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
The present application, filed July 28, 2023, claims the benefit of U.S. provisional applications 63/393506, 63/393509, and 63/393515, all filed July 29, 2022.
Status of the Application
Applicant’s communication, received March 12, 2026, wherein claims 1-4 and 8-9 are canceled, claims 5, 10, and 14 are amended, and new claims 18-19 are added, is acknowledged.
Claims 5-7 and 10-19 are pending and examined on the merits herein.
Withdrawn Objections
Applicant’s amendment, received March 12, 2026, with respect to the objections to claims 5 and 8 for minor informalities, has been fully considered and found to be persuasive to remove the objection because claim 8 is canceled and claim 5 is amended to correct the informality. Therefore the objections are withdrawn.
Withdrawn Rejections
Applicant’s amendment, received March 12, 2026, with respect to the rejection of claims 8, 10, and 14-17 under 35 USC § 112(b) as indefinite, has been fully considered and found to be persuasive to remove the rejection because claim 8 is canceled and claims 10 and 14 are amended to clarify the method steps describe reacting the starch with the mixed acid anhydride. Therefore the rejection is withdrawn.
Applicant’s amendment, received March 12, 2026, with respect to the rejection of claim 5 under 35 USC § 102 as anticipated by Yang, as evidenced by PubChem, Rivard, and Aburto, has been fully considered and found to be persuasive to remove the rejection because claim 5 is amended to require an esterification catalyst selected from an alkaline metal hydroxide or amino compound, which Yang does not teach. Therefore the rejection is withdrawn.
Applicant’s amendment, received March 12, 2026, with respect to the rejection of claims 5, 6, and 11 under 35 USC § 102 as anticipated by Frische ‘067, as evidenced by PubChem, Peydecastaing, Rivard, and Aburto, has been fully considered and found to be persuasive to remove the rejection because claim 5 is amended to require an esterification catalyst selected from an alkaline metal hydroxide or amino compound, which embodiments of Frische ‘067 cited in the previous rejection do not teach. Therefore the rejection is withdrawn.
Applicant’s amendment, received March 12, 2026, with respect to the rejection of claims 5, 6, 11, and 12 under 35 USC § 102 as anticipated by Frische ‘140, as evidenced by PubChem, Peydecastaing, Rivard, and Aburto, has been fully considered and found to be persuasive to remove the rejection because claim 5 is amended to require an esterification catalyst selected from an alkaline metal hydroxide or amino compound, which embodiments of Frische ‘140 cited in the previous rejection do not teach. Therefore the rejection is withdrawn.
Applicant’s amendment, received March 12, 2026, with respect to the rejection of claims 5-7 under 35 USC § 102 as anticipated by Stove, as evidenced by Peydecastaing, has been fully considered and found to be persuasive to remove the rejection because claim 5 is amended to require an esterification catalyst selected from an alkaline metal hydroxide or amino compound, which embodiments of Stove cited in the previous rejection do not teach. Therefore the rejection is withdrawn.
Applicant’s amendment, received March 12, 2026, with respect to the rejection of claims 5 and 7-9 under 35 USC § 103 as unpatentable over Frische ‘067, as evidenced by PubChem, Peydecastaing, Rivard, and Aburto, has been fully considered and found to be persuasive to remove the rejection because claim 5 is amended to require the steps of preparing a mixed acid anhydride by reacting an acid anhydride and carboxylic acid having 10 to 24 carbon atoms, and thereafter reacting the mixed acid anhydride with starch, which were not recited in the previous claims. Therefore the rejection is withdrawn.
Applicant’s amendment, received March 12, 2026, with respect to the rejection of claims 5, 8-10, and 12-17 under 35 USC § 103 as unpatentable over Frische ‘140 in view of Nickel, as evidenced by PubChem, Peydecastaing, Rivard, and Aburto, has been fully considered and found to be persuasive to remove the rejection because claim 5 is amended to require the steps of preparing a mixed acid anhydride by reacting an acid anhydride and carboxylic acid having 10 to 24 carbon atoms, and thereafter reacting the mixed acid anhydride with starch, which were not recited in the previous claims. Therefore the rejection is withdrawn.
Applicant’s amendment, received March 12, 2026, with respect to the rejection of claim 10 under 35 USC § 103 as unpatentable over Frische ‘140 in view of Nickel, as evidenced by PubChem, Peydecastaing, Rivard, and Aburto, has been fully considered and found to be persuasive to remove the rejection because claim 5 is amended to require the steps of preparing a mixed acid anhydride by reacting an acid anhydride and carboxylic acid having 10 to 24 carbon atoms, and thereafter reacting the mixed acid anhydride with starch, which were not recited in the previous claims. Therefore the rejection is withdrawn.
Applicant’s amendment, received March 12, 2026, with respect to the provisional nonstatutory double patenting rejection of claim 5 as unpatentable over the claims of U.S. patent application 18/227,665, has been fully considered and found to be persuasive to remove the rejection because claim 5 is amended to require an esterification catalyst and to require the steps of preparing a mixed acid anhydride by reacting an acid anhydride and carboxylic acid having 10 to 24 carbon atoms, and thereafter reacting the mixed acid anhydride with starch, which were not recited in the previous claim 5. Therefore the rejection is withdrawn.
Applicant’s amendment, received March 12, 2026, with respect to the provisional nonstatutory double patenting rejection of claims 5-17 as unpatentable over the claims of U.S. patent application 18/227,665 in view of Frische ‘140 and Nickel, has been fully considered and found to be persuasive to remove the rejection because claim 5 is amended to require the steps of preparing a mixed acid anhydride by reacting an acid anhydride and carboxylic acid having 10 to 24 carbon atoms, and thereafter reacting the mixed acid anhydride with starch, which were not recited in the previous claim 5. Therefore the rejection is withdrawn.
