DETAILED ACTION
Pending Claims
Claims 29-48 are pending.
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 .
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.
Claim Rejections - 35 USC § 112, 2nd paragraph (b)
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.
Claims 40-48 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.
Regarding claim 40, the claim recites the limitation "said comingling" in the germ-repellent polymer structure of claim 39. There is insufficient antecedent basis for this limitation in the claim.
Regarding claims 41-48, claim 41 contains the trademark/trade name “polaxamer 407”. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe a hydrophilic additive and, accordingly, the identification/description is indefinite. Claims 42-48 are rejected because they are dependent from claim 41 and fail to alleviate this issue.
Claim Rejections - 35 USC § 112, 4th paragraph (d)
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.
Claims 41-48 are 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.
Independent claim 29 is drawn to a germ-repellent polymer structure comprising: a base plastic selected from polypropylene homopolymer, polypropylene impact copolymer, or acrylonitrile butadiene styrene; and a hydration layer, the hydration layer comprising one or more hydrophilic additives and being surface-grafted on the base plastic directly or in the presence of an intermediate plastic that is compatible to both the base plastic and the hydrophilic additives for stabilizing the hydration layer on the base plastic. Claim 41 is drawn to a method of making a germ-repellent plastic including the germ-repellent polymer structure of claim 29. Claims 41 states that: “the base plastic is one or more selected from acrylonitrile butadiene styrene (ABS), polypropylene homopolymer (PPH), and/or polypropylene impact copolymer (PPIC),” which improperly broadens the scope of the singular base plastic presented in claim 29. Claim 41 also states that: “the intermediate plastic is one or more selected from styrene maleic anhydride (SMA), random polyolefin grafted maleic anhydride, ethylene, butyl acrylate, and maleic anhydride random terpolymer, and/or polypropylene grafted maleic anhydride,” which improperly broadens the scope of the singular intermediate plastic presented in claim 29.
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.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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.
Claims 29-31, 33, 34, 36, and 38-40 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Meng et al. (WO 2019/195982 A1).
Regarding claims 29-31, 33, 34, 36, and 38, Meng et al. disclose: (29) a germ-repellent polymer structure (Abstract; Example 1 on pages 20-21; Example 4 on pages 24-26) comprising:
a base plastic selected from polypropylene homopolymer, polypropylene impact copolymer, or acrylonitrile butadiene styrene (Example 1: “PP”; Example 4: “ABS”); and
a hydration layer, the hydration layer comprising one or more hydrophilic additives and being surface-grafted on the base plastic directly or in the presence of an intermediate plastic that is compatible to both the base plastic and the hydrophilic additives for stabilizing the hydration layer on the base plastic (Example 1: “ceteareth”; Example 4: “PEG sorbitol hexaoleate”; see also page 7, lines 4-8 and page 8, lines 1-3);
wherein the germ-repellent polymer structure has at least 90% reduction in bacterial growth (Example 1 on pages 20-21; Example 4 on pages 24-26);
(30) wherein the one or more hydrophilic additive is/are mixed in a range of approximately 0.1 to 20 wt.% with the base plastic in a range of approximately 60 to 99 wt.% through the intermediate plastic in a range of approximately 0 to 20 wt.% (Example 1: 0.2/97.8/2 on page 20, lines 15-17; Example 4: 4.8/95.2/0 on page 24, lines 12-13), and wherein said intermediate plastic is selected from a maleic anhydride grafted copolymer having at least one polymeric segment compatible to the base plastic (Example 1: page 20, line 8);
(31) wherein the one or more hydrophilic additives is/are selected from a hydrophilic non-ionic surfactant having at least one hydrophilic block of polyethylene glycol (Example 1: “ceteareth”; Example 4: “PEG sorbitol hexaoleate”; see also page 7, lines 4-8 and page 8, lines 1-3);
(33) wherein the one or more hydrophilic additives is a polyethylene glycol ether with the following formula:
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46
378
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wherein m = 15 or 17, or
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56
290
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, wherein n is 16-20,
(Example 1: “ceteareth”; see also page 7, lines 4-8);
(34) wherein the one or more hydrophilic additives is polyethylene glycol sorbitol hexaoleate (Example 4: “PEG sorbitol hexaoleate”; see also page 8, lines 1-3);
(36) wherein the one or more hydrophilic additives is/are in a range of 0.1 to 5 wt.%; the base plastic is in a range of 85 to 99.9 wt.%; the intermediate plastic is in a range of 0 to 10 wt.% (Example 1: 0.2/97.8/2 on page 20, lines 15-17; Example 4: 4.8/95.2/0 on page 24, lines 12-13); and
(38) wherein said bacterial growth on said surface of the base plastic is a biofilm formed by bacteria selected from E. coli or S. aureus (Example 1 on pages 20-21; Example 4 on pages 24-26).
