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 .
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on August 20, 2026 has been entered.
Claims 1, 3-4, 7, 9-10, 12-13, 18, 21, 32, 41, 45, 50, 53, 60, 62, 67, 71, and 80 are pending as amended on August 7, 2026. Support for amended claim 1 is found claim 1. Support for new claim 80 is found in [0063] of the specification. Claims 4 and 71 stand withdrawn from consideration.
Any objections and/or rejections made in the previous Office action and not repeated below are hereby withdrawn. The text of those sections of Title 35, U.S. Code not included in the action can be found in a prior Office action.
Response to Arguments
Applicant's arguments filed August 7, 2026 have been fully considered.
Applicant’s arguments, see page 8, with respect to the rejection of claims 1, 3, 7, 9-10, 12-13, 18, 21, 32, 41, 45, 50, 53, 60, 62, and 67 under 35 U.S.C. 103 have been fully considered and are persuasive. Claim 1 has been amended to remove glyoxal and glutaraldehyde from the list of crosslinkers. The examiner agrees that Bastioli (US 5,412,005 A) does not teach or suggest the specific crosslinkers of amended claim 1. Therefore, the rejections have been withdrawn. However, upon further consideration, new grounds of rejection are made over Bastioli (US 2007/0129468 A1) in view of Silbiger (FR-2732687-A1) and over Son (KR-20090008111-A).
In the new grounds of rejection, Wnuk (US 5,939,467) and Chen (US 2012/0208928 A1) are relied upon as evidentiary references of TONE P-787’s molecular weight. Applicant argues (page 9-10) that Wnuk and Chen do not teach a composition comprising the crosslinker of claim 1 and that Wnuk requires additional polymers. These arguments are not persuasive because Wnuk and Chen are solely relied upon as evidence of the weight average and number average molecular weights of TONE P-787.
Claim Objections
Claims 1, 10, and 45 are objected to because of the following informalities:
In line 5 of claim 1, the examiner suggests consistently using either a semicolon or a comma instead using one of each.
In line 9 or claim 1, the examiner suggests replacing “or” with “and” for consistency with the Markush language exemplified in MPEP 2173.05(h).
In line 2 of claim 10, the examiner suggests inserting “wherein the biodegradable polymer is in an amount of” between “and” and “about” for the utmost clarity that the biodegradable polymer content is being limited.
In line 2 of claim 45, “weight a” should read “weight of a.”
Appropriate correction is required.
Claim Rejections - 35 USC § 103
Claims 1, 7, 9, 12-13, 18, 32, 41, 45, 60, and 67, are rejected under 35 U.S.C. 103 as being unpatentable over Bastioli (US 2007/0129468 A1) in view of Silbiger (FR-2732687-A1, English translation provided).
Regarding claims 1, 7, 12-13, 32, 41, 45, and 67, Bastioli teaches a biodegradable composition (title) comprising a thermoplastic starch and a thermoplastic polymer (Abstract), reading on a biodegradable thermoplastic material. The composition may be used in packaging (claim 67) ([0091] and [0126]). In Example 14, Bastioli exemplifies a composition containing 55 parts of PCL TONE 787, 31 parts of maize starch, 0.25 parts of erucamide, 1.75 parts of water, 11 parts of glycerol, and 1 part of oxalate (Table 1). PCL TONE 787 is a polycaprolactone and corresponds to the instant biodegradable polymer in an amount of 55 wt%. Maize starch corresponds to the instant biodegradable polyol in an amount of 31 wt%. Glycerol corresponds to the instant plasticizer (see [0067] of the instant specification) in an amount of 11 wt%.
Bastioli’s Example 14 differs from claim 1 in that it does not comprise boric acid.
However, Bastioli teaches that the composition can comprise boric acid ([0082] and [0116]). Therefore, it would have been obvious to modify the composition of Example 14 to contain boric acid because Bastioli teaches that the composition can contain it.
Bastioli is silent as to a suitable quantity of boric acid.
However, Silbiger teaches that a quantity of 3-10 wt% of boric acid is suitable in biodegradable compositions containing starch and biodegradable polymers. Like Bastioli, Silbiger teaches a biodegradable composition (Silbiger, [1] and [6]) that comprises corn starch (Silbiger, [10]), polycaprolactone (Silbiger, [27]), glycerol (Silbiger, [23]), and boric acid (Silbiger, [36]). Silbiger uses 3-10% by weight of boric acid as an anti-inflammatory agent (Silbiger, [36]-[37]). It would have been obvious to one of ordinary skill in the art at the time of the invention to form a composition according to Bastioli having a boric acid content in the range of 3-10% by weight, as Silbiger demonstrates this range as being suitable for similar compositions. This represents the use of a suitable range of boric acid content in a similar biodegradable composition application. "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416-21 (2007). See MPEP 2141.