Applicant’s amendment, received March 12, 2026, with respect to the provisional nonstatutory double patenting rejection of claim 10 as unpatentable over the claims of U.S. patent application 18/227,665 in view of Frische ‘140, Nickel, and Tanaka, has been fully considered and found to be persuasive to remove the rejection because claim 5 is amended to require the steps of preparing a mixed acid anhydride by reacting an acid anhydride and carboxylic acid having 10 to 24 carbon atoms, and thereafter reacting the mixed acid anhydride with starch, which were not recited in the previous claim 5. Therefore the rejection is withdrawn.
The following are new and/or modified grounds of rejection, necessitated by Applicant’s amendments received March 12, 2026, wherein the subject matter of the previous claim 9 is incorporated into independent claim 5, and wherein independent claim 5 is amended to require the steps of preparing a mixed acid anhydride by reacting an acid anhydride and carboxylic acid having 10 to 24 carbon atoms, and thereafter reacting the mixed acid anhydride with starch.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 5-7 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Frische ‘067 (U.S. Patent no. 5,367,067; cited in IDS received February 12, 2024), in view of Peydecastaing (Peydecastaing, J.; et al. European Journal of Lipid Science and Technology 2009, vol. 111, pp. 723-729; cited in IDS received August 21, 2023), Rivard (Rivard, C.; et al. Enzyme and Microbial Technology 1995, vol. 17, pp. 848-852; cited in restriction requirement mailed November 10, 2025), and Aburto (Aburto, J.; et al. Journal of Applied Polymer Science 1999, vol. 74, pp. 1440-1451; cited in restriction requirement mailed November 10, 2025), as evidenced by PubChem (PubChem entry for Palmitic acid; cited in previous office action).
Frische ‘067 teaches an embodiment in which 23 g of Hylon VII are supplied to a four-neck flask and blended by stirring with 80 g of acetic anhydride and 8 g of palmitic acid. Frische ‘067 teaches that after a reaction time of 5 hours, the product is isolated, and the degree of substitution of said product is around 2.5 (column 6, Example 4, lines 33-41). In this example, acetic anhydride is the anhydride recited in claim 5. As evidenced by PubChem, palmitic acid is a C16 carboxylic acid (p. 1, molecular formula).
In addition, Frische ‘067 teaches that Hylon VII is a high amylose corn starch (column 8, lines 18-19), as required by claim 11.
Frische ‘067 further teaches that in their method, novel starch materials and products having different properties are obtained by minor additions of relatively long-chain fatty acids (e.g., palmitic or stearic acid in the form of the free acids and/or as fatty acid chlorides) during the acetate formation by means of the starch fat acyl compound (e.g., acetic anhydride or the corresponding mixed anhydrides) (column 4, lines 47-54).
In addition, following examples in which palmitic acid is used to acylate starch, Frische ‘067 teaches that numerous other relatively long-chain fatty acids such as C6-C24, saturated, monounsaturated and polyunsaturated (as occurring in natural oils and fats), can be substituted in place of palmitic acid and its chloride (column 6, lines 52-55).
Moreover, Frische ‘067 teaches examples in which NaOH is added to the solution (for example, see column 6, lines 20-27, which involves a reaction between starch, acetic anhydride, palmitic acid chloride). Frische ‘067 further teaches that NaOH may be used as the catalyst in these reactions (column 7, lines 50-51).
Frische ‘067 does not teach explicitly teach preparing a mixed acid anhydride reacting an acid anhydride and carboxylic acid having 10 to 24 carbon atoms, and thereafter reacting the mixed acid anhydride with starch in the presence of an esterification catalyst selected from an alkaline metal hydroxide or amino compound, as required by claim 5. In addition, Frische ‘067 does not teach a specific embodiment wherein the carboxylic acid is selected from the group consisting of lauric, stearic, oleic, or mixtures thereof, as recited in claim 7.
Peydecastaing teaches that oleic acid and acetic anhydride may react to form acetic oleic anhydride and acetic acid (p. 725, Figure 1, panel (I)).
Rivard teaches that starch (amylose) acetate is biodegradable (see p. 851, Figure 3).
Aburto teaching that starch esterified with dodecanoic ester substituents (derived from a C12 fatty acid) or with octadecanoic ester substituents (derived from a C18 fatty acid) are degraded during exposure to activated sludge (p. 1448, Figure 5, samples DODST2.7, OCDST1.8, and OCDST2.7).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the present application to include NaOH as an esterification catalyst in the reaction of Example 4 of Frische ‘067. One of ordinary skill in the art would have been motivated to include NaOH as a catalyst in the reaction of Example 4 of Frische ‘067 because Frische ‘067 teaches similar examples in which NaOH is added to the reaction, and further teaches that NaOH may be used as a catalyst in their reactions. Accordingly, one of ordinary skill in the art would have contemplated the use of NaOH in the reaction of Example 4 of Frische ‘067, because the addition of NaOH as a catalyst may permit production of the same product in a shorter reaction time.
In addition, it would have been obvious to substitute stearic acid in place of palmitic acid in the reaction of Example 4 of Frische ‘067. One of ordinary skill in the art would have been motivated to substitute stearic acid in place of palmitic acid in the reaction of Example 4 because Frische ‘067 teaches that other long-chain fatty acids may be used in place of palmitic acid in their method, and thus one of ordinary skill in the art would have contemplated substituting the full scope of C6-C24 fatty acids suggested by Frische ‘067 in place of palmitic acid. In addition, one of ordinary skill in the art would have recognized specifically stearic acid as a substitute for palmitic acid, because Frische ‘067 expressly teaches palmitic and stearic acid as fatty acids that may be used in their products.
Frische ‘067 does not expressly teach reacting starch with a mixed acid anhydride to form a starch mixed ester composition, wherein the mixed acid anhydride results from a reaction of an acid anhydride and a carboxylic acid having 10 to 24 carbon atoms, and thereafter reacting the mixed acid anhydride with starch. However, the formation of the mixed acid anhydride is obvious in view of Frische ‘067 teaching that novel starch materials are obtained by minor additions of relatively long-chain fatty acids during the acetate formation by means of the starch fat acyl compound (e.g., acetic anhydride or the corresponding mixed anhydrides) (emphasis added). Moreover, in view of Peydecastaing teaching the formation of mixed acid anhydrides from symmetric anhydrides and fatty acids, one of ordinary skill in the art would have contemplated formation of the mixed anhydride for acylation by reaction of acetic anhydride and a fatty acid, as recognized by Frische ‘067.
