DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
2. The Preliminary Amendment filed on December 18, 2025, has been received and entered.
3. Applicant’s election with traverse of Group I (claims 1-3) on December 18, 2025, is acknowledged. The traversal is on the grounds that the method claims have been amended and should be rejoined with the product claims. This argument is not persuasive because there is a search burden. Thus the Restriction Requirement of record is proper and final.
Claim Disposition
4. Claims 1-19 are pending. Claims 1-3 are under examination. Claims 4-19 are withdrawn from consideration as directed to a non-elected invention.
Information Disclosure Statement
5. To date no Information Disclosure Statements have been filed. Applicant is reminded of the duty to disclose.
Drawing
6. The drawings filed on September 5, 2025, have been accepted by the examiner.
Abstract Objection
7. The abstract is objected to for the following informalities:
Applicant is reminded of the proper content of an abstract of the disclosure.
A patent abstract is a concise statement of the technical disclosure of the patent and should include that which is new in the art to which the invention pertains. The abstract should not refer to purported merits or speculative applications of the invention and should not compare the invention with the prior art.
If the patent is of a basic nature, the entire technical disclosure may be new in the art, and the abstract should be directed to the entire disclosure. If the patent is in the nature of an improvement in an old apparatus, process, product, or composition, the abstract should include the technical disclosure of the improvement. The abstract should also mention by way of example any preferred modifications or alternatives.
Where applicable, the abstract should include the following: (1) if a machine or apparatus, its organization and operation; (2) if an article, its method of making; (3) if a chemical compound, its identity and use; (4) if a mixture, its ingredients; (5) if a process, the steps.
Extensive mechanical and design details of an apparatus should not be included in the abstract. The abstract should be in narrative form and generally limited to a single paragraph within the range of 50 to 150 words in length.
See MPEP § 608.01(b) for guidelines for the preparation of patent abstracts.
Claim objection
8. Claims 2-3 are objected to for the following informalities:
For clarity and precision of claim language it is suggested that claim 2 is amended to recite “….further comprising[[further comprises]]…”.
For clarity and precision of claim language it is suggested that claim 3 is amended to read, “The composition of claim 1, optionally further comprising……to provide [[required]] color to a bio-plastic object”.
Appropriate correction is required.
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.
9. Claims 1-3 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AlA), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or
a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The claimed invention is directed to “a composition that comprises water, gelatin, agar, essential oils and anti-mold paint additive, however, there is no recitation of an activity for the composition (for example a primer can have an anti-mold additive that is also used in paints. The claims do not establish what the composition is for or amounts of the ingredients. There are no indicia in the claims or the instant specification of what is considered to be essential oils, nor does the specification teach the anti-mold additives desirable. The claimed invention is not adequately described because it is overly broad. The specification at paragraph [0027] discloses that, “the innovative method involves pouring the mixture onto diverse non-stick surfaces, and creating imprints that distinguish the material's texture. The material is used similarly to woven fabric, allowing it to be draped, shaped, and molded into wearable garments, accessories, and other objects, echoing the flexibility of textiles. By draping the material over cylinders and objects, it hardens into forms like vases and vessels. This technique combines mold-less forming with the advantage of rigid shapes. The process includes augmenting some produced items with epoxy or a certain coating, adding an extra layer of invention to the final products. The use of bio-plastic fabric is more environmentally friendly compared to traditional textiles. The mixture is lightweight, biodegradable, and requires minimal energy to produce. The gelatin-based bioplastic can achieve traditional fabric draping techniques like pleats, tucks, gathers, and ruching, further expanding its range of applications”. The claimed invention is not commensurate in scope with the disclosure and is overly broad.
The composition as claimed reads on many different types of composition, based on the breath of the claims and encompasses a large genus. A large variable genus of products, are encompassed in the claims as well as modifications that are not described. The specification fails to provide a representative number of species for the claimed genus to show that applicant was in possession of the claimed genus. A representative number of species means that the species, which are adequately described, are representative of the entire genus.
