,467 B2) in view of Noda (US 2007/0082982 A1). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding claims 1 and 19, claim 1 of Salam teaches a method of synthesizing a glyoxylate starch, comprising reacting a starch with 2-chloroacetamide and subsequently reacting with glyoxal (col. 7, claim 1). Glyoxal reads on the claimed “cross-linking agent” because the instant application specifies that glyoxal is a suitable cross-linking agent (c.f. instant claim 30).
The claims of Salam differ from claim 1 because it is silent with regard to the coating of a substrate or the molding of an article utilizing the inventive composition. However, in the same field of endeavor, Noda teaches thermoplastic polymer compositions comprising starch and articles made therefrom (Abstract). Noda particularly teaches that starches have been identified as a substitute for petroleum-based polymers ([0005]), and teaches use applications including coatings and molded articles ([0003]). Noda further teaches the specific use of modified starches ([0033]), which are native starches which have had their native molecular characteristics altered in any way. The synthetically glyoxylated starches of Salam fall within the purview of these modified starches, because Salam specifically teaches chemical reactions of starch (c.f. Salam claim 1). It therefore would have been obvious to one having ordinary skill in the art at the time of filing to utilize the chemically- glyoxylated starch of Salam in coatings and/or molding applications. Finally, Noda teaches that the molded articles may include bottles ([0105]), which reads on the claimed limitation requiring that the molded article has a three dimensional shape and includes at least one portion having a non-uniform thickness because the instant Application indicates that bottles meet these criteria (c.f. instant Claims 19, 20, 24, and 25).
Regarding claim 5, claim 2 of Salam teaches the dissolution of the modified starch into water to form a modified starch solution (p. 7, claim 2), which is a liquid form.
Regarding claims 10, 17, 26-27, and 29, the claims of Salam are silent with regard to the claimed biodegradability, hydrophobicity, and load-bearing and extensibility characteristics. Nevertheless, Salam as modified by Noda teaches a composition which is structurally identical to the claimed composition, containing all of the same components. Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. The claimed biodegradability, hydrophobicity, and load-bearing and extensibility characteristics will therefore necessarily be present in Salam as modified by Noda, as applied above.
Regarding claims 20, 24, and 25, as described above, Noda teaches the formation of a bottle from modified starches (c.f. Noda [0105]).
Regarding claims 21-23 and 33, Noda teaches the coating of paper with modified starch compositions ([0092]), which reads on the claimed “substrate,” “paper,” and “wood pulp.” Noda further contemplates that these materials may be biodegradable ([0054]).
Regarding claim 30, Claim 1 of Salam teaches the use of Glyoxal (p. 7, claim 1).
Regarding claims 31 and 34, Noda teaches the incorporation of processing aids including, inter alia, magnesium stearate, wax acid esters and their soaps, and non-polar polyolefin waxes ([0056]), which read on the claimed “hydrophobic agent.”
Claim 33 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 of Salam (U.S. Patent No. 12,331,467 B2) in view of Noda (US 2007/0082982 A1) and further in view of Andersen (US Patent No. 5,868,824).
Regarding claim 32, as described above, Claim 1 of Salam in view of Noda teaches the formation of a biodegradable bioplastic material comprising the modified starch of the presently claimed composition. The Claims of Salam in view of Noda differ from claim 33 because they are silent with regard to the particular incorporation of zein, AKS, or PDMS.
In the same field of endeavor, Andersen teaches compositions, methods, and systems for manufacturing articles containing a starch-based binder (abstract), teaches that the mixture may include water (col. 7, line 7), and teaches the additional incorporation of rheology modifying agents useful for increasing the viscosity or cohesiveness of the inventive moldable mixture (col. 38, lines 42-44). Andersen specifically teaches the incorporation of zein for this purpose (col. 39, lines 10-15). It therefore would have been obvious to one having ordinary skill in the art at the time of filing to incorporate zein into the liquid formulation of claim 1 of Salam as modified by Noda, for the purpose of increasing the viscosity or cohesiveness of the moldable mixture.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHUA CALEB BLEDSOE whose telephone number is (703)756-5376. The examiner can normally be reached Monday-Friday 8:00 a.m. - 5:00 p.m. EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones can be reached at 571-270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSHUA CALEB BLEDSOE/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762