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 .
Claims 1, 3-4, 7, 9-10, 12-13, 18, 21, 32, 41, 45, 50, 53, 60, 62, 67, and 71 are pending as amended on February 17, 2026. Claims 4 and 71 stand withdrawn from consideration. Support for amended claim 1 is found in specification [0020].
The new grounds of rejection set forth below were necessitated by the amendment to claim 1 further limiting the crosslinker chemistry. Therefore, this action is properly made final.
Any objections and/or rejections made in the previous Office action and not repeated below are hereby withdrawn.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, see pages 8-9, filed February 17, 2026, with respect to the rejections 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. Skupin (US 9,844,797 B2) does not teach or suggest a crosslinker selected from the group recited in amended claim 1. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Bastioli (US 5,412,005 A) in view of Yano (US 2006/0276617 A1).
The rejections of claims 3 and 10 laid out below rely on Wnuk (US 5,939,467) and Chen (US 2012/0208928 A1), respectively, for evidentiary support. Applicant argues (pages 10-11) that these references do not suggest a composition comprising a biodegradable polyol and a crosslinker. These arguments are not persuasive because Wnuk and Chen are solely relied upon for evidentiary support of the molecular weight of poly(ε-caprolactone) sold under the tradename TONE P-787.
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 5,412,005 A) in view of Yano (US 2006/0276617 A1).
Regarding claims 1, 7, 9, and 12-13, Bastioli teaches a biodegradable thermoplastic material (title and col. 11, line 41). The material comprises about 20-60 wt% of a starch component and about 10-50 wt% of a component A (col. 6, lines 6-10). The starch components taught by Bastioli include a native starch extracted from maize (col. 6, lines 28-30), reading on a biodegradable polyol wherein the biodegradable polyol is corn (maize) starch (claim 12). Poly(ε-caprolactone) is preferred as component A (col. 5, lines 17-19), reading on a biodegradable polymer. The composition preferably includes 5-25 wt% of a plasticizer (col. 7, lines 10-13). Bastioli further teaches that the composition can include cross-linking agents such as aldehydes, ketone, and glyoxals (col. 10, lines 49-51). Glyoxals read on the claimed crosslinker is glyoxal. The optional filler and tackifier of claim 1 are not required in Bastioli’s material.
Bastioli does not anticipate the claimed biodegradable polymer and biodegradable polyol contents.
However, it would have been obvious to one of ordinary skill in the art prior to the effective filing date to have selected any poly(ε-caprolactone) content in the range of 10-50 wt% and any starch content in the range of 20-60 wt% because Bastioli teaches these ranges. A range of 10-50 wt% overlaps with the claimed ranges of 20% to 90% by weight (claim 1), 20% to 60% by weight (claim 7), and about 40% by weight (claim 9) of a biodegradable polymer. A range of 20-60 wt% overlaps with the claimed ranges of 10% to 50% by weight (claim 1) and 15 to 30% by weight (claim 13) of a biodegradable polyol. 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.
Bastioli does not anticipate the crosslinker quantity.
However, prior to the effective filing date of the claimed invention, crosslinker quantity was known to be a result effective variable controlling heat resistance, moldability, and operability, as evidenced by Yano.
Yano teaches a polyester resin that is biodegradable (Yano, abstract). Yano’s biodegradable polyester resin can comprise poly(ε-caprolactone) and starch (Yano, [0019]) as well as plasticizers (Yano, [0048]). Yano teaches that 0.01 to 10 parts per mass based on 100 parts per mass of biodegradable polyester resin (Yano, [0024]). Yano further teaches that if the amount of crosslinking agent is smaller than 0.01 part by mass, the heat resistance and the moldability cannot be provided, but if the amount of crosslinking agent is greater than 10 parts by mass, the crosslinking degree is too high and the operability is reduced (Yano, [0024]).
Based on the disclosure of Yano, one of ordinary skill would have understood that a crosslinker amount of 0.01-10 parts by mass based on 100 parts by mass of biodegradable resin is suitable for biodegradable films with a balance of heat resistance, moldability, and operability. This content corresponds to a crosslinker content of about 0.01-9 wt%. One would also have understood that too little crosslinker reduces heat resistance and moldability, but too much crosslinker leads to too high of a crosslinking degree and thus reduces operability. 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 crosslinker content of Bastioli to any