Regarding the product of Frische ‘067 as biodegradable, because Rivard teaches that starch (amylose) acetate is biodegradable (see p. 851, Figure 3) and Aburto teaches that starch esterified with dodecanoic ester substituents (derived from a C12 fatty acid) or with octadecanoic ester substituents (derived from a C18 fatty acid) are degraded during exposure to activated sludge (p. 1448, Figure 5, samples DODST2.7, OCDST1.8, and OCDST2.7), the starch esterified with both acetate and stearate groups is also biodegradable, absent evidence to the contrary.
Therefore the invention taken as a whole is prima facie obvious.
Response to Applicant’s arguments: Regarding the previous rejections that relied on Frische ‘067 and Peydecastaing, Applicant presents the following arguments:
Applicant argues that Peydecastaing describes the synthesis of mixed anhydrides and notes that there are four ways of synthesis of such mixed anhydrides, one of which is the reaction between a symmetric anhydride, usually acetic anhydride and a carboxylic acid (Introduction, right hand column, first full paragraph), and that Peydecastaing teaches that the acetic anhydride and carboxylic acid are present in an equal molar amount (Abstract and Section 2.3). Applicant argues that nowhere does Peydecastaing teach or suggest such a reaction in the presence of a starch and therefore, it cannot be assumed that, under the conditions of Frische '067-the presence of starch-that a mixed acid anhydride is created. Rather, the skilled artisan would expect that each of the acetic anhydride and fatty acid of Frische '067 would react with the starch-not each other. This is particularly true in view of Frische '067's statement that "Examples 3 and 4 show that the substitution of the acetate by fatty acid" (col. 6, lines 45-46), which teaches the skilled artisan that the fatty acid is replacing the acetate on the starch rather than reacting with the acetic anhydride to form a mixed acid anhydride, as required by the claims.
Applicant further argues it is not evident that there is a sufficient amount of the relatively long chain fatty acids to react with the acetic anhydride to form the required mixed acid anhydride, particularly in view of the fact that Frische '067 teaches that the long chain fatty acid reacts with the starch (see col. 5, lines 4-6). Applicant argues that Peydecastaing describes that the acetic anhydride and fatty acid are present in equimolar amounts, and in contrast, in Frische's Example 3, the molar ratio of acetic anhydride to palmitic acid chloride in Frische's Example 3 is 0.78 (80/102) to 0.013 (3.44/275) which is a ratio of 60:1. As such, Peydecastaing's teachings are not relevant to the conditions of Frische '067's Example 3.
Further, Frische '067's Example 3 describes that starch is reacted with acetic anhydride for two hours and only after the two hour reaction time, is the palmitic acid chloride added. The skilled artisan would expect that the reaction of the starch with the acetic anhydride for two hours would deplete the acetic anhydride and thus, there could be no reaction between the previously added acetic anhydride and the subsequently added palmitic acid chloride. Thus, in the absence of evidence to the contrary it cannot be concluded that a mixed acid anhydride is inherently formed by Example 3 of Frische '067.
Applicant argues that as for Frische '067's Example 4, it does not teach or suggest preparing a mixed acid anhydride and thereafter reacting the mixed acid anhydride with starch in the presence of an esterification catalyst. Example 4 does not contain any catalyst. Further, Example 4 teaches that the molar ratio of acetic anhydride to palmitic acid is 0.78 (80/102) to 0.03 (8/256), which is a ratio of 26:1 and is significantly greater ratio than the 1:1 ratio taught by Peydecastaing. Thus, it cannot be concluded, based on Peydecastaing, that a mixed acid anhydride is produced which can thereafter react with the starch. This is particularly true in view of Frische '067's statement that "Examples 3 and 4 show that the substitution of the acetate by fatty acid" (col. 6, lines 45-46), which teaches the skilled artisan that the fatty acid is replacing the acetate on the starch rather than reacting with the acetic anhydride to form a mixed acid anhydride, as required by the claims.
Applicant’s arguments regarding Example 3 of Frische ‘067 are reasonable. However, the relevance of these arguments to the present rejection is unclear. Example 3 is used as an embodiment to demonstrate that sodium hydroxide may be used as a catalyst for starch acylation. However, even if the use of sodium hydroxide in Example 3 were not considered, Frische ‘067 teaches generally the use of NaOH as a catalyst in their reactions, and further suggests other alkaline solutions may also be effective (column 7, lines 50-51). Therefore, the use of NaOH is generally suggested by Frische ‘067, and not present only in Example 3.
Applicant’s remaining arguments have been fully considered but they are not found persuasive. Regarding Applicant’s arguments the skilled artisan would expect that each of the acetic anhydride and fatty acid of Frische '067 would react with the starch-not each other, in view of Peydecastaing, one of ordinary skill in the art would indeed recognize that that acetic anhydride and fatty acid may react to form the mixed acid anhydride. Therefore, even if the conditions of Example 4 of Frische ‘067 are not the same as those taught by Peydecastaing, the formation of a mixed acid anhydride from acetic anhydride and fatty acid would have been obvious in view of Peydecastaing, absent a showing that the conditions of Frische ‘067 do not form a mixed acid anhydride.
Regarding Frische '067's statement that "Examples 3 and 4 show that the substitution of the acetate by fatty acid" (col. 6, lines 45-46), which teaches the skilled artisan that the fatty acid is replacing the acetate on the starch rather than reacting with the acetic anhydride to form a mixed acid anhydride, the Office asserts that this quote of Frische ‘067 may also reasonably refer to the substitution of of an acyl group with a fatty acid group in the final starch product, and does not necessarily refer to a specific reaction mechanism proceeding by direct replacement of an acetate group of starch with a fatty acid group.