The written description requirement for a claimed genus may be satisfied through sufficient description of a representative number of species by actual reduction to practice, disclosure of drawings, or by disclosure of relevant identifying characteristics, for example, structure or other physical and/or chemical properties, by
functional characteristics coupled with a known or disclosed correlation between function and structure, or by a combination of such identifying characteristics, sufficient to show the applicant was in possession of the claimed genus. Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991), states that "applicant must convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention. The invention is, for purposes of the ‘written description’ inquiry, whatever is now claimed" (See page 1117). The specification does not "clearly allow persons of ordinary skill in the art to recognize that [he or she] invented what is claimed" (See Vas-Cath at page 1116). The skilled artisan cannot envision the detailed chemical structure of the encompassed genus, and therefore, conception is not achieved until reduction to practice has occurred, regardless of the complexity or simplicity of the method of isolation. Adequate written description requires more than a mere statement that it is part of the invention and reference to a potential method of isolating it. The compound itself is required. See Fiers v. Revel, 25 USPQ2d 1601 at 1606 (CAFC 1993).
Therefore, for all these reasons the specification lacks adequate written description, and one of skill in the art cannot reasonably conclude that the applicant had possession of the claimed invention at the time the instant application was filed.
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.
10. Claims 1-3 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 and the dependent claims hereto are indefinite for the recitation of “essential oils and anti-mold paint additive” and there are no indicia in the claims or the specification as to what these are, for instance the anti-mold additive could be a natural oil like lemon grass or clove oil or a chemical and the oils can be natural or processed. The metes bounds of the claim language is unclear.
Claim 3 lacks clear antecedent basis for the recitation of “provide required color” because there are no indicia in the claim to determine that color was required and what color?
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.
11. 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.
12. Claim(s) 1-3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ozasa et al. (US Patent No. 7332214, February 19, 2008) in view of Living Station (January 6, 2023).
The crux of the claimed invention is a composition with the ingredients of water, gelatin, agar, essential oils and anti-mold paint additives. The bio-plastic mixture is not defined in the specification, and the art sees this as water, a starch, a plasticizer like glycerin for flexibility, an acid like vinegar that are all heated and mixed to form a gel that hardens into a plastic like material upon drying (art acknowledges that recipes can vary).
Ozasa et al. teach a composition with a biodegradable molded article, said composition has water, agar, oils and additives (such as natural products that would remove mold) and teaches glycerin is in the composition for flexibility. However, the reference does not teach gelatin. The limitation in claim 3 of acrylic is also taught by the primary reference, however the optional language means it does not have to be present (see paragraphs [18] and [44] of the primary reference. However, Gelatin bio-plastic is well known in the art and one such reference is Living Station that teaches a recipe for making gelatine bioplastics and they use much of the same ingredients (has an antibacterial step instead of mold).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to arrive at the claimed invention as a whole because the combined teaching of the references renders the claims as obvious. The references are considered to be analogous art, thus motivation to combine exists. It would be obvious to add the gelatin of the secondary reference because the art teaches that the bio-plastic recipes can differ to achieve the same goal of a flexible and biodegradable product.
Moreover, the Supreme Court pointed out in KSR, “a patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR, 127 S. Ct. at 1741. The Court thus reasoned that the analysis under 35 U.S.C. 103 "need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the “inferences and creative steps that a person of ordinary skill in the art would employ.” Id. at 1741. The Court further advised that “[a] person of ordinary skill is…a person of ordinary creativity, not an automation.” Id. at 1742. Therefore, the claimed invention was obvious to make and use at the time the invention was made and was prima facie obvious.
Conclusion
13. No claims are presently allowable.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HOPE A ROBINSON whose telephone number is (571) 272-0957. The examiner can normally be reached 9-5pm on Monday to Friday.
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/HOPE A ROBINSON/Primary Examiner, Art Unit 1652