Modifying Bastioli’s Example 14 to have 3-10 wt% of boric acid would adjust the content based on overall weight of the other components. Taking the midpoint of the boric acid range (6.5 wt%) to estimate the overall composition, modified Bastioli teaches a composition with about 51 wt% polycaprolactone (reading a biodegradable polymer) (claim 7), about 29 wt% maize starch (reading on a biodegradable polyol) (claims 12-13), about 10 wt% glycerol (reading on a plasticizer that is a melting point modifier) (claims 32, 41, and 45), and about 6.5 wt% boric acid.
Regarding claim 9, Bastioli teaches the material of claim 1 where the amount of polycaprolactone is about 51% by weight.
Bastioli does not exemplify a polycaprolactone content of about 40% by weight.
However, Bastioli further teaches that the ratio between the thermoplastic starch and the polymer is preferably from 1:4 to 4:1 and is selected in a manner such that the polyester constitutes the continuous phase and the starch the dispersed phase ([0079]). Therefore, it would have been obvious to one of ordinary skill to adjust the polycaprolactone content to any amount that satisfies the thermoplastic starch to polymer ratio and the continuous phase teachings of Bastioli. Example 14 uses a starch content of 29 wt%. Bastioli therefore suggets a polycaprolactone content above about 7 wt%. A polycaprolactone content greater than the starch content would be particularly obvious given Bastioli’s teaching that the polymer should be the continuous phase. One would therefore select a polycaprolactone content above about 29 wt%. This range overlaps with the claimed range of about 40 wt%. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. See MPEP § 2144.05.I.
Regarding claim 18, Bastioli teaches the material of claim 1. Claim 1 contains the limitation that the material may optionally comprise 0% to 20% by weight of a filler. Bastioli teaches a species without a filler. Further limitations of the filler, as claimed in claim 18, are made obvious by the rejection over Bastioli because neither claim 1 nor claim 18 require that a filler be present in the material.
Regarding claim 60, Bastioli teaches the material of claim 1. Claim 1 contains the limitation that the material may optionally comprise 1% to 15% by weight of a tackifier. Bastioli teaches a species without a tackifier. Further limitations of the tackifier, as claimed in claim 60, are made obvious by the rejection over Bastioli because neither claim 1 nor claim 60 require that a tackifier be present in the material.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable Bastioli (US 2007/0129468 A1) in view of Silbiger (FR-2732687-A1, English translation provided) as applied to claim 1 above, and further evidenced by Wnuk (US 5,939,467, cited with the 12/18/2025 Office action).
Bastioli teaches the material of claim 1 wherein the biodegradable polymer is TONE P-787 polycaprolactone from Union Carbide ([0167]). TONE P-787 has a Mn of about 80,000, as evidenced by Wnuk (Wnuk, col. 12, lines 40-44).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Bastioli (US 2007/0129468 A1) in view of Silbiger (FR-2732687-A1, English translation provided) as applied to claim 1 above, and further evidenced by Chen (US 2012/0208928 A1, cited with the 12/18/2025 Office action).
Bastioli teaches the material of claim 1 wherein the biodegradable polymer is TONE P-787 polycaprolactone from Union Carbide ([0167]). TONE P-787 has a Mw of about 80,000, as evidenced by Chen (Chen, [0090]). A polycaprolactone quantity of about 40% by weight would have been obvious over Bastioli, as discussed above for claim 9.
Claims 50 and 53 are rejected under 35 U.S.C. 103 as being unpatentable over Bastioli (US 2007/0129468 A1) in view of Silbiger (FR-2732687-A1, English translation provided) as applied to claim 1 above, and further evidenced by Kashikar (US 2006/0083922 A1).
Bastioli teaches the material of claim 1 wherein the plasticizer is glycerol in an amount of 10% by weight. Glycerol reads on a lubricant, as evidenced by Kashikar (Kashikar, [0088]).
Claim 62 is rejected under 35 U.S.C. 103 as being unpatentable over Bastioli (US 2007/0129468 A1) in view of Silbiger (FR-2732687-A1, English translation provided) as applied to claim 1 above, and further evidenced by Ferrill (US 3936315 A).
Bastioli teaches the material of claim 1. Bastioli further teaches that the composition may include from 0.5-20% by weight of urea ([0082] and [0116]). Urea reads on a tackifier, as evidenced by Ferrill (Ferrill, col. 1, line 35).
Bastioli does not anticipate the claimed tackifier content.
However, it would have been obvious to have selected any urea content in the range of 0.5-20% by weight because Bastioli teaches it. A range of 0.5-20% by weight overlaps with the claimed range or 1-10% by weight. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. See MPEP § 2144.05.I.
Claims 1, 7, 9, 12-13, 18, 21, 32, 41, 45, 50, 53, 60, 67, and 80 are rejected under 35 U.S.C. 103 as being unpatentable over Son (KR-20090008111-A, English translation provided).
