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
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Rejections - 35 USC § 102
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 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.
Claims 1-7 and 9-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chang et al. (CN 111961320 A, machine translation in English used for citation).
Regarding claims 1-7, 9, and 12-15, Chang teaches a water-retaining agent for shiitake mushroom substrate comprising, by weight, 65-83 parts polylactic acid, 2-5 parts silver ion modified carbon nanotubes/cellulose powder, 7-15 parts bio-natural polymers, 4-8 parts calcium ion salts, and 8-12 parts biodegradable catalysts [0011, 0019], wherein polylactic acid has good biodegradability [0014], wherein the biodegradable catalysts can shorten the degradation time [0014], wherein the biodegradable catalyst can shorten the degradation time of the water-retaining agent [0023], wherein the water-retaining agent is easily degradable [0061], is easy to degrade [0008, 0025, 0062], has a short degradation time [0008, 0025, 0062], wherein the bio-natural polymers include sodium alginate, silk fibroin, and gelatin in a mass ratio of 1-2:2-3:1-3 [0022], which reads on a biodegradable resin composition having water holding properties as claimed, wherein the biodegradable resin composition contains a biodegradable resin as claimed, wherein the biodegradable resin composition contains a seaweed-derived polysaccharide as a hydrolysis accelerator that accelerates hydrolysis of the biodegradable resin as claimed, wherein the hydrolysis accelerator contains an alginate as claimed, wherein the alginate is sodium alginate as claimed, wherein the hydrolysis accelerator is acidic or basic as claimed, wherein the hydrolysis accelerator is contained at 1.2% by mass or more and 9.2% by mass or less relative to the biodegradable resin as claimed, wherein the biodegradable resin composition contains an organic material as claimed. The % by mass is based on the calculations 7 / 83 * 1 / (1 + 3 + 3) * 100% = 1.2% and 15 / 65 * 2 / (2 + 2 + 1) * 100% = 9.2%.
The Office recognizes that all of the claimed physical properties are not positively taught by Chang, namely that the biodegradable resin composition is capable of holding 0.007 g or more and 15.0 g or less of water relative to 1 g of the biodegradable resin. However, Chang teaches/renders obvious all of the claimed ingredients, amounts, process steps, and process conditions of the biodegradable resin composition of claims 1-7, 9, and 12-15 as explained above. Furthermore, the specification of the instant application recites that the biodegradable resin composition contains a biodegradable resin and has water holding properties for accelerating hydrolysis of the biodegradable resin [0010], that the biodegradable resin composition is preferably capable of holding 0.007 g or more and 15.0 g or less of water relative to 1 g of the biodegradable resin, more preferably capable of holding 0.008 g or more and 15.0 g or less of water, and even more preferably capable of holding 0.008 g or more and 0.5 g or less of water [0010], that the biodegradation accelerator is thus preferably a material that improves the water holding capacity of a biodegradable resin [0012], and that such a biodegradation accelerator is, for example, preferably seaweed-derived polysaccharides and more preferably contains at least one of fucoidan, laminarin, alginic acid, and an alginate [0013]. Therefore, the claimed physical properties would naturally arise from the biodegradable resin composition of Chang. When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent (MPEP 2112.01(I)). If the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (MPEP 2112.01(II)). If it is the applicant’s position that this would not be the case: (1) evidence would need to be presented to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients, amounts, process steps, and process conditions.
Regarding claim 10, Chang teaches that the water-retaining agent for shiitake mushroom substate is prepared by a method including preparing a prepolymer solution by mixing and stirring the silver ion modified carbon nanotube/cellulose powder dispersion and the bio-natural polymer dispersion, adding an oxidizing and reducing agent in an ice-fire bath, adding the polylactic acid and the biodegradation catalyst, and stirring again to obtain the prepolymer solution, and forming an extrusion film by forming a film in a mold using a self-casting film formation method, soaking in a calcium ion salt solution for 20-30 minutes, and drying [0012], which reads on a molded body formed form the biodegradable resin composition according to claim 1 as claimed.