However, even if some alternative transacylation reaction were to occur under the conditions of Frische ‘067, one of ordinary skill in the art would have recognized that that a mixed acid anhydride may form under the conditions of Frische ‘067 and subsequently react with starch. Therefore, even if starch was acylated by a fatty acid group was introduced by some additional and/or alternative transacylation mechanism, it would not render the present claims nonobvious over the references recited above, because a mixed anhydride would have also been present for reaction with starch in the method taught by Frische ‘067.
Therefore, for the reasons stated above, the present rejection is maintained.
Claims 5-6 and 11-17 are rejected under 35 U.S.C. 103 as being unpatentable over Frische ‘140 (U.S. Patent no. 5,430,140; cited in previous office action) in view of Nickel (U.S. Patent no. 5,703,226; cited in previous office action), Peydecastaing (Peydecastaing, J.; et al. European Journal of Lipid Science and Technology 2009, vol. 111, pp. 723-729; cited in IDS received August 21, 2023), Rivard (Rivard, C.; et al. Enzyme and Microbial Technology 1995, vol. 17, pp. 848-852; cited in restriction requirement mailed November 10, 2025), and Aburto (Aburto, J.; et al. Journal of Applied Polymer Science 1999, vol. 74, pp. 1440-1451; cited in restriction requirement mailed November 10, 2025), as evidenced by PubChem (PubChem entry for Palmitic acid; cited in previous office action).
Frische ‘140 teaches production of a mixed starch ester from palmitic acid and acetic anhydride that has a degree of substitution of about 2.6 (column 6, lines 54-55). Frische ‘140 teaches that 50 g of starch intermediate product from Example 1 with 165 mL of acetic anhydride were heated at a temperature of 140 °C in an oil bath with reflux stirring. Frische ‘140 teaches that 13 g of palmitic acid dissolved in 20 ml of acetic anhydride were then added, and after a reaction time of 60 minutes, 23 ml of denatured ethanol were added. Frische ‘140 teaches that after 30 minutes, precipitation was carried out by adding methanol, the product was washed twice with water, filtered, and dried in air (column 6, line 56 to column 7, line 2). Frische ‘140 teaches the starch from example 1 is Hylon VII, which has about 70% amylose by weight and is interpreted herein as a high amylose starch (column 5, lines 48-50).
Moreover, Frische’ 140 teaches starch derivatives which have been obtained by derivatization of a cornstarch or pea starch are preferred for the further processing to starch materials owing to their particular properties (column 3, lines 65-68). These are interpreted as bio-based starches.
As evidenced by PubChem, palmitic acid is a C16 carboxylic acid (p. 1, molecular formula).
Frische ‘140 does not expressly teach preparing a mixed acid anhydride by reacting an acid anhydride and carboxylic acid having 10 to 24 atoms, and thereafter reacting the mixed acid anhydride with starch, in the presence of an esterification catalyst selected from an alkaline metal hydroxide or amino compound, as required by claim 5. In addition, Frische ‘140 does not teach the starch mixed ester as a biodegradable and/or compostable composition, as required by claim 5.
Nickel teaches a method of acylating starch to produce uniformly and highly substituted acylated amylose (column 2, lines 54-55). Nickel teaches that the starch starting material is soaked in a penetrating base, such as a base that penetrates the exterior surface of the starch and makes the starch less dense (column 3, lines 39-41), and that sodium hydroxide is preferred due to the relatively small size of the sodium ion (column 3, lines 49-51).
Nickel teaches that during the acylation reaction, the pH of the reaction is adjusted to a suitable pH for the acylating agent employed, preferably between pH 7 and 8, and that the pH is maintained with the addition of the suitable base, as needed (column 4, lines 25-29). Finally, Nickel teaches an example in which granular pea starch was steeped for 10 hours in a solution wherein the pH was adjusted to 10 with sodium hydroxide. After the steeping period, Nickel teaches that 10% acetic acid was added to adjust the pH to between 7 and 8, and subsequently, 10.8 grams of acetic anhydride was then added to the mixture over a 45 minute period while a pH of greater than 7 was maintained with sodium hydroxide (column 5, lines 50-57). Nickel teaches the mixture was desalinated in a basket centrifuge, the supernatant was decanted, the resulting sediment was reslurried with 1 liter of tap water per 100 grams of starch added, centrifuged again, and the resulting sediment was washed with absolute alcohol to remove most of the water. After centrifugation, Nickel teaches the resulting product was air dried (column 5, lines 57-67) (emphasis added).
Peydecastaing teaches reaction of oleic acid and acetic anhydride react to form acetic oleic anhydride and acetic acid (p. 725, Figure 1, panel (I)).
Rivard teaches that starch (amylose) acetate is biodegradable (see p. 851, Figure 3)
Aburto teaching that starch esterified with dodecanoic ester substituents (derived from a C12 fatty acid) or with octadecanoic ester substituents (derived from a C18 fatty acid) are degraded during exposure to activated sludge (p. 1448, Figure 5, samples DODST2.7, OCDST1.8, and OCDST2.7).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the present application to practice the method taught by Frische ‘140 using sodium hydroxide as a catalyst. One of ordinary skill in the art would have been motivated to practice the method taught by Frische ‘140 using sodium hydroxide as a catalyst because Nickel teaches the benefits of using sodium hydroxide to maintain a pH greater than 7 during acetylation of starch using an anhydride substrate, and accordingly, one of ordinary skill in the art would have reasonably applied the teachings of Nickel to maintain a pH greater than 7 when practicing the method of Frische ‘140.
Regarding the limitation requiring preparing a mixed acid anhydride by reacting an acid anhydride and a carboxylic acid having 10 to 24 atoms, because Frische ‘140 teaches the reaction of acetic anhydride and palmitic acid prior to reaction with starch, and because Peydecastaing teaches reaction of an anhydride and fatty acid may produce a mixed anhydride, one of ordinary skill in the art would have recognized that formation of a mixed anhydride may occur during the reaction between acetic anhydride and palmitic acid taught by Frische ‘140.
