DETAILED OFFICIAL 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 .
Examiner Note
It is noted that all references hereinafter to Applicant’s specification (“spec”) are to the published application US 2024/0083648, unless stated otherwise. Further, any italicized text utilized hereinafter is to be interpreted as emphasis placed thereupon.
Election/Restrictions
Applicant’s election without traverse of the invention of Group I, claims 1-18 and 20 in the reply filed on 07 January 2026 is acknowledged. It is noted that the Office Action Summary (PTOL-326 form) of the Requirement for Restriction dated 07 November 2025 (hereinafter “Restriction”) incorrectly indicated that the instant application claims foreign priority under 35 U.S.C. 119 (a)-(d) or (f), i.e. boxes (12), (a), and (3) were checked under the section “Priority under 35 U.S.C. 119”. Upon review, it is confirmed that the instant application does not claim foreign priority under 119(a)-(d) or (f). A new/updated PTOL-326 form is included herewith which correctly indicates that the application does not claim foreign priority.
In view of the amendments to the claims filed in conjunction with the reply on 07 January 2026, it is noted that claim 20 has been canceled, and claims 1, 10, 12, 18, and 22 have been amended.
In light of the amendments to claim 22, the requirement for restriction between the inventions of Group I and II previously set forth in the Restriction dated 07 November 2025 [id., ¶7-11] has been reconsidered and is hereby withdrawn. Accordingly, claims 1-18 and 22 are under examination on the merits.
Information Disclosure Statement
The information disclosure statement (IDS) filed 02 October 2025 is in compliance with 37 CFR 1.97 and has been considered.
Claim Objections
Claim 2-6, 8, 10, 12-16, 18, and 22 are objected to because of the following informalities:
Regarding claims 2, 6, 13, and 22, the formatting of the units (superscript, subscript, spacing) is improper and/or inhibits the readability of the claim – the following unit formatting is respectfully suggested
cm3/m2·24 h (oxygen transmission rate)
g/m2·24 h (water vapor transmission rate)
Nm/g (dry tensile index)
Regarding claims 3 and 14, the phrase “comprises the fibrillated cellulose with different diameters” constitutes improper claim language which inhibits the readability of the claim and may potentially be interpreted as an insufficient antecedent basis issue
The following amendment to claims 3 and 14 is respectfully suggested in order to correct/overcome the issue: “wherein the has different diameters…”
Regarding claims 4 and 15, the phrase “comprises the fibrillated cellulose with a diameter” constitutes improper claim language which inhibits the readability of the claim and may potentially be interpreted as an insufficient antecedent basis issue
The following amendment to claims 4 and 15 is respectfully suggested in order to correct/overcome the issue: “wherein the has a diameter…”
Regarding claims 5 and 16, the phrase “comprises the fibrillated cellulose having a length” constitutes improper claim language which inhibits the readability of the claim and may potentially be interpreted as an insufficient antecedent basis issue
The following amendment to claims 5 and 16 is respectfully suggested in order to correct/overcome the issue: “wherein the has a length of…”
Regarding claims 8 and 18, the term “manufacturing process” is objected to for improper grammar – the following amendment is respectfully suggested: “…is produced by one or more of the following industrial manufacturing processes: rolling…”
Regarding claims 10 and 12, the recitation of “and” preceding the (last) species “food container” of the Markush group of 3-dimensional products is objected to, respectfully, as constituting improper grammar as explained in the sub-bullets below and in reference to claim 10 (for exemplary purposes)
The plain reading of the limitation “wherein the 3-dimensional product comprises a straw, a cover, a lid, a box, a beverage capsule, a packaging film and a food container” – based on the recitation of “and’ – is such that the composite material is required to be formed into each of the 3-dimensional products stated; however, multiple product species overlap with (i.e. read on or are encompassed by) one or multiple other product species, e.g. cover and lid, box and food container, beverage capsule and food container, packaging film and cover, etc.