Regarding claims 1, 7, 9, 12-13, 32, 41, 45, 50, 53, 67, and 80, Son teaches a biodegradable sheet that is manufactured using a twin-screw extrusion sheet machine ([0011]). Because the biodegradable sheet is prepared using an extrusion method, the material used to make the sheet reads on a biodegradable thermoplastic material. The biodegradable sheet can further be used in various packaging materials (claim 67) ([0001]). Son’s material comprises 5-80 wt % starch, 5-20 wt % of plasticizer, 5-50 wt % of biodegradable materials, and 3-55 wt % of auxiliary additives ([0017]). Son’s suitable starches include corn starch ([0018]). Son’s suitable plasticizers include stearic acid ([0019]). Son’s biodegradable materials include polycaprolactone ([0020]). The material may further comprise a compatibilizer that may be benzoyl peroxide and is used in an amount of 0.005-2% by weight ([0024]).
Son lacks sufficient specificity for anticipation.
However, it would have been obvious to select any combination of components taught by Son in any amount taught by Son. Therefore, it would have been obvious to have prepared any composition with 5-50% by weight of polycaprolactone as the thermoplastic polymer, 5-20% by weight of stearic acid as the plasticizer, 0.005-2% by weight of benzoyl peroxide as the compatibilizer, and 5-80% by weight of corn starch (claim 12) as the starch. Stearic acid as the plasticizer (claim 80) reads on the plasticizer is a melting temperature modifier (claim 41) and the plasticizer is a lubricant (claim 50) (see [0065] and [0067] of the instant specification).
A polycaprolactone content of 5-50% by weight overlaps with the claimed biodegradable polymer ranges of 20-90% by weight (claim 1), 20-60% by weight (claim 7), and about 40% by weight (claim 9). It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. See MPEP § 2144.05.I. In addition, Son teaches that when the polycaprolactone (aliphatic polyester) is used in an amount of 5 wt % or less, it may affect sheet formation and strength deterioration during sheet molding and when the polycaprolactone is used in an amount of 50 wt % or more, there is a disadvantage in that the material cost increases ([0020]). Based on the teachings of Son, one of ordinary skill in the art would have understood that increasing the amount of polycaprolactone increases material costs and decreasing the amount of polycaprolactone affects sheet formation and strength deterioration during molding. Therefore, 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 optimized the polycaprolactone quantity of Son into the claimed ranges of 20-90% by weight (claim 1), 20-60% by weight (claim 7), and about 40% by weight (claim 9). One would have been motivated to optimize the polycaprolactone quantity in order to balance cost with sheet formation and strength deterioration during molding. The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.).
A plasticizer content of 5-20% by weight falls within the claimed plasticizer ranges of 3-40% by weight (claim 1) and 5-20% by weight (claim 32). A plasticizer content of 5-20% by weight where all of the plasticizer reads on a melting point modifier and a lubricant overlaps with the claimed ranges of 1-30% by weight of a melting point modifier (claim 45) and 3-30% by weight of a lubricant (claim 53). A cornstarch content of 5-80% by weight overlaps with the claimed ranges of 10-50% by weight (claim 1) and 15-30% by weight (claim 13). A content of 0.005-2% by weight of benzoyl peroxide overlaps with the claimed range of 1-20% by weight of a crosslinker that is benzoyl peroxide. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. See MPEP § 2144.05.I.
Regarding claim 18, Son teaches the material of claim 1. Claim 1 contains the limitation that the material may optionally comprise 0% to 20% by weight of a filler. Son teaches a species without a filler. Further limitations of the filler, as claimed in claim 18, are made obvious by the rejection over Son because neither claim 1 nor claim 18 require that a filler be present in the material.
Regarding claim 21, Son teaches the material of claim 1. Son further teaches that 1-45% by weight of an inorganic filler may be used to reduce the cost of the composition ([0021]). It would have been obvious to one of ordinary skill to have used any filler content in the range of 1-45% by weight because Son teaches it. A filler content of 1-45% by weight overlaps with the claimed range of 1-20% by weight. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. See MPEP § 2144.05.I.
Regarding claim 60, Son teaches the material of claim 1. Claim 1 contains the limitation that the material may optionally comprise 1% to 15% by weight of a tackifier. Son teaches a species without a tackifier. Further limitations of the tackifier, as claimed in claim 60, are made obvious by the rejection over Son because neither claim 1 nor claim 60 require that a tackifier be present in the material.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AUDRA DESTEFANO whose telephone number is (703)756-1404. The examiner can normally be reached Monday-Friday 9-5.
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/AUDRA J DESTEFANO/Examiner, Art Unit 1766
/RANDY P GULAKOWSKI/Supervisory Patent Examiner, Art Unit 1766