Meng et al. fail to explicitly disclose: (29-31, 33, 34, 36 & 38) wherein the germ-repellent polymer structure has maximum 20% change in mechanical strength from an original mechanical strength, the original mechanical strength corresponding to a strength of the base plastic before formation of the hydration layer on the base plastic. However, the skilled artisan would have expected the exemplary embodiments of Meng et al. to be capable of satisfying this property because the exemplary embodiments of Meng et al. satisfy all of the material/chemical limitations of the claimed invention. At the very least, the skilled artisan would have expected the teachings of Meng et al. to obviously embrace embodiments capable of satisfying this property because the teachings of Meng et al. satisfy all of the material/chemical limitations of the claimed invention.
Therefore if not anticipated by Meng et al., the skilled artisan would have expected the teachings of Meng et al. to obviously embrace embodiments capable of satisfying the instantly claimed mechanical strength property because the teachings of Meng et al. satisfy all of the material/chemical limitations of the claimed invention.
Regarding claims 39 and 40, the teachings of Meng et al. are as set forth above and incorporated herein. Meng et al. disclose a process that: (40) comprises melt extrusion (Example 1: page 20, lines 11-13). They fail to explicitly disclose: (39 & 40) wherein the base plastic, the one or more hydrophilic additives and the intermediate plastic form a masterbatch. However, it is important to note that this is a product-by-process limitation. In light of this, it has been found that, “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process,” – In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (see MPEP 2113). In the instant case, the “germ-repellent polymer structure” of the claimed invention is the same as or obvious from the product of Meng et al., regardless of how the product of Meng et al. is made.
Claim Rejections - 35 USC § 103
Claims 35 and 41-48 are rejected under 35 U.S.C. 103 as being unpatentable over Meng et al. (WO 2019/195982 A1).
Regarding claims 41, 44, and 48, the teachings of Meng et al. are as set forth above and incorporated herein to obviously satisfy the material/chemical limitations of the base plastic, the hydrophilic additive, the intermediate plastic, and the germ-repellent polymer structure thereof, as set forth in claims (41, 44 & 48). Meng et al. disclose a method of making a germ-repellent plastic including their germ-repellent polymer structure. They melt-mix a base plastic and a masterbatch at a temperature ranging from 110 oC to 200 oC, wherein the masterbatch includes the hydrophilic additive and the intermediate plastic. This melt-mix material is then extruded into a sheet (see Example 1). Accordingly, this embodiment fails to disclose: (41, 44 & 48) injection molding base plastic and the masterbatch to form the germ-repellent polymer structure. However, the general teachings of Meng et al. contemplate various other comingling techniques and combinations thereof (see page 14, lines 4-9). These include injection molding.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to perform injection molding in the method of Meng et al. because: (a) the exemplary embodiment of Meng et al. involves extruding their melt-mix material into a sheet; (b) the general teachings of Meng et al. contemplate various other comingling techniques and combinations thereof; and (c) the other comingling techniques of Meng et al. include injection molding.
Regarding claims 42 and 46, the teachings of Meng et al. are as set forth above and incorporated herein. As discussed above, the exemplary embodiment of Meng et al. melt-mixes a base plastic and a masterbatch, wherein the masterbatch includes the hydrophilic additive and the intermediate plastic. This melt-mix material is then extruded into a sheet. Accordingly, this sequence of adding ingredients fails to disclose: (42) injection molding the base plastic and the masterbatch, wherein the masterbatch is prepared by comingling approximately 0.1 to 20 wt.% of one or more hydrophilic additives, 60 to 90 wt.% of base plastic, and 0 to 20 wt.% of intermediate plastic at a first temperature of 110 to 230 °C; and (46) wherein the base plastic, hydrophilic additive and intermediate plastic are mixed to form the masterbatch followed by extruding the masterbatch and the base plastic to form the germ-repellent polymer structure. However, it has been found that the selection of any order of mixing ingredients is prima facie obvious in the absence of new or unexpected results – see MPEP 2144.04 IV. C.