Further, the spec does not explicitly indicate, depict, or imply an embodiment of the 3-dimensional product requiring each/every species recited in claim 10
In view of the foregoing, the Examiner believes claims 10 and 12 are intended to limit the 3-dimensional product to being one of the product species – as such, claims 10 and 12 are interpreted for examination on the merits in accordance with the following amendment: “…a beverage capsule, a packaging film or a food container”, of which is respectfully suggested in order to overcome the objection
Regarding claim 22, the limitation “…with fibrillated cellulose blended with a polymer having independently derived plant fibers” constitutes inconsistent claim language relative to claims 1 and 12 which inhibits the readability of the claim, and which the Examiner believes constituting a typographical/formatting error introduced by the amendments filed 07 January 2026
It is readily clear from claims 1 and 12, and in view of Applicant’s spec, that it is the fibrillated cellulose component of the composite material which has independently derived plant fibers, and thus not the polymer component
The following amendment to claim 22 is respectfully suggested in order to correct the issue identified above: “a composite material with fibrillated cellulose blended with a polymer, said fibrillated cellulose having independently derived plant fibers, said composite material…”
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.
Claims 12-18 are rejected under 35 U.S.C. 112(a) 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, at the time the application was filed, had possession of the claimed invention.
Regarding claim 12, the 3-dimensional product species “utensil” is not adequately supported by the written description. Specifically, the specification filed 01 August 2023, and the specification of provisional application US 63/144,473 filed 01 February 2021, do not recite “utensil”. In addition, the specifications do not recite 3-dimensional product species which one of ordinary skill in the art would generally recognize as a utensil, e.g. the specifications do not recite fork, knife, spoon, spatula, ladle, whisk, cookware, kitchenware, tool, or implement.
As such, the recitation of “utensil” in claim 12 constitutes introduction of new matter which, in view of the lack of written description support, the inventor(s) did not have possession of at the time the application was filed. In order to overcome the 112(a) rejection, it is respectfully suggested to delete “utensil” from the list of 3-dimensional product species recited in claim 12.
Claims 13-18 are rejected under 35 U.S.C. 112(a) as each claim is directly dependent upon claim 12 and therefore includes, and does not remedy the failure to comply with the written description requirement identified above.
Appropriate action is required.
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.
Claims 1-18 and 22 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Regarding claim 1, the limitation “being generally free from toxic chemical additives for improving mechanical properties thereof” renders the claim indefinite.
The phrase “generally free” is an approximation which constitutes relative terminology (see MPEP 2173.05(b), (b)(III)(B), and (b)(III)(D)), wherein the spec does not explicitly indicate/define or otherwise imply the maximum amount of additive(s) which may be present in the composite material in accordance with the phrase “generally free”. As such, the metes and bounds of the scope of the phrase “generally free” cannot be readily determined or envisaged by one of ordinary skill in the art – the maximum amount of additives which are permitted to be present in the composite material is unclear.
Further, the metes and bounds of the scope of the phrase “toxic chemical additives for improving mechanical properties thereof” are extremely broad – and the term “toxic” and phrase “for improving mechanical properties thereof” are ambiguous/vague – such that one of ordinary skill in the art cannot readily envisage which species of chemical additives are encompassed therein. That is, the boundaries of the subject matter for which patent protection is sought are not clearly delineated such that the scope of the claim is unclear (see MPEP 2173.04).
Specifically, the toxicity of a chemical additive is dependent upon the amount of additive to which a person/organism is exposed, the form/state of the additive, and in some instances the time of exposure – additionally, chemical additives may exhibit more than one functionality (i.e. may be associated with more than one intended use or property) upon inclusion in a composite material. Furthermore, an “improvement” in a mechanical property is dependent upon a desired/pre-determined end-use, state, or capability of the composite material, and can encompass both decreases and increases in a mechanical property (e.g. it may be desirable to increase rigidity of a composite material under one circumstance, but to decrease rigidity under another, wherein each circumstance may be considered an “improvement”). Thus, the phrase regarding the chemical additives being “for improving mechanical properties”, is vague and/or introduces ambiguity into the claim. It is unclear whether a chemical additive which increases a mechanical property, or which decreases a mechanical property, constitutes such an additive which is “for improving mechanical properties”, or if the phrase intends to exclude all (toxic chemical) additives which generally have an effect on, to any degree, one or more mechanical properties of a material.
In view of the foregoing, it is noted that the specification does not indicate any species of chemical additives which are generally considered to be, or which are specifically encompassed by the claimed term, “toxic”; and does not indicate any species of chemical additives which are generally considered to be, or which are specifically encompassed within the claimed phrase, “for improving mechanical properties”.