Regarding the product of Frische ‘067 as biodegradable, in view of Rivard teaching that starch (amylose) acetate is biodegradable and Aburto teaching that starch esterified with dodecanoic ester substituents (derived from a C12 fatty acid) or with octadecanoic ester substituents (derived from a C18 fatty acid) are degraded during exposure to activated sludge (p. 1448, Figure 5, samples DODST2.7, OCDST1.8, and OCDST2.7), one of ordinary skill in the art would have recognized the starch esterified with both acetate and palmitate groups taught by Frische ‘140 as biodegradable.
Accordingly, claims 5, 6, and 11 are obvious over Frische ‘140 in view of Nickel, Peydecastaing, Rivard, and Aburto.
Regarding the method of claims 12-13, it would have been prima facie obvious to subsequently wash the water-washed starch mixed ester taught by Frische ‘140 with an alcohol to form an alcohol-washed starch mixed ester composition. One of ordinary skill in the art would have been motivated to subsequently to wash the water-washed starch mixed ester taught by Frische ‘140 with an alcohol to from an alcohol-washed starch mixed ester composition because Nickel teaches washing a starch acetate product with absolute alcohol to remove most of the water from the sample. Accordingly, one of ordinary skill in the art would have contemplated, after washing the product of Frische ‘140 with water, a subsequent washing step with absolute alcohol to remove water from the starch product and facilitate drying of said product.
Regarding the method of claim 14, in view of Nickel teaching the benefits of adding sodium hydroxide during acylation to maintain a pH greater than 7, one of ordinary skill in the art would have contemplated addition of sodium hydroxide as necessary to maintain a pH greater than 7, which is optimal for the acylation reaction. Accordingly, when mixing the starch product with acetic anhydride as taught by Frische ‘140, one of ordinary skill in the art would have contemplated supplementing the mixture with sodium hydroxide to maintain a basic pH of the reaction. Such a modification would render obvious the method claim 14, and for the same reasons described above, the high amylose starch of claim 15 and the additional wash steps of claims 16-17.
Therefore the invention taken as a whole is prima facie obvious.
Response to Applicant’s arguments: With respect to the rejections in the previous office action that relied on Frische ‘140 and Nickel, Applicant presents the following arguments: Regarding Frische ‘140, Applicant argues that Frische '140 describes a process for producing homogeneously derivatized starch and amylose which can then be further acylated with acetic acid and/or palmitic acid and/or derivatives (col. 3, lines 43-44). Applicant argues that scant details are provided regarding such acylation with Example 6 being the solely description of the alleged production of a mixed starch ester from palmitic acid and acetic anhydride. In that example, a starch intermediate formed from a reaction of cornstarch with sodium hydroxide and subsequent precipitation with methanol was mixed with acetic anhydride and reacted for 60 minutes. Thereafter, a solution of palmitic acid dissolved in acetic anhydride was added and reacted for 30 minutes, and a product was precipitated with methanol. Applicant argues that Frische '140 does not teach or suggest reacting a mixed acid anhydride with starch, in the presence of an esterification catalyst selected from an alkaline metal hydroxide or amino compound.
Regarding Nickel, Applicant argues that the skilled artisan would have dismissed the teachings of Nickel since Nickel's process seeks to produce an entirely different product than that sought by Frische '140. Applicant argues that Frische '140 teaches the production of products having a high degree of substitution, e.g., 1.5 to 3.0 (col. 3, line 47). To that end, each of Frische '140's examples, i.e., Examples 4-8, describe the production of products having a degree of substitution from 2.5 to 3.
Applicant argues that in contrast, Nickel seeks to prepare products having a degree of substitution of about 0.05 to 0.1, which is orders of magnitude less than Frische '140's products. Nickel seeks to produce products having a low degree of substitution so that the product can be used within food products such as being processed into stable clathrates for use as fat deliver systems (see col. 2, lines 18-25). Thus, the skilled artisan would not have considered Nickel's teachings of low substitution products for forming films or sheets.
Finally, regarding Frische ‘140 and Nickel, Applicant argues that Frische '140 teaches that if a mixture of starch and sodium hydroxide was reacted and neutralized (i.e., adjusting the pH to about 7) and then reacted with acetic anhydride, no reaction took place. (see Frische '140's Comparison Example 2). Applicant argues that the skilled artisan having Frische '140 in mind would not consider Nickel's teachings since they would have understood from Frische 140's Comparison Example 2 that no reaction would take place. In other words, the skilled artisan would not have added sodium hydroxide as asserted by the Rejection, because the skilled artisan
would have understood that no reaction with the starch and anhydride would have occurred. Therefore, a prima facie case of obviousness is not established, and Applicant requests the rejection be withdrawn.
Regarding Frische ‘140, as stated, because Peydecastaing teaches that a mixed anhydride may be prepared by a symmetric anhydride and carboxylic acid, one of ordinary skill in the art would have recognized that a mixed anhydride may be formed between acetic anhydride and palmitic acid, and thus acylation of starch via a mixed anhydride would have been obvious in view of Frische ‘140 and Peydecastaing.
Regarding Nickel, Nickel teaches acylation of starch via an anhydride, the same reaction taught by Frische ‘140, and thus one of ordinary skill in the art would have found the teachings of Nickel regarding this reaction relevant to Frische ‘140, even if the starch products have different degrees of substitution and different applications. Given Nickel’s teaching that a pH value of greater than 7 is beneficial for the acylation reaction, one of ordinary skill in the art, when practicing the method of Frische ‘140, would have considered use of sodium hydroxide as catalyst to maintain a desired pH value.
Regarding the results of Comparison Example 2, these data serve to emphasize the requirement that hydroxyl groups must be activated with base for acylation to occur. In Comparison Example 2, neutralization of a base-activated starch renders that starch unreactive. This example emphasizes the importance of maintaining a basic pH for acylation reactions, as taught by Nickel, and accordingly, one of ordinary skill in the art would have considered the inclusion of base (such as sodium hydroxide) especially important in starch acylation reactions.
