DETAILED ACTION
Information Disclosure Statement
It is noted that the present application has at least one (1) related foreign filings or publications in other countries. Applicant is reminded of the duty under 37 CFR 1.56(a) to disclose information material to patentability, such as (a) Office Actions and prior art related to the claimed invention which have been cited during prosecution of related filings, (b) prior foreign or domestic filings by Applicant(s) which are related to the claimed or disclosed invention and which constitute prior art, (c) related brochures, dissertations, or other research publications, including that which has been authored by one or more inventors listed under this application or by other individuals under which or along which one or more inventors may have been working, and (d) any other relevant prior art Applicant may be aware of, including since the filing of any previous information disclosure statement (IDS).
Election/Restrictions
The election of Group IV, claims 26-27, 29-34, and 38, in the reply filed on 27 February 2026 is acknowledged. Because supposed errors in the restriction requirement were not pointed out, the election has been treated as an election without traverse (MPEP § 818.01(a)), thereby leaving claims 1-2, 11, 13, 17-19, and 21-23 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim Objections
Claims 27 and 29-33 are objected to because of the following informalities:
At line 3 of claim 27, “the” should be added between “of” and “starch-based”.
The claim 29 line 2 recitation of “starch based” should be changed to “starch-based”.
At line 3 of claim 29, “a” after “heating” should be changed to “the”.
The term “from” which appears in the 2nd to last line of claim 29 should be changed to “form”.
At line 2 of claim 30, “the” should be added between “melt” and “PBAT”.
The claim 32 line 2 and claim 33 line 2 recitation of “each stage” should each be changed to “each of the two or more extruder stages”.
The claim 32 line 3 recitation of “the preceding stage” should be changed to “a preceding one of the two or more extruder stages”.
Absent persuasive argument contesting these issues, appropriate correction by amendment is required.
Claim Rejections - 35 USC § 112
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 26-27, 29-34, and 38 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. In particular:
The pending claims contain numerous instances in which antecedent basis of claim terminology is not clearly conveyed, leading to uncertainty as to exactly how the claims should be construed.
For example, claim 26 at line 1 refers to a process to prepare “a film of claim 1”, but later goes on at lines 3-4 to refer back merely to “a” film as opposed to “the” film either of line 1 or of claim 1. In turn, it is unclear if or exactly how the line 3-4 film relates back to that of claim 1, and/or if these should be construed as the same.
Additionally, the claim 26 line 3 reference back to “the melted blend” lacks antecedent basis, in particular since although the claim at lines 1-3 refers to heating “at a temperature effective to melt the blend”, such heating is not recited in a manner that necessitates a melted condition, as compared for example to a hypothetical recitation of “heating to melt the blend”. This issue exists also for the same corresponding recitation made in claim 27 at line 6, in the 2nd to last line of claim 29, and in claim 30.
Similarly, since antecedent basis is not clearly conveyed:
It is unclear in claim 27 whether the line 5 recitation of “an” extruder and the line 6 recitation of “a” film, in fact refer back to the same extruder and film recited in claim 26, or whether they may be construed as distinct therefrom;
It is unclear whether the “pellets” recited in the 2nd to last line of claim 29 in fact refer back to those first recited at line 2 of claim 27, or whether they may be construed as distinct therefrom; and
It is unclear if or exactly how the claim 30 line 2 recitation of “an” extruder” relates back to that recited in claim 26 (i.e. whether these must be distinct from one another or may be construed as the same).
Further, the claim 31 line 2 recitation of “the PBAT”, while presumably referring back to that of claim 30, is not clearly stated as such, in turn leaving it unclear whether the claim is strictly limited as such or may be construed instead to refer back to the PBAT component of the previously recited blend.
Further to the antecedent basis issues addressed under indefiniteness issue (a) above, it is further noted that the claim 31 line 2-3 independent heating in “an” extruder is confusing due to it being unclear exactly how this extruder relates back to that recited in claim 30 and to that recited in claim 26. It is unclear how such independent heating could take place in the same extruder as the claim presently states.
The claim 32 line 2-3 recitation of “each stage” being heated to a higher temperature “than the preceding stage” is confusing for the first of such stages for which no such preceding stage exists.
Absent persuasive argument contesting these issues, appropriate correction by amendment is required.
Claim Rejections - 35 USC § 102/103
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.
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.
Rejection 1
Claims 26, 27, 29-31, and 34 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Auclair et al. (FR 3082143, made of record via IDS on 27 February 2026, machine translation made of record herewith cited herein).
As to claim 26, Auclair teaches a process in which a blend of starch-based thermoplastic resin and PBAT is formed into a film as claimed by passing through a heated extruder (see the corresponding machine translation of [0028] and [0043]-[0045], and note use of starch and glycerin (i.e. TPS)). It is noted that the Table 2 material proportions, in addition for example to those set forth at [0011], [0014], [0016], etc., are believed to meet the high claim 1 ratio based on the definition of “high ratio” from 11:35-12:7 of the instant specification.