In order to overcome the indefiniteness issues identified above, it is respectfully suggested to amend claim 1 as follows: “…said composite material being
Regarding claim 2, the composite material property limitations of “an oxygen transmission rate of about 8000 cm3 m2 24h-1 or less” and “a water vapor transmission rate of 3000 g m-2 24 h-1 or less” render the claim indefinite, as the measurement conditions at which the reported value/range for each property was determined are not defined by the claim, or explicitly defined in the spec, and therefore are unclear. One of ordinary skill in the art cannot readily determine or envisage the metes and bounds of the scope of the claim, and the public would not be clearly informed of the boundaries of what constitutes infringement thereupon (see MPEP 2173; MPEP 2173.02; and MPEP 2173.02(I) and (II)). Further, see MPEP 2111.01(II).
The transmission rates for any material are directly dependent on at least the temperature, relative humidity, and pressure at which the measurement is made, of which are commonly/appropriately stated in conjunction with said reported value and a corresponding measurement standard (e.g. ASTM, ISO, JIS, etc.). For example, a material which exhibits an oxygen transmission rate of 8,000 cm3/m2·day at 20° C and 0% relative humidity may exhibit a substantially different oxygen transmission rate in an environment of higher temperature and/or humidity, e.g. 40° C and 90% relative humidity.
As stated above, the spec does not define the temperature, humidity, pressure, or measurement standard utilized for determining the oxygen and water vapor transmission rates of the claimed composite material. As such, the broadest reasonable interpretations of the claimed transmission rates of the composite material for examination on the merits are the numerical values/ranges determined at any temperature, any % RH, and any pressure, measured in accordance with any stated/recognized standard. Applicant is respectfully directed to MPEP 2111 and MPEP 2111.01(I)-(III). In order to overcome the aforesaid indefiniteness issue(s), it is respectfully suggested to amend claim 2 to include the measurement conditions utilized to determine the OTR/WVTR of the exemplary embodiments of the composite material set forth in the spec, e.g. [Tables 1-5].
Regarding claim 3, the phrase regarding the fibrillated cellulose having “different diameters having a weight ratio of 1:100 or 1:50” renders the claim indefinite. The relationships between the weight ratio and the different diameters, and between each numerical value of the ratio and the different diameters, are unclear, and the spec does not clarify explicitly or implicitly the aforesaid relationships [spec, 0028, 0030]. It is unclear whether the weight ratio corresponds to one fiber diameter relative to another fiber diameter, or one fiber diameter range and another fiber diameter range, or neither thereof, further (unclear) in view of the phrase “different diameters” encompassing a plurality of diameters including more than two, i.e. more than two specific diameters or more than two specific diameter ranges.
In view of the lack of description in the spec regarding the aforesaid indefiniteness issue, claim 3 is interpreted for examination on the merits as being read on by prior art which discloses fibrillated cellulose having different diameters, such as two or more diameters or diameters ranges which are different to any degree, or read on by prior art which discloses a single fiber diameter range, absent a disclosure/teaching regarding a weight ratio thereof. Said alternatively, claim 3 is interpreted to read as: “wherein the fibrillated cellulose has different diameters”, or interpreted as being read on by prior art which meets the limitations of claim 4.
Claim 12 is indefinite on the same grounds set forth above (¶17-22) in the rejection of claim 1, of which are incorporated herein by reference and not repeated for sake of brevity.
Claim 13 is indefinite on the same grounds set forth above (¶23-25) in the rejection of claim 2, of which are incorporated herein by reference. Claim 13 is interpreted for examination on the merits in accordance with the interpretation of claim 2 set forth above.
Claim 14 is indefinite on the same grounds set forth above (¶26-27) in the rejection of claim 3, of which are incorporated herein by reference. Claim 14 is interpreted for examination on the merits in accordance with the interpretation of claim 3 set forth above.
Claim 22 is indefinite on the same grounds set forth above in the rejection of claim 1 (¶17-22) and the rejection of claim 2 (¶23-25-19), of which are incorporated herein by reference. The interpretation(s) for examination on the merits set forth above apply to claim 22.
Additionally regarding claim 22, the limitation “the composite material is configured to suppress the bacteria growth or eliminate at least 30% selected bacteria” renders the claim indefinite.
The phrase “the bacteria growth” lacks sufficient antecedent basis, as there is no prior introduction or recitation of bacteria growth in claim 22 or any claim. Thus, the relationship between the claimed biodegradable material and bacteria growth is undefined. The element or feature of the claimed invention, intended to be limited by the phrase “the bacteria growth” is unclear; and/or it is unclear how, or in what manner physically/structurally or chemically, the composite material is “configured to” suppress said growth.