Regarding claim 43, the teachings of Meng et al. are as set forth above and incorporated herein. They fail to explicitly disclose: (43) wherein the preparing of the masterbatch includes: selecting the hydrophilic additives to match the base plastic before comingling thereof with one or both of the base plastic and/or intermediate plastic, selecting the hydrophilic additives that are capable of being homogeneously dispersed in the base plastic during a molten phase in extrusion, and orienting the hydrophilic moiety of the hydrophilic additives to the surface of the base plastic during cooling phase after extrusion. However, these steps appear to be obviously embraced by the exemplary embodiment of Meng et al. (see Example 1), where selections (and subsequent extrusion) include a polypropylene base plastic, an ethylene/acrylic acid/maleic acid terpolymer intermediate plastic, and a ceteareth hydrophilic additive.
Regarding claim 47, the teachings of Meng et al. are as set forth above and incorporated herein. As discussed above, the exemplary embodiment of Meng et al. melt-mixes a base plastic and a masterbatch, wherein the masterbatch includes the hydrophilic additive and the intermediate plastic. This melt-mix material is then extruded into a sheet. Accordingly, they fail to disclose a step of: (47) further comprising pelletizing the germ-repellent plastic after cooling from extrusion. However, the general teachings of Meng et al. identify this sheet material as an intermediate plastic item that can be transformed and/or worked into a final plastic item (see page 16, lines 12-17). They contemplate other intermediate forms, including pellets (see page 16, line 15).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to prepare pellets with the extruded melt-mix of Meng et al. because: (a) the exemplary melt-mix material of Meng et al. is extruded into a sheet; (b) the general teachings of Meng et al. identify this sheet material as an intermediate plastic item that can be transformed and/or worked into a final plastic item; (c) Meng et al. contemplate other intermediate forms; and (d) the other intermediate forms of Meng et al. include pellets.
Regarding claims 35 and 45, the teachings of Meng et al. are as set forth above and incorporated herein. The exemplary embodiments of Meng et al. fail to disclose: (35) further comprising a slip additive for reducing surface friction and facilitating mold release, wherein the slip additive is selected from stearyl stearate, stearyl behenate, behenyl behenate, ethyl behenate, behenyl acetate, palmityl myristate, or palmityl palmate, or any other compounds; and (45) further comprising adding a slip additive before the injection molding, wherein the slip additive is selected from stearyl stearate, stearyl behenate, behenyl behenate, ethyl behenate, behenyl acetate, palmityl myristate, or palmityl palmate, or any other compounds capable of lowering friction of the base plastic during injection molding. However, the general teachings of Meng et al. contemplate the use of various additives (see page 13, lines 1-6). These include “lubricants”, which would have been capable of lowering friction of the base plastic during injection molding.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to prepare the exemplary embodiments of Meng et al. with the instantly claimed slip additive because: (a) the general teachings of Meng et al. contemplate the use of various additives; and (b) the additives of Meng et al. include “lubricants”, which would have been capable of lowering friction of the base plastic during injection molding.
Claims 32 and 37 are rejected under 35 U.S.C. 103 as being unpatentable over Meng et al. (WO 2019/195982 A1) in view of Swedberg et al. (US 2003/0230490 A1).
Regarding claims 32 and 37, the teachings of Meng et al. are as set forth above and incorporated herein. The hydrophilic additives of Meng et al. include various materials/surfactants having moieties derived from polyethylene glycol (see page 7, line 2 through page 8, line 6). They fail to disclose: (32) wherein the one or more hydrophilic additives is a triblock copolymer having two hydrophilic blocks of polyethylene glycol on both ends sandwiching a central hydrophobic block of polypropylene glycol with the following formula:
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80
278
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wherein x:y:z is 98-101:56:98-101; and (37) wherein the triblock copolymer associates with the one or more hydrophilic additives to orient the polyethylene glycol moiety of the hydrophilic additive towards the surface of the base plastic such that a reduction by at least 95% of the bacterial growth on said base plastic surface is resulted.
