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 .
Response to Amendment
Applicant’s amendment to the claims filed January 7, 2026 has been entered. Claims 17, 21-25, 27 and 28 are currently amended. Claims 1-16, 18-20, 26 and 29 have been canceled. Claims 30-36 remain withdrawn from further consideration.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 17, 21, 22-25, 27 and 28, are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Ma et al. (US 2025/0136808; effectively filed on August 16, 2022).
Regarding claims 17, 21, 22-25, 27 and 28 Ma et al. teach a straw comprising a biodegradable material (Abstract; paragraphs [0057], [0062]-[0065], [0090], and [0093]) wherein the biodegradable material is composed of PHA (Abstract – polyhydroxyalkanoate (PHA) as claimed; paragraphs [0013], [0018]-[0029], [0076]-[0081], [0089]; Example 4; Example 21), at least one filler (Abstract; paragraphs [0016], [0050]-[0052], [0089]; Example 4 – starch; Example 21 – calcium carbonate and starch), and at least one auxiliary agent (Abstract; paragraphs [0014], [0015], [0030]-[0049], [0089]; Example 4; other biodegradable resin, chain extender, antioxidant, lubricant); a mass content of the PHA in the material is within the range of 70-96% (Abstract; paragraphs [0013], [0029], [0089]; Example 4: 70.45%) and the mass ratio of the PHA to the filler is within the claimed range of 3:1 to 25:1 (paragraphs [0016], [0050]-[0052], [0089]; Example 4: 70.45%/15% starch = 4.7:1; Example 21: 75.15/(3 for calcium carbonate + 5 for starch) = 9.4).
Claims 17, 21, 22-25, 27 and 28, are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ma et al. (CN 115058108; published September 16, 2022). Note: US 2025/0136808 is being utilized as the US language equivalent of CN 115058108 in this Office Action.
Regarding claims 17, 21, 22-25, 27 and 28 Ma et al. teach a straw comprising a biodegradable material (Abstract; paragraphs [0057], [0062]-[0065], [0090], and [0093]) wherein the biodegradable material is composed of PHA (Abstract – polyhydroxyalkanoate (PHA) as claimed; paragraphs [0013], [0018]-[0029], [0076]-[0081], [0089]; Example 4; Example 21), at least one filler (Abstract; paragraphs [0016], [0050]-[0052], [0089]; Example 4 – starch; Example 21 – calcium carbonate and starch), and at least one auxiliary agent (Abstract; paragraphs [0014], [0015], [0030]-[0049], [0089]; Example 4; other biodegradable resin, chain extender, antioxidant, lubricant); a mass content of the PHA in the material is within the range of 70-96% (Abstract; paragraphs [0013], [0029], [0089]; Example 4: 70.45%) and the mass ratio of the PHA to the filler is within the claimed range of 3:1 to 25:1 (paragraphs [0016], [0050]-[0052], [0089]; Example 4: 70.45%/15% starch = 4.7:1; Example 21: 75.15/(3 for calcium carbonate + 5 for starch) = 9.4).
Claim Rejections - 35 USC § 103
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 17, 21-25, 27 and 28 are rejected under 35 U.S.C. 103 as being unpatentable over Nascimento et al. (US 2009/0082491).
Regarding claims 17, 21-25, 27 and 28, Nascimento et al. teach a tube/straw (Abstract; paragraphs [0001], [0002], [0013]) comprising a biodegradable material, wherein the material is composed of PHA, which is either a homopolymer or copolymer, such as PHB (Abstract), at least one filler, and at least one auxiliary agent (paragraphs [0014], [0015], [0029]-[0031] – plasticizer; [0032]-[0037] – PCL; [0039]-[0045]; Table 2; fillers, other polymers, thermal stabilizers, antioxidants, plasticizers, and calcium stearate), a mass content of the PHA in the biodegradable material is in a range that overlaps the claimed 70 to 96% (Table 2; paragraph [0066]; PHB at 75% by weight is exemplified in an example without a filler and a range of 10-90% is disclosed as being suitable for use with fillers and other auxiliary agents in amounts that overlap the claimed ranges; also see paragraphs [0001], [0002], [0013]-[0020], [0028]), wherein a mass ratio of the PHA to the filler is in a range that overlaps the claimed range of 3:1 to 25:1. (paragraphs [0039], [0040]; Table 2; e.g. at 90% PHA, the filler would be within 3.6-30% and at 75% PHA, the filler would be at 3-25%; the ranges set forth in paragraphs [0039], [0040] and Table 2 overlap or encompass a somewhat narrower claimed range). Overlapping and such ranges are prima facie obvious (see MPEP 2144.05 I).
Response to Arguments
Applicant’s arguments filed January 7, 2026 have been fully considered. The amendment to the claims has overcome the previous section 112b rejections and the prior art rejections based upon Bastos et al. and Laporte et al. As such, the rejections have been withdrawn. Additionally, the amendment has overcome the section 102 rejection based upon Nascimento et al. As such, the rejection has been withdrawn. Applicant’s arguments in view of the amendment and directed to the applicability of Nascimento under section 103 have been fully considered, but they are not persuasive.
Applicant argues that Nascimento et al. disclose a blend comprising PHA and PCL while the instant claims contain “only PHA”. This argument is not persuasive. The argument is not commensurate in scope with the claims. The claims are not limited to only using PHA resins. The claims recite the biodegradable material “is composed of PHA”. This is the same as saying “comprising PHA”. Further, the claim recites “A straw comprising a biodegradable material” which would also allow for the addition of other materials besides the biodegradable material. Further, as evidenced by claim 24, the auxiliary agent itself can also be a resin (e.g. as the lubricant). There is nothing in the claims that excludes the use of an additional resin. As such, the argument that points to the additional resin in Nascimento et al. is not persuasive because the use of such an additional resin is within the scope of the claims. Absent further specificity, the teaching of Nascimento et al. is understood to remain applicable. It is agreed that Nascimento et al. utilize an additional resin, it’s just that the additional resin is allowed within the scope of the claims.
As to properties such as heat deflection temperature and elongation at break, applicant argues that the properties of the instant material are better than those set forth by Nascimento et al. and that these unexpected results also rebut any prima facie case of obviousness. This argument is not persuasive.
As an initial matter, the argument is premised on the idea that no blend of resins other than PHA resins is utilized. However, as set forth above, the scope of the claims allows for other resins. Further, in examples 1-12, the range of PHA is from 75-96 % while the claim 1 range is from 70-96%. It is not clear whether the argued improvement in properties is found at values between 70-75%. Further, the examples mostly utilize particular blends of PHA materials and only PHBV and PHBHHX are utilized alone. It is not clear from the examples whether the argued improved properties would be found with all PHA resins. Further still, the examples include specific and multiple additional materials disclosed as auxiliary agents in the specification. The claims do not require all these materials (e.g. claim 17 only requires something that reads upon an auxiliary agent under a broad reasonable interpretation and claim 23 only requires one particular type of auxiliary agent). It is not clear what role these additional materials play in achieving the argued improved properties (e.g. it is not clear whether these are contributing to the results and are thereby necessary). For each of these reasons, the claims are not commensurate in scope with the assertion of unexpected results.
It is submitted that the claims would need to be further amended to overcome the prima facie case of obviousness based on Nascimento et al. such that the arguments are more commensurate in scope with the language of the claims.
Further, applicant’s amendment has necessitated the new ground of rejection based upon Ma et al. above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Leon et al. (US 2023/0272158) and Johnson et al. (US 2020/0095420) disclose analogous resins and articles.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/JEFFREY M WOLLSCHLAGER/Primary Examiner, Art Unit 1742