Further, the metes and bounds of the scope of the phrase “at least 30% selected bacteria”, and of the term “selected bacteria”, cannot be readily determined or envisaged by one of ordinary skill in the art – the boundaries of the claimed subject matter for which patent protection is sought are not clearly delineated, such that the public would not be informed of what constitutes infringement thereupon (see MPEP 2173; MPEP 2173.04). The one or more species of bacteria encompassed by said term, let alone said phrase, is unclear – phrased as a question: does “selected bacteria” include every single species of bacteria known to man? Further, how many species, and which particular species, of bacteria constitute 30%, or 40%, or 50% of the “selected bacteria”?
In view of the aforesaid indefiniteness issues, and given that the claim does not further define the composite material structurally, chemically/compositionally, or in any manner related to bacterial growth suppression or bacteria elimination, the requisite elements of the composite material to achieve said suppression or elimination, associated with the “configured to” claim language, are unclear. Applicant is respectfully directed to MPEP 2111.01(II), which indicates that it is improper to import limitations from the spec, which are not part of the claims, into the claims during examination on the merits.
For examination on the merits, the phrase “the composite material is configured to suppress the bacteria growth or eliminate at least 30% selected bacteria” is interpreted in the broadest reasonable manner. Specifically, the aforesaid phrase is interpreted as being read on by prior art (composite material thereof) which explicitly or implicitly discloses any degree of growth suppression or elimination of any one or more species of bacteria; or which would have necessarily (inherently, based on corresponding technical reasoning) exhibited the capability to suppress growth of any species of bacteria to any degree, and/or eliminate any species of bacteria.
In order to reduce or overcome the indefiniteness issues of claim 22 above, it is respectfully suggested to amend claim 22 to include limitations found/supported by the spec, including (i) the composite material including one or more of the compounds/materials recited at [0069], (ii) the recitation of one or more of the species of bacteria of Example 7 [0110-0112], (iii) the suppression/elimination rate corresponding to said one or more species of bacteria [0110-0112], and (iv) the test conditions utilized to determine the suppression/elimination rates exhibited by the composite material [0110-0112]. Further, to facilitate compact/expedient prosecution, the Examiner would also suggest amending claim 22 to limit the polymer in terms of species thereof.
Claims 2-11 are indefinite and rejected under 112(b) as each claim is directly dependent upon claim 1 and therefore includes, and does not remedy the indefiniteness issues of claim 1 identified above.
Claims 13-18 are indefinite and rejected under 112(b) as each claim is directly dependent upon claim 12 and therefore includes, and does not remedy the indefiniteness issues of claim 12 identified above.
Appropriate action is required.
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.
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.
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 1-18 are rejected under 35 U.S.C. 103 as being unpatentable over Banerjie et al. (WO 2017/049021; “Banerjie”) (copy provided herewith).
Regarding claim 1, Banerjie discloses a polymer composite material (hereinafter “composite”) suitable for forming, inter alia biodegradable films, packaging products, containers, and other three-dimensional (3D) articles, said composite comprising a blend of a polymer and nanocellulose, or alternatively a blend of a hydrophobic polymer, nanocellulose, and lignin [Abstract; 0005, 0016, 0022, 0042-0044, 0047-0050, 0055, 0058-0062, 0064, 0068-0069, 0075, 0234]. With respect to the latter, the composite (broad embodiment) includes 0.01 wt.% or more of nanocellulose, the hydrophobic polymer in any amount, and lignin in any amount, such as about 0.1-10 wt.% [0064-0065]. For example, the composite (narrow embodiment) may include about 0.5-50 wt.% nanocellulose, about 0.01-20 wt.% lignin, with the remainder being hydrophobic polymer (about 30 wt.% to about 99.49 wt.%), and suitably includes one or more additives [0062, 0064, 0068-0069, 0234].
The hydrophobic polymer is, inter alia a polyhydroxyalkanoate (PHA), with examples including poly(hydroxybutyrate) (PHB) and poly(hydroxybutyrate-co-hydroxyvalerate) (PHB-c-HV) (not limited thereto) [0062, 0077-0079] (see MPEP 2131.02(II); MPEP 2144.07).
The nanocellulose is, inter alia nanofibrillated cellulose (NFC) derived from one or more biomass feedstocks such as hardwoods, softwoods, pulps/paper wastes, and agricultural residues/fibers including, e.g. bagasse, corn, wheat, etc. [0003-0004, 0042, 0052, 0071, 0108-0109], and is suitable for incorporating into (blending with) high-temperature polymers processed at elevated temperatures, such as temperatures above 200° C [0022, 0041-0044, 0051-0052, 0058-0060, 0066]. The NFC includes both micron-sized (1-100 µm) fibers (fibrils) and nanometer-sized (0.01-1,000 nm) fibers (i.e. 0.01 nm to 1 µm) in terms of length [0060], wherein diameters thereof range from, e.g. 5-50 nm [0060, 0128].
