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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 10/14/2025 has been entered.
Status of the Claims
Claims 3-5, 11, 15, 16, 19, and 20 have been canceled. Claims 6-8, 13, 14, 17, 18, and 21 have been withdrawn. Claims 1, 2, 9, 10, and 12 are pending and under current examination.
Withdrawn Objections
The objection to claims 1 and 2 is withdrawn in view of Applicant’s amendments to the claims.
Response to Arguments
Applicant’s arguments filed 10/14/2025 (hereafter, “Remarks’) have been fully considered and are addressed as follows.
Regarding the previously issued objections, Applicant’s arguments are persuasive, and these objections have been withdrawn as noted above.
Regarding the previously issued rejections of claims 1, 2, 9, 10, and 12 under 35 U.S.C. 103 as being unpatentable over CN110859099A in view of Julian, Applicant delineates the Examiner’s responsibility and cites case law on pages 5 and 6 of Remarks. In reply, the examiner has reviewed the rejection of record and maintains its propriety particularly in view of CN110859099A’s teaching especially at its claim 4 as relied upon in the rejection of record.
Applicant cites the background section of CN110859099 and argues that this references teaches away from both PLA and PBS in combination. In reply, this argument is not persuasive in view of what the reference considered as a whole reasonably suggest. Please see CN’099 at claim 4 in particular which provides for the combination claimed. Applicant’s citation to the background section establishes known properties of the claimed formulation components but does not teach away from their use or combination all together; rather it is considered to teach advantages and reasons for including each component for its known characteristics and benefits (i.e., relative biodegradability).
Applicant’s position is that CN110859099A suggests a problem trying to simultaneously provide a mechanically strong seedling tray which is also capable of completely biodegrading in situ such that this reference teaches a two part article, in alleged contrast with the instant invention which claims PLA and PBS in combination for the biodegradability and mechanical strength characteristics of these components. In reply, Applicant’s argument is noted but is not persuasive in view of the particular claim language at hand. First of all, the reason or motivation to modify the reference may suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. Moreover, the claim language at hand is drawn to a biodegradable composition comprising at least one biobased or partially biobased polymer and at least one filler as further specified in the claims. Applicant’s arguments generally appear directed to a much narrower scope of invention than what is claimed and/or a method of use to which the claims under examination are not limited.
Applicant asserts non-obviousness of an additional use of an animal matter filler. Applicant characterizes Julian’s teaching of bone meal and blood meal as fertilizers and optional additives.
In reply, again, rationale is provided in the record for why one reasonably would have expected an advantage from an animal matter filler, and the advantage does not have to be the same advantage that Applicant deems desirable in order for the prior art to render obvious the claimed invention.
On page 8 of Remarks Applicant alleges unexpected results in the specification as filed, however, it is unclear how Applicant thinks the claims are commensurate in scope and of practical and statistical significance with any experiments clearly establishing a control experiment and said evidence as Applicant purports. Accordingly, Applicant’s allegation of unexpected results are unpersuasive since it appears these results are describing characteristics inseparable from known components desirably in combination for their known properties.
Maintained Grounds of Rejection
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 1, 2, 9, 10, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over CN110859099A (previously cited) in view of US20100115836A1 (“Julian”, previously cited). No new reference cited.
The instant claims are drawn to a composition including (a) at least one biobased or partially biobased polymer comprising a combination of polymers including polybutylene succinate (PBS) and polylactic acid (PLA); and (b) at least one filler comprising processed organic matter obtained from animal matter, wherein the filler is adapted to provide mechanical stiffness to the composition and/or provide one or more nutrient(s) to soil upon degradation of the composition in soil. It is maintained that the recited functional adaptation is met when the requisite structural components “a” and “b” are included in combination in a composition which is biodegradable.
Regarding claim 1, CN110859099A teaches a seedling tray product which may be implanted into the soil without affecting the root extension of seedlings after transplantation (see abstract, in particular). The tray product comprises fully biodegradable resins, biobased fillers, inorganic fillers, and additives. The biodegradable resins may be a mixture of polybutylsuccinate (PBS) and polylactic acid (PLA)(limitation of claims 1 and 2)(see claim 4 of translation). The tray product may further comprise 5 to 30 weight percent of a biobased filler such as corn starch, bamboo flour, or wood flour, and may comprise 0 to 10 percent by weight of inorganic filler (see claim 3 in translation). CN110859099A teaches the resin may comprise polyhydroxyalkanoate additionally (see CN110859099A claim 4 for instance of translation).
CN110859099A’s biobased filler is considered “at least one filler comprising processed organic matter” as recited in claim 1, however CN110859099A’s disclosure does not specify filler comprises organic matter obtained from animal matter.
Julian cures this deficiency. Julian teaches an agricultural growth management tool which may take the form of a transfer pot or transfer tray container. The tool comprises a biodegradable polymer body and a biodegradability enhancement additive (see abstract, in particular; see also [0041]). The plantable container comprises an enhancement additive in an amount of 0.5% to 5% by weight and may further comprises substances such as bone meal and blood meal for slow release into soil (see [0016], [0029], [0030], [0034], and [0046] in particular). The biodegradable polymer may be polylactic acid (PLA) resin (see [0041]). The formulations may include polyhydroxyalkanoate ink as an identification tag (see [0041])(limitation of claim 2).
Both CN118059099A and Julian are directed to agricultural products including seedling tray and/or transfer pot growing containers. It would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made to substitute Julian’s bone meal and/or blood meal filler component for at least some of CN118059099A’s biobased filler components, with a reasonable expectation of success. One would have been motivated to do so to provide the added benefit of slow release into the soil as taught by Julian. Further, one would have been motivated to increase the amount of enhancement additive, bone or blood meal, from the amount of 0.5 to 5% as taught by Julian to the generic up to 10% including 10% as taught by CN118059099A, with a reasonable expectation of success. One would have been motivated to do so to increase the fertilizer benefit to provide greater sources of macro nutrients, secondary nutrients, and or micronutrients as taught by Julian (see [0030]).
Moreover, regarding amounts recited in claims 9 and 10, the prior art range overlapping the claimed ranges is considered to anticipate the claimed ranges because the prior art range discloses the claimed ranges with sufficient specificity. When the prior art discloses a range which touches or overlaps the claimed range, but no specific examples falling within the claimed range are disclosed, a case by case determination must be made as to anticipation. In order to anticipate the claims, the claimed subject matter must be disclosed in the reference with "sufficient specificity to constitute an anticipation under the statute." What constitutes a "sufficient specificity" is fact dependent. If the claims are directed to a narrow range, and the reference teaches a broader range, other facts of the case, must be considered when determining whether the narrow range is disclosed with "sufficient specificity" to constitute an anticipation of the claims. Compare ClearValue Inc. v. Pearl River Polymers Inc., 668 F.3d 1340, 101 USPQ2d 1773 (Fed. Cir. 2012) with Atofina v. Great Lakes Chem. Corp, 441 F.3d 991, 999, 78 USPQ2d 1417, 1423 (Fed. Cir. 2006).
Comprising the structural components recited in claims 1 and 12, and useful for the very same purpose, CN110859099A’s product is considered to meet the functional adaptation described in the last three lines of claim 1 and further in claim 12.
Conclusion
No claim is allowed.
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AUDREA B CONIGLIO whose telephone number is (571)270-1336. The examiner can normally be reached Monday - Thursday 7:00 a.m. - 5:30 p.m..
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/AUDREA B CONIGLIO/ Primary Examiner, Art Unit 1617