Regarding claim 11, the Office recognizes that all of the claimed physical properties are not positively taught by Chang, namely that the molded body is capable of holding 0.009 g or more and 15.0 g or less of water relative to the biodegradable resin contained in 1 cm3 of the molded body. However, Chang teaches/renders obvious all of the claimed ingredients, amounts, process steps, and process conditions of the biodegradable resin composition of claims 1-7, 9, and 12-15 as explained above, and teaches all of the claimed ingredients, amounts, process steps, and process conditions of the molded body according to claim 10 as explained above. Furthermore, the specification of the instant application recites that the biodegradable resin composition contains a biodegradable resin and has water holding properties for accelerating hydrolysis of the biodegradable resin [0010], that the biodegradable resin composition is preferably capable of holding 0.007 g or more and 15.0 g or less of water relative to 1 g of the biodegradable resin, more preferably capable of holding 0.008 g or more and 15.0 g or less of water, and even more preferably capable of holding 0.008 g or more and 0.5 g or less of water [0010], that the biodegradation accelerator is thus preferably a material that improves the water holding capacity of a biodegradable resin [0012], that such a biodegradation accelerator is, for example, preferably seaweed-derived polysaccharides and more preferably contains at least one of fucoidan, laminarin, alginic acid, and an alginate [0013], and that a molded body formed from the biodegradable resin containing such a hydrolysis accelerator is preferably capable of holding 0.007 g or more and 15.0 g or less of water relative to 1 g of the biodegradable resin, more preferably capable of holding 0.008 g or more and 15.0 g or less of water, and even more preferably capable of holding 0.008 g or more and 0.5 g or less of water [0016]. Therefore, the claimed physical properties would naturally arise from the molded body of Chang. When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent (MPEP 2112.01(I)). If the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (MPEP 2112.01(II)). If it is the applicant’s position that this would not be the case: (1) evidence would need to be presented to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients, amounts, process steps, and process conditions.
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.
Claims 8 and 16-20 are rejected under 35 U.S.C. 103 as being unpatentable over Chang et al. (CN 111961320 A, machine translation in English used for citation) as applied to claims 1-6, and further in view of Ando et al. (JP 2016-053128 A, cited in IDS, machine translation in English used for citation, made of record on 06/202/2023).
Regarding claims 8 and 16-20, Chang teaches the biodegradable resin composition according to claims 1-6 as explained above.
Chang does not teach that the biodegradable resin composition contains a photocatalytically active substance that decomposes the biodegradable resin. However, Ando teaches a photocatalyst that comprises a titanium oxide [0006], that is a substance which causes a charge separation by absorbing light and causes a redox reaction [0010], and that is present in a biodegradable resin composition further comprising a biodegradable resin [0006] that is optionally a polylactic acid [0009]. Chang and Ando are analogous art because both references are in the same field of endeavor of a biodegradable resin composition comprising a biodegradable resin. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to use Ando’s photocatalyst that comprises a titanium oxide to modify Chang’s water-retaining agent. The proposed modification would read on wherein the biodegradable resin composition contains a photocatalytically active substance that decomposes the biodegradable resin as claimed because the specification of the instant application recites that examples of the photocatalytically active substance include titanium oxide [0019] and that examples of the biodegradable resin composition include polylactic acid (PLA) [0011], which are identical in composition to Ando’s titanium oxide and Chang’s polylactic acid. One of ordinary skill in the art would have been motivated to do so because Ando teaches that the photocatalyst that comprises a titanium oxide [0006] is beneficial for being a substance which causes a charge separation by absorbing light and causes a redox reaction [0010] in a biodegradable resin composition further comprising a biodegradable resin [0006] that is optionally a polylactic acid [0009], that the photocatalyst is beneficial for providing antibacterial activity when the composition is subjected to light irradiation [0024], and that the photocatalyst is beneficial for affecting the decomposition rate and the biodegradation of the biodegradable resin composition [0026, 0027], which would have been desirable for Chang’s water-retaining agent because Chang teaches that the water-retaining agent comprises polylactic acid and biodegradable catalysts [0011, 0019], that polylactic acid has good biodegradability [0014], that the biodegradable catalysts can shorten the degradation time [0014], that the biodegradable catalyst can shorten the degradation time of the water-retaining agent [0023], and that the water-retaining agent is easily degradable [0061], is easy to degrade [0008, 0025, 0062], has a short degradation time [0008, 0025, 0062].
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID KARST whose telephone number is (571)270-7732. The examiner can normally be reached Monday-Friday 8:00 AM-5:00 PM.
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/DAVID T KARST/ Primary Examiner, Art Unit 1767