The NFC may be blended with the PHA prior to forming a melt phase, or while forming the melt phase [0043-0044, 0050, 0058, 0069]. The composite, which may be pelletized subsequent compounding via melt-blending, can be extruded to form films and layered sheets, or injection-molded, blow-molded, or 3D-printed to form 3D articles including containers, or a combination of the foregoing [0050, 0069].
The one or more additives may include, inter alia fillers, colorants, and stearates (surfactant, i.e. dispersant) [0022, 0045-0046, 0068], and may additionally include antioxidants. Banerjie does not explicitly require, or otherwise indicate/suggest, that the composite includes chemical additives which are considered/recognized as toxic in any manner/form. Banerjie also does not require addition of any additives for improving mechanical properties or any other properties of the composite, and further, does not require the addition of any additives based on the aforecited disclosure.
In view of the totality of the foregoing, Banerjie reasonably discloses the composite (narrow embodiment) comprising a blend of about 30-99.49 wt.% PHA (e.g. PHB, PHB-c-HV); about 0.5-50 wt.% NFC including fibers having a length of 1-100 µm and fibers having a length of 0.01-1,000 nm, each having a diameter of 5-50 nm; and about 0.01-20 wt.% lignin, and suitably including the aforesaid one or more additives, wherein the overall composite weight is taken as 100 wt.%. Hereinafter, the aforesaid composite (narrow embodiment) is referred to as “composite 1”.
Alternatively, the composite (broad embodiment) comprises a blend of 0.01 wt.% or more NFC (as stated above for composite 1), 0.1-10 wt.% lignin, and PHA (and, if desired, said one or more additives) constituting the remaining amount based on the overall composite weight taken as 100 wt.%. Hereinafter, the aforesaid said composite (broad embodiment) is referred to as “composite 2”.
Corresponding to the invention defined by claim 1, composite 1 reads on the biodegradable container material and composite material with fibrillated cellulose blended with a polymer; the NFC reads on the fibrillated cellulose having independently derived plant fibers (see spec, [0027]); the PHA reads on the polymer; the absence of any additives, or the presence of only one or more selected from fillers, colorants, stearates, and antioxidants reads on the composite material being generally free from toxic chemical additives for improving mechanical properties in view of the rejection and corresponding interpretation of claim 1 under 112(b) above. The amount of PHA, 30-99.49 wt.% relative to 100 wt.% total of the composite 1, is substantially identical to the lower bound of, and encompasses the upper bound of the claimed range of the polymer is more than 30% but less than 50% of the composite material by weight, thereby rendering the claimed range prima facie obvious (MPEP 2144.05(I)). As such, the composite 1 of Banerjie set forth/cited above reads on the biodegradable container material defined by each and every limitation of claim 1.
Alternatively, composite 2 also reads on the invention defined by claim 1, wherein the amount of PHA of the composite 2 may be up to (max.) 99.89 wt.%, such as up to 89.99 wt.% or less, which also encompasses the upper and lower bound of the claimed range of the polymer is more than 30% but less than 50% of the composite material by weight, thereby rendering the claimed range prima facie obvious (MPEP 2144.05(I)). As such, the composite 2 of Banerjie set forth/cited above, in the alternative to composite 1, reads on the biodegradable container material defined by each and every limitation of claim 1.
Regarding claim 2, in view of the rejection of claim 1 above, it is noted that at least composite 1 of Banerjie set forth/cited above is substantially identical to the claimed and disclosed composite material (biodegradable container material) in terms of polymer species and weight amount; fibrillated cellulose species, weight amount, and fiber dimensions; method of blending/pelletizing the polymer and fibrillated cellulose; and method of formation of articles from the resultant blend constituting the composite material. In particular, the disclosure of Banerjie reasonably encompasses embodiments of composite 1 comprising 50 wt.% NFC (max. amount), about 30 wt. to less than 50 wt.% PHA, and about 0.01-20 wt.% lignin, for example (non-limiting) necessarily comprising 50 wt.% NFC, 49.99 wt.% PHA, and 0.01 wt.% lignin based on the max. amount of NFC and min. amount of lignin.