Therefore, for the reasons stated above, the present rejection is maintained.
Claims 7 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Frische ‘140 (U.S. Patent no. 5,430,140; cited in previous office action) in view of in view of Nickel (U.S. Patent no. 5,703,226; cited in previous office action), Peydecastaing (Peydecastaing, J.; et al. European Journal of Lipid Science and Technology 2009, vol. 111, pp. 723-729; cited in IDS received August 21, 2023), Rivard (Rivard, C.; et al. Enzyme and Microbial Technology 1995, vol. 17, pp. 848-852; cited in restriction requirement mailed November 10, 2025), and Aburto (Aburto, J.; et al. Journal of Applied Polymer Science 1999, vol. 74, pp. 1440-1451; cited in restriction requirement mailed November 10, 2025), as evidenced by PubChem (PubChem entry for Palmitic acid; cited in previous office action), as applied to claims 5 and 6 above, and further in view of Frische ‘067 (U.S. Patent no. 5,367,067; cited in IDS received February 12, 2024).
Frische ‘140 teaches as described in the above rejection under 35 U.S.C. 103.
Frische ‘140 does not teach a specific embodiment that uses a carboxylic acid recited in claim 7. In addition, Frische ‘140 does not teach an embodiment in which their method of preparing a starch mixed ester is performed in a reactor and uses stearic acid, as required by claim 10.
Nickel, Peydecastaing, Rivard, and Aburto teach as described in the above rejection under 35 U.S.C. 103.
Frische ‘067 teaches as described in the above rejection under 35 U.S.C. 103. Specifically, Frische ‘067 teaches preparation of novel starch materials and products with different properties are obtained by minor additions of relatively long-chain fatty acids (e.g., palmitic or stearic acid in the form of the free acids and/or as fatty acid chlorides) during the acetate formation by means of the starch fat acyl compound (for example, acetic anhydride or the corresponding mixed anhydrides) (column 4, lines 47-54) (emphasis added).
Frische ‘067 further teaches an embodiment in which palmitic acid and acetic anhydride are used to acylate a starch substrate (column 6, Example 4, lines 33-41). In addition, following examples in which palmitic acid is used to acylate starch, Frische ‘067 teaches that numerous other relatively long-chain fatty acids such as C6-C24, saturated, monounsaturated and polyunsaturated (as occurring in natural oils and fats), can be substituted in place of palmitic acid and its chloride (column 6, lines 52-55).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the present application to substitute stearic acid in place of palmitic acid in the reaction taught by Frische ‘140. One of ordinary skill in the art would have been motivated to substitute stearic acid in place of palmitic acid in the reaction taught by Frische ‘140 because Frische ‘140 teaches an example in which palmitic acid and acetic anhydride are used to acylate starch, and because Frische ‘067 suggests either palmitic acid and stearic acid may be used in preparation of their novel starch materials. Accordingly, one of ordinary skill in the art would have recognized stearic acid as a substitute for palmitic acid, because Frische ‘067 expressly teaches palmitic and stearic acid as fatty acids that may be used in their starch products, and would have contemplated modifying the method of Frische ‘140, which is expected to make similar starch products of Frische ‘067, to use stearic acid in place of palmitic acid.
Regarding the method of claim 10, because Frische ‘140 teaches treatment of activated starch with acetic anhydride in one reaction, separately mixing acetic anhydride and palmitic acid, and then adding the acetic anhydride and palmitic acid mixture to the original starch, Frische ‘140 discloses all steps of present claim 10 except the required inclusion of sodium hydroxide in step a of claim 10. However, as described above with respect to claim 14, one of ordinary skill in the art would have contemplated addition of sodium hydroxide to the mixture of starch and acetic anhydride as necessary to maintain a pH greater than 7, which is optimal for the acylation reaction, as taught by Nickel.
Regarding the requirement that the steps a and b occur in a first reactor and a second reactor, the examiner maintains that because Frische ‘140 teaches a method that includes steps a and b happening in separate vessels, the requirement that these steps occur in different reactors is satisfied.
Therefore the invention taken as a whole is prima facie obvious.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Frische ‘140 (U.S. Patent no. 5,430,140; cited in previous office action) in view of in view of Nickel (U.S. Patent no. 5,703,226; cited in previous office action), Peydecastaing (Peydecastaing, J.; et al. European Journal of Lipid Science and Technology 2009, vol. 111, pp. 723-729; cited in IDS received August 21, 2023), Rivard (Rivard, C.; et al. Enzyme and Microbial Technology 1995, vol. 17, pp. 848-852; cited in restriction requirement mailed November 10, 2025), and Aburto (Aburto, J.; et al. Journal of Applied Polymer Science 1999, vol. 74, pp. 1440-1451; cited in restriction requirement mailed November 10, 2025), as evidenced by PubChem (PubChem entry for Palmitic acid; cited in previous office action), as applied to claim 5 above, and further in view of Frische ‘067 (U.S. Patent no. 5,367,067; cited in IDS received February 12, 2024) and Tanaka (U.S. pre-grant publication no. US 20190010251 A1; cited in previous office action).
The Office maintains that claim 10 is obvious over Frische ‘140 in view of Nickel, Peydecastaing, Rivard, Aburto, and Frische ‘067, as described in the above rejection under 35 U.S.C. 103. However, for the sake of argument, if, for example, the disclosure of Frische ‘140 does not sufficiently satisfy the term reactor recited in claim 10, then claim 10 would have been obvious over Frische ‘140 in view of Nickel, Peydecastaing, Rivard, Aburto, and further in view of Frische ‘067 and Tanaka.
Frische ‘140, Nickel, Peydecastaing, Rivard, Aburto, and Frische ‘067 teach as described in the above rejections under 35 U.S.C. 103.
Frische ‘140, Nickel, Peydecastaing, Rivard, Aburto, and Frische ‘067 do not explicitly teach reactions as occurring in reactors, as required in steps a and b of claim 10.