Swedberg et al. disclose a related material where a polymeric surface is modified by a biofouling resistant (germ-repellent) surfactant composition (see Abstract). Similar to Meng et al., these include polyalkylene oxide surfactants (see paragraphs 0016-0018). They demonstrate that the instantly claimed triblock copolymers are recognized in the art as suitable polyalkylene oxide surfactants capable of providing germ-repellent characteristics to plastic materials (see paragraph 0017). In light of this, it has been found that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination – see MPEP 2144.07.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to formulate the germ-repellent polymer material of Meng et al. with the instantly claimed triblock copolymer hydrophilic additive because: (a) the hydrophilic additives of Meng et al. include various materials/surfactants having moieties derived from polyethylene glycol; (b) Swedberg et al. disclose a related material where a polymeric surface is modified by a biofouling resistant (germ-repellent) surfactant composition; (c) similar to Meng et al., these surfactants include polyalkylene oxide surfactants; (d) Swedberg et al. demonstrate that the instantly claimed triblock copolymers are recognized in the art as suitable polyalkylene oxide surfactants capable of providing germ-repellent characteristics to plastic materials; and (e) it has been found that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination.
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 29-31, 33, 34, 36, and 38-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 12 of U.S. Patent No. 12,202,947.
Claims 35 and 41-48 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 12, 15, and 16 of U.S. Patent No. 12,202,947 in view of Lau et al. (US 2017/0135344 A1).
Regarding claims 29, 31, 33, 34, and 38, the germ-repellent plastic of patented claim 12 (including the limitations of intermediate claims 8 & 7 and independent claim 1) satisfies all of the material/chemical limitations of the claimed invention. In light of this, the skilled artisan would have expected the germ-repellent polymer of patented claim 12 to satisfy or obviously embrace embodiments capable of satisfying the instantly claimed bacterial growth reduction and mechanical strength properties.
Regarding claims 30 and 36, the germ-repellent plastic of patented claim 12 has a base-plastic content of about 97.8 to 99.99 wt% which obviously satisfies the instantly claimed base-plastic content. Furthermore, the balance of this range would have obviously embraced the instantly claimed amounts of hydrophilic additive and intermediate plastic. It has been found that in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists – see MPEP 2144.05.
Regarding claims 39 and 40, it is important to note that these are product-by-process limitations. In light of this, it has been found that, “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process,” – In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (see MPEP 2113). In the instant case, the “germ-repellent polymer structure” of the claimed invention is the same as or obvious from the germ-repellent plastic product of patented claim 12, regardless of how the patented germ-repellent plastic is made.
Regarding claims 41, 43, 44, and 48, the method of patented claims 15 and 16 fails to disclose that the base plastic and the masterbatch are injection molded. Lau et al. disclose a similar material (see Abstract; paragraphs 0019-0022) and a process of making an article (see claims 1-12). They demonstrate the injection molding is recognized in the art as a suitable technique for forming an article with this type of base plastic and masterbatch material (see claims 1-2).
Regarding claims 42 and 46, the method of patented claims 15 and 16 fails to disclose the instantly claimed sequence of adding ingredients. However, it has been found that the selection of any order of mixing ingredients is prima facie obvious in the absence of new or unexpected results – see MPEP 2144.04 IV. C.
Regarding claim 47, the teachings of Lau et al. demonstrate that it is recognized in the art to pelletize this type of blended/comingled material for further use (see paragraph 0060).
Regarding claims 35 and 45, the teachings of Lau et al. demonstrate that lubricants are recognized in the art as suitable additives for this type of material (see paragraph 0037). In light of this, it has been found that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination – see MPEP 2144.07.
Conclusion
The international search report cited one X-reference. This has been considered and applied as prior art.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Meng et al. (WO 2019/195981 A1 or US 2021/0038854 A1 or US Pat. No. 11,970,604) disclose a related material where the base plastic is a polymer blend material.
Communication
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL J FEELY whose telephone number is (571)272-1086. The examiner can normally be reached Monday-Friday 8am-5pm.
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/MICHAEL J FEELY/Primary Examiner, Art Unit 1766
March 17, 2026