Applicant’s spec indicates that (i) the polymer, which functions (in the blend) to reduce the water vapor transmission rate (WVTR) of the composite, is suitably PHA, such as PHB [0056], and wherein PHA is utilized as the polymer in exemplary embodiments of the composite [0103-0108; Table 5]. The fibrillated cellulose and PHA may (ii) be compounded using a heated barrel such as an extruder or pelletizer (i.e. melt extrusion/melt blending), and thereafter formed into articles via extrusion-, injection-, blow-, or compression-molding at a temperature of 110-220° C, such as films [0107]. The (iii) fibrillated cellulose is formed from plant fibers derived from, inter alia bagasse, corn, wood, and/or pulp, etc. [0026-0027], (iv) exhibits one or more fiber diameters within the range of 1-10,000 nm [0028; claims 3-4], and (v) exhibits fiber lengths of 0.1-1,000 µm [0030; claim 5]. The fibrillated cellulose (vi) may define 50-70 wt.% of the composite material [Table 5, Ex. 6-8], e.g. 50 wt.% fibrillated cellulose and 50 wt.% PHA [Table 5, Ex. 6].
The composite 1 of Banerjie – in view of ¶46-50 above and incorporated herein by reference (not repeated for sake of brevity), and in view of ¶54 forth above – is nearly identical to the claimed and disclosed biodegradable container material in terms of each of the aforesaid elements (i)-(vi). As such, it stands to reason, and there is a strong and reasonable expectation, that composite 1 of Banerjie (see ¶50 and/or ¶54) would have necessarily exhibited one or more of an OTR of about 8,000 cm3/m2·24 h or less, a WVTR of 3,000 g/m2·24 h or less, a dry tensile strength of about 30 MPa or higher, a dry tensile modulus of about 4 GPa or higher, and a dry tensile index of about 45 Nm/g or higher, as claimed, absent a showing of factually supported objective evidence to the contrary. See MPEP 2112(IV) and (V); MPEP 2112.01(I) and (II); MPEP 2145; and MPEP 2145(I). As such, composite 1 of Banerjie reads on the biodegradable container material defined by claim 2.
“Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established” (MPEP 2112.01(I)). When the Examiner establishes a sound basis for believing that the claimed product and the prior art product are the same, Applicant bears the burden of showing that they are not – the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics or properties of the claimed product.
Regarding claim 3, the rejection of claim 1 above reads on the biodegradable container material (hereinafter “container material”) defined by claim 3, in view of the rejection and corresponding interpretation of claim 3 under 35 U.S.C. 112(b) set forth above. The NFC of the composite of Banerjie exhibits a fiber diameter range of 5-50 nm thereby encompassing fibers having different diameters.
Regarding claim 4, the rejection of claim 1 above reads on the container material defined by claim 4. The NFC of the composite exhibits a fiber diameter of 5-50 nm, which is within the claimed range of 1-10,000 nm.
Regarding claim 5, the rejection of claim 1 above reads on the container material defined by claim 5. The NFC of the composite comprises fibers exhibit a length of 1-100 µm (“micron-sized”) and fibers exhibiting a length of 0.01-1,000 nm (0.01 nm to 1 µm) (“nanometer-sized”). The micron-sized fiber length fibers are within the claimed ranges of about 0.1-1,000 µm; overlap the claimed range of 10-500 µm (MPEP 2144.05(I)); border the lower bound and encompass the upper bound of the claimed range of 1-25 µm (MPEP 2144.05(I)); and are within the lower bound of, and exhibit an identical upper bound to, the claimed range of 0.2-100 µm (MPEP 2144.05(I)). The nanometer-sized fiber length fibers overlap each of the following claimed ranges: about 0.1-1,000 µm, about 1-25 µm, and about 0.2-100 µm, thereby rendering each range prima facie obvious (MPEP 2144.05(I)) in addition or alternatively to the aforesaid micron-sized fiber length fibers.
Regarding claim 6, in view of the rejection of claim 1 above, the rejection of claim 2 above (¶54-57) is incorporated herein by reference and reads on the container material defined by claim 6. It stands to reason, and there is a strong and reasonable expectation, that the composite 1 of Banerjie would have necessarily exhibited one or more of a wet tensile strength of about 5 MPa or higher, a wet tensile modulus of about 0.4 MPa or higher, and a wet tensile index of about 5 Nm/g or higher, absent a showing of factually supported objective evidence to the contrary. See MPEP 2112(IV) and (V); MPEP 2112.01(I) and (II); MPEP 2145; and MPEP 2145(I).
Regarding claim 7, the rejection of claim 1 above reads on the container material defined by claim 7. The polymer of the composite of Banerjie is PHA, such as PHB or PHB-c-HV. PHA reads on the corresponding species claimed species, and PHB reads on the corresponding claimed species
Regarding claim 8, it is first noted that claim 8 constitutes a product-by-process claim. Applicant is respectfully directed to MPEP 2113(I) and (II) – even 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. Further, the structure implied by the process steps should be considered when assessing patentability, in particular where the product can only be defined by the process steps by which it is made or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product.
Nevertheless, the rejection of claim 1 above reads on the container material defined by claim 8. The composite of Banerjie is produced by melt blending the PHA, NFC, lignin component, and additional additives if present, by extrusion, or other melt-molding processes such as injection- or blow-molding, or a combination thereof [Banerjie, 0043-0044, 0050, 0058, 0069].
Regarding claim 9, the rejection of claim 1 above reads on the container material defined by claim 9. The composite may be pelletized, or be formed into a film or layered sheet.
Regarding claim 10, the rejection of claim 1 above reads on the container material defined by claim 10. The composite may be formed, e.g. extrusion/injection/blow molded or 3D-printed into a 3D article, such as a packaging film, bag, or container for food products [0005, 0069]. The packaging film reads on a cover and a packaging film; the bag reads on a cover, a packaging film, and a food container; and the container reads on a cover, a packaging film, and a food container.
Regarding claim 11, the rejection of claim 1 above reads on the container material defined by claim 11. The composite suitably includes a filler, colorant, and a stearate compound (dispersant) as additives.
Regarding claim 12, the rejection of claim 1 above is incorporated herein by reference (not repeated for sake of brevity) and reads on the biodegradable container material defined by each and every limitation of claim 12. Additionally, see rejection of claim 10 above.
Regarding claim 13, in view of the rejection of claim 12 above, the rejections of claim 2 and claim 6 above are incorporated herein by reference – the rejection of claim 2, or the rejection of claim 2 and claim 6, taken in view of the rejection of claim 12 reads on the biodegradable container material defined by claim 13.
Regarding claim 14, in view of the rejection of claim 12 above, the rejection of claim 3 above is incorporated herein by reference and reads on the biodegradable container material defined by claim 14.
Regarding claim 15, in view of the rejection of claim 12 above, the rejection of claim 4 above is incorporated herein by reference and reads on the biodegradable container material defined by claim 15.
Regarding claim 16, in view of the rejection of claim 12 above, the rejection of claim 5 above is incorporated herein by reference and reads on the biodegradable container material defined by claim 16.
Regarding claim 17, the rejection of claim 12 above reads on the biodegradable container material defined by claim 17. Additionally, see rejection of claim 7 above.
Regarding claim 18, in view of the rejection of claim 12 above, the rejection of claim 8 (¶63-64) is incorporated herein by reference and reads on the biodegradable container material defined by claim 18.
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Banerjie, in view of Leggett et al. (US 2022/0056643; “Leggett”).
Regarding claim 22, the rejections of claim 1 (¶45-53), claim 2 (¶54-57), and claim 6 (¶61) set forth above under 35 U.S.C. 103 are incorporated herein by reference (not repeated for sake of brevity). The combined incorporated rejections read on the biodegradable material defined by the limitations of claim 22, with the exception of wherein the composite material is configured to suppress the bacteria growth or eliminate at least 30% selected bacteria, as claimed. That is, Banerjie is silent regarding the composite exhibiting antibacterial capability/activity.
Leggett is directed to biodegradable and/or compostable food-contact articles including food containers, cups, eating utensils, and packaging films [Abstract; 0002-0007, 0016-0018], said food-contact articles formed from a biodegradable polymer that is a PHA homopolymer or copolymer, preferably a poly(hydroxybutyrate) copolymer with an additional hydroxyalkanoate (co)monomer(s) having 5 to 12 carbon atoms (encompasses hydroxyvalerate) [0005, 0012-0013, 0022-0025]. Leggett teaches that in order to improve food safety related to food borne illnesses caused by bacteria present on food-contact articles by imparting to said articles the ability to kill, or at least inhibit the growth of bacteria and other pathogens, the PHA homopolymer or copolymer may be mixed (i.e. compounded, i.e. blended) with at least one antimicrobial agent, in particular an antibacterial agent and/or antiparasitic agent [0003-0007, 0009, 0020, 0028-0033, 0036-0037], prior to forming the PHA homo/co-polymer into the food-contact article [0037].
Suitable antibacterial agents include zinc-compounds and silver-compounds [0029], and suitable antiparasitic agents include silver nanoparticles [0031]; the at least one antimicrobial agent is suitably blended in an amount of about 0.1% to about 1.0% by weight [0005]. The blend, in addition to the PHA homo/co-polymer and at least one antimicrobial agent, may also include stearates [0039], as well as nanocellulose and other fillers inclusive of colorants [0041].
It is clear from the disclosures/teachings cited above that Banerjie and Leggett each constitute prior art which is directly analogous to the claimed invention. In view of the combined teachings of the foregoing prior art, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the composite of Banerjie (e.g. composite 1) by adding about 0.1 wt.% to about 1.0 wt.% total of an antibacterial agent and/or antiparasitic agent identified above to the PHA/NFC/lignin composite blend (during melt-blending), in order to form food containers and/or food packaging films therefrom exhibiting the capability to eliminate, or at least inhibit the growth of, one or more bacteria and other pathogens.
In accordance with the aforesaid modification, the composite, e.g. composite 1 of Banerjie (hereinafter “modified Banerjie”) would have comprised all of the features/elements/components as set forth above in the incorporated rejection of claim 1, and would have further comprised about 0.1 wt.% to about 1.0 wt.% of one or more of a zinc-based compound, silver-based compound, and silver nanoparticles as antimicrobial agent(s) present in the composite material. As a non-limiting illustrative example, modified Banerjie would have reasonably encompassed embodiments of composite 1 formed from 50 wt.% NFC, 49.49 wt.% PHA, 0.01 wt.% lignin, and 0.5 wt.% of one or more of the aforesaid zinc-based compound, silver-based compound, and silver nanoparticles.
In view of the foregoing, in view of the rejection and corresponding interpretation of claim 22 under 35 U.S.C. 112(b) above, and in view of Applicant’s spec [0069] which indicates that the presence of silver, zinc, or metal nanoparticles such as silver nanoparticles in the composite material imparts thereto the ability to eliminate bacteria and/or suppress bacterial growth, it stands to reason, and there is a strong and reasonable expectation, that the composite (composite 1, such as said non-limiting illustrative example) of modified Banerjie would have necessarily exhibited the capability to eliminate one or more species of bacteria to at least some degree, and/or the capability to suppress the growth of one or more species of bacteria to at least some degree, absent a showing of factually supported objective evidence to the contrary. See MPEP 2112(IV) and (V); MPEP 2112.01(I) and (II); MPEP 2145; and MPEP 2145(I). As such, the composite 1 of modified Banerjie set forth above, which as exemplified does not include any additional additives, and which is not required to include any additional additives in view of the disclosure/teachings of Banerjie, reads on the biodegradable material comprising the composite material as defined by each and every limitation of claim 22.
Pertinent Prior Art
The following constitutes a list of prior art which are not relied upon herein, but are considered pertinent to the claimed invention and/or written description thereof. The prior art are purposely made of record hereinafter to facilitate compact/expedient prosecution, and consideration thereof is respectfully suggested.
US 2022/0073705 to Nelson – discloses compositions and methods for dispersion and drying of nanocellulose (NFC, MFC), and composites/masterbatches inclusive of said nanocellulose and a polymer component comprising one or more of, inter alia starches, polyhydroxyalkanoates, polyolefins, polylactides, and polyesters, the nanocellulose comprising 1-75 wt.% thereof and the polymer component comprising 10-98 wt.% thereof [Abstract; 0015, 0025-0076, 0336-0340]
US 2020/0122380 to Räsänen et al. – teaches addition of microfibrillated cellulose, surfactants, pigments, and fillers to a polymeric matrix, wherein the matrix polymer is, inter alia PLA, PHA, polybutylene succinate (PBS), PET, or starch or starch-based materials [0028-0031]
US 2020/0171796 to Backfolk et al. – includes general teachings/evidence regarding the size, structure, and formation methods of MFC [Abstract; 0016-0026]
Conclusion
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to Michael C. Romanowski whose telephone number is (571)270-1387. The Examiner can normally be reached M-F, 09:30-17:30.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, Applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Aaron Austin can be reached at (571) 272-8935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MICHAEL C. ROMANOWSKI/Primary Examiner, Art Unit 1782