Tanaka teaches a method of producing cellulose acetate stearate (p. 12, [0219]. Tanaka teaches a mixed acid anhydride was prepared for acylation by adding, to a reactor purged with nitrogen, stearic acid and acetic anhydride, and stirring for 1 hour at 100° C to obtain a mixed acid anhydride (p. 12, [0222]-[0223]). Tanaka then teaches adding the mixed acid anhydride to a reactor comprising activated cellulose (p. 12, [0225], lines 1-5).
It would have been prima facie obvious to perform the mixing of starch, sodium hydroxide, and acetic anhydride, as well as the mixing of palmitic acid and acetic anhydride, as rendered obvious by Frische ‘140 in view of Nickel, Peydecastaing, Rivard, Aburto, and Frische ‘067, in reactors. One of ordinary skill in the art would have been motivated to perform the mixing of starch, sodium hydroxide, and acetic anhydride, as well as the mixing of palmitic acid and acetic anhydride in reactors because Frische ‘140 teaches separate steps of treating starch with 1) acetic anhydride and 2) mixing acetic anhydride and palmitic acid, and 3) reacting the mixtures to form a mixed starch ester, and because Tanaka teaches a similar method for esterifying cellulose and expressly performs the steps of their method in reactors. Accordingly, when considering the teachings of Tanaka, one of ordinary skill in the art would have recognized these steps may be performed in reactors, and teaching analogous steps occurring in separate reactors, would have contemplated performing the method of Frische ‘140 in view of Nickel using reactors, as required by claim 10.
Regarding the requirement of step b of claim 10 in which acetic anhydride, stearic acid, and the esterification catalyst are reacted in the second reactor, as described above with respect to claim 14, one of ordinary skill in the art would have contemplated addition of sodium hydroxide to the mixture of starch and acetic anhydride as necessary to maintain a pH greater than 7, which is optimal for the acylation reaction, as taught by Nickel.
Therefore the invention taken as a whole is prima facie obvious.
Response to Applicant’s arguments: Regarding the previous rejection of claim 10 that relied on Tanaka, Applicant argues that Tanaka fails cure the deficiencies of Frische ‘140 and Nickel.
Applicant’s argument has been fully considered but is not found persuasive. For the same reasons described above regarding Frische ‘140 and Nickel, the present rejection is maintained.
Claims 18 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Frische ‘140 (U.S. Patent no. 5,430,140; cited in previous office action) in view of Nickel (U.S. Patent no. 5,703,226; cited in previous office action), Peydecastaing (Peydecastaing, J.; et al. European Journal of Lipid Science and Technology 2009, vol. 111, pp. 723-729; cited in IDS received August 21, 2023), Rivard (Rivard, C.; et al. Enzyme and Microbial Technology 1995, vol. 17, pp. 848-852; cited in restriction requirement mailed November 10, 2025), and Aburto (Aburto, J.; et al. Journal of Applied Polymer Science 1999, vol. 74, pp. 1440-1451; cited in restriction requirement mailed November 10, 2025), as evidenced by PubChem (PubChem entry for Palmitic acid; cited in previous office action), as applied to claims 5 and 6 above, and further in view of Frische ‘067 as applied to claim 7 above, and further in view of Tanaka ‘698 (Publication no. US20030109698A1; cited in IDS received March 10, 2026).
Frische ‘140, Nickel, Peydecastaing, Rivard, Aburto, and Frische ‘067 teach as described in the above rejections under 35 U.S.C. 103. Specifically, Frische ‘140 teaches Example 6 has a degree of substitution of 2.6 (column 6, lines 54-55).
Frische ‘140, Nickel, Peydecastaing, Rivard, Aburto, and Frische ‘067 do not teach the starch mixed ester has a degree of substitution of acetate from about 0.5 to about 2.6 and a degree of substitution of carboxylate from about 0.01 to about 2.4, as recited in claim 18, and wherein the starch mixed ester has a glass transition temperature from about 125 °C to about 165 °C, as recited in claim 19.
Tanaka ‘698 teaches starch esters having short and long-chain acyl groups wherein hydrogens in reactive hydroxyl groups in the same starch molecule have been replaced by C2 short-chain acyl groups and C6-18 long chain acyl groups. Tanaka teaches that the degree of substitution by the short and long-chain acyl groups are regulated so as to make the starch ester thermo-plasticized and moldable even in the absence of a plasticizer (cover page, Abstract, lines 1-8).
Tanaka ‘698 teaches that from the viewpoint of workability, the starch ester as used herein is preferably one having a glass transition point by differential thermal analysis (JIS K 7121: referred to hereinafter as "glass transition point”) of 140°C or less, wherein the lower limit of the transition point is 80 °C (p. 1, [0015], lines 1-6).
Tanaka ‘698 further teaches to easily attain each characteristic, a starch ester having the workability or showing the glass transition point described above is preferably one wherein the degree of substitution by the long-chain acyl group is from 0.06 to 2.0, and the degree of substitution by the short-chain acyl group is from 0.9 to 2.7, and the degree of substitution by the total acyl groups is from 1.5 to 2.95. Tanaka ‘698 teaches a more preferable degree of substitution by the long-chain acyl group is from 0.1 to 1.6, the degree of substitution by the short-chain acyl group is from 1.2 to 2.1, and the degree of substitution by the total acyl groups is from 1.7 to 2.9 (pp. 1-2, [0016], lines 1-11).
Finally, Tanaka ‘698 teaches examples with different degrees of substitution by long chain and short chain acyl group, as well as their total substitution and glass transition point (p. 6, Table 1). Tanaka ‘698 teaches that based on this data, the glass transition point is significantly
lower in the presence of the long-chain acyl group than in the absence of the long-chain acyl group, even at almost the same degree of substitution of hydroxyl groups, suggesting that the starch ester can be thermo-plasticized in the absence of a plasticizer.