Auclair further teaches the claim 27 and 29 compounding into pellets via heated extrusion ([0035]-[0042]) in addition to film extrusion as set forth under the rejection of claim 26 above, the claim 30 extrusion of PBAT ([0021], etc.) and multilayer film formation ([0008], etc.), and the claim 31 and 34 temperatures (see at least the [0043] description of the [0044] temperature(s) pertaining to both extruder and die).
Claims 32-33 are rejected under 35 U.S.C. 103 as being unpatentable over Auclair as applied to at least claim 26 above, and further in view of Luo et al. (CN 110654095, made of record via IDS on 27 February 2026, machine translation cited herein).
Auclair teaches the claim 33 increase (Table 4), but with respect to claim 32 provides an increase for some but not all extruder stages. For a related technique pertaining also to film formation via extrusion utilizing similar ingredients, Luo similarly provides for multi-stage extrusion, in particular whereby overlapping temperature ranges are provided between adjacent extruder stages that could result in the claimed increase for each stage (see the corresponding machine translation for [0088], and see MPEP 2144.05(I) regarding obviousness of overlapping temperature ranges, as relevant). It is further noted, with respect to Luo’s teachings read in light of Auclair’s with respect to relative extruder stage temperatures, that absent unexpected results, one of ordinary skill in the art could have reached the claimed relative increase through routine experimentation, for example while determining optimum extrusion conditions for a given composition (see MPEP 2144.05(II) regarding optimization in this regard). It is in other words believed that the claimed increase would have been obvious over Luo’s above disclosure, and/or over Luo when read in combination with Auclair. It would have been obvious for one of ordinary skill in the art to incorporate the above teachings from Luo into Auclair as providing art-recognized suitable, interchangeable, and/or improved extrusion conditions for the similar such conditions already disclosed by Auclair.
Claim 38 is rejected under 35 U.S.C. 103 as being unpatentable over Auclair as applied to at least claim 26 above, and further in view of Ishii et al. (JP 2013-155224, machine translation cited herein).
Auclair is not believed to address the claim 38 moisture content. However, for a related technique pertaining also to film formation via extrusion utilizing similar ingredients, Ishii discloses that when subjecting a PLA-containing composition to pelletization via melt-kneading, followed by melt-kneading again and then film-formation via extrusion (as disclosed also by Auclair), the pellets should be treated to remove volatiles such as moisture so as to prevent conditions (e.g. hydrolysis, undesired changes in melt viscosity, etc.) that would negatively impact the resulting product, with explicit disclosure being made of such treatment resulting in a moisture content range which encompasses that claimed (see MPEP 2144.05(I) regarding obviousness of encompassing ranges). It would have been obvious for one of ordinary skill in the art to incorporate these teachings from Ishii into Auclair so as to provide the same or similar treatment to Auclair’s material as well, which would be expected to result in the same or similar improvements and/or to prevent the same or similar negative impacts that moisture might otherwise cause for Ishii’s material and process.
Additional Applicable Prior Art
It is noted that while not outlined herein for the sake of brevity, a rejection is also applicable over a number of additional references of record or hereby added to the record which likewise anticipate, or render obvious, one or more of the pending claims. For example:
References D1-D3 and D5-D9 of the International Search Report and Written Opinion issued 02 May 2022 for corresponding International Application No. PCT/AU2022/050279, both of which were made of record on 25 September 2023, are believed to anticipate at least claim 26 for the same or similar reasons set forth therein, particularly under Section 2 of the Written Opinion.
US 8,188,185 (abstract, [0041]-[0042]10:8-11, Examples 1-3, etc.), CN 109929228 (abstract, p. 2 steps s2-s3), US 11,358,378 (Example 2, etc.), and US 2020/0339803 (abstract, etc.) are believed to anticipate at least claim 26 due to the disclosed film formation via extrusion of a composition corresponding to that claimed.
These references should be addressed in reply to this Office action via amendment and/or remarks.
Interview Request
Applicant’s Representative is encouraged to contact the Examiner upon review of the instant Office action so as to discuss the claimed invention, the above prior art rejection and other applicable prior art, and how it is believed that the crux of the claimed and disclosed invention distinguishes over the prior art as a whole, particularly if it is believed that such a discussion will help to advance prosecution.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Atul P. Khare whose telephone number is (571)270-7608. The examiner can normally be reached Monday-Friday 9am-6pm.
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, Christina A. Johnson can be reached at (571) 272-1176. 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.
/Atul P. Khare/Primary Examiner, Art Unit 1742
Prosecution Insights