It would have been prima facie obvious to one of ordinary skill in the art to modify the method obvious over Frische ‘140, Nickel, Peydecastaing, Rivard, Aburto, and Frische ‘067 to prepare a starch ester with the substitution and glass transition temperature required by claims 18 and 19. One of ordinary skill in the art would have been motivated to modify the method obvious over Frische ‘140, Nickel, Peydecastaing, Rivard, Aburto and Frische ‘067 to prepare a starch ester with the substitution and glass transition temperature required by claims 18 and 19 because Frische ‘140 teaches the total degree of substitution of about 2.6, and because Tanaka ‘698 teaches preferred degrees of substitution that lie within the values recited in the present claims that would provide starch mixed esters with the glass transition temperatures preferred by Tanaka ‘698 and that overlap with the claimed range. Accordingly, one of ordinary skill in the art would have recognized the relationship between the degree of substitution of the starch ester product and its glass transition temperature, and would have contemplated modifying the method obvious over Frische ‘140, Nickel, Peydecastaing, Rivard, Aburto and Frische ‘067 to achieve a desired degree of substitution and glass transition temperature.
MPEP 2144.05 at I states: “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)”. Moreover, MPEP 2144.05 at II A states: “Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).”
Accordingly, in view of the preferred degrees of substitution and glass transition temperature taught by Tanaka ‘698, one of ordinary skill in the art would have optimized the degree of substitution of the long chain acyl group and short chain acyl group in the method obvious over Frische ‘140, Nickel, Peydecastaing, Rivard, Aburto and Frische ‘067 to produce a product with a desired glass transition temperature taught by Tanaka ‘698.
Therefore the invention taken as a whole is prima facie obvious.
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 5-7 and 10-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 13-25 of U.S. patent application 18/227,665 (reference application, herein referred to as ‘665) in view of Frische ‘140.
The present application and ‘665 are each assigned to Evercorn, Inc.
The amended claims in ‘665 received April 29, 2026 are cited in this provisional nonstatutory double patenting rejection.
Claim 13 of ‘665 claims a method of preparing a biodegradable and/or compostable
composition that includes: preparing a mixed acid anhydride by reacting an acid anhydride and a carboxylic acid having 10 to 24 carbon atoms; reacting the mixed acid anhydride with starch, in the presence of an esterification catalyst selected from an alkaline metal hydroxide or amino compound, to form a starch mixed ester composition; and mixing the starch mixed ester composition with a biodegradable polymer other than the starch mixed ester composition.
Claim 13 of ‘665 recites all limitations of present claim 5, except the requirement that the starch mixed ester is bio-based.
Frische ‘140 teaches as described in the above rejections under 35 U.S.C. 103. In addition, Frische ‘140 teaches that starch derivatives which have been obtained by derivatization of a cornstarch or peastarch are preferred (column 3, lines 65-68).
It would therefore have been prima facie obvious to practice the method claimed by ‘665 with cornstarch or peastarch, which would satisfy the requirement that the starch mixed ester is bio-based, because Frische ‘140 teaches methods for preparing starch mixed esters and states cornstarch and peastarch as preferred sources of starch. Accordingly, one of ordinary skill in the art would have reasonably contemplated practicing the method claimed by ‘665 with a cornstarch or peastarch, as taught by Frische ‘140.
Claim 14 of ‘665 depends from claim 13 and requires the acid anhydride is acetic anhydride, and claim 15 requires the carboxylic acid is selected from the group consisting of lauric, stearic, oleic, or mixtures thereof. These claims, together with Frische ‘140, render obvious present claims 6 and 7.
Claim 16 of ‘665 depends from claim 13 and requires wherein reacting the starch with the mixed acid anhydride includes: a. reacting sodium hydroxide, acetic anhydride and starch in a first reactor; b. reacting acetic anhydride and stearic acid in the presence of the esterification catalyst in a second reactor to form the mixed acid anhydride; and, c. reacting the contents of the first reactor with the contents of the second reactor to esterify the starch and form the starch mixed ester composition. This claim, together with Frische ‘140, renders obvious present claim 10.
Claim 17 of ‘665 requires the starch is a high amylase content starch, claim 18 requires further comprising water washing the starch mixed ester composition and thereafter drying to form a water-washed starch mixed ester composition, and claim 19 requires subsequent to the water washing, washing the water-washed starch mixed ester with an alcohol to form an alcohol- washed starch mixed ester composition. These claims, together with Frische ‘140, render obvious present claims 11-13.
Claim 20 of ‘665 depends from claim 13 and requires wherein reacting the starch with the mixed acid anhydride includes mixing an acid anhydride, starch, and sodium hydroxide to form a mixture and to dehydrate the starch and, thereafter adding a fatty acid containing from
10 to 24 carbons and additional acid anhydride to the mixture to esterify the starch and to form the starch mixed ester composition, and claim 21 requires the starch is a high amylose starch. These claims, together with Frische ‘140, render obvious present claims 14-15.
Claim 22 of ‘665 requires further water washing the starch mixed ester composition and thereafter drying to form a water-washed starch mixed ester composition, and claim 23 requires subsequent to the water washing, washing the water-washed starch mixed ester with an alcohol to form an alcohol-washed starch mixed ester composition. These claims, together with Frische ‘140, render obvious present claims 16-17.
Claim 24 of ‘665 depends from claim 13 and requires the starch mixed ester composition
has a degree of substitution of acetate from about 0.5 to about 2.6 and a degree of
substitution of carboxylate from about 0.01 to about 2.4, wherein the total degree of
substitution is from about 1.5 to about 2.9. Claim 25 of ‘665 claims the method of claim 13 wherein the starch mixed ester composition has a glass transition temperature from about 125 °C to about 165 °C. These claims, in view of Frische ‘140, render obvious present claims 18 and 19.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not been patented. However, a Notice of Allowance has been mailed in ‘665, and upon issue of the corresponding patent, this provisional non-statutory double patenting rejection will become a non-statutory double patenting rejection.
Conclusion
No claims are allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/B.M.B./Examiner, Art Unit 1693
/ANDREA OLSON/Primary Examiner, Art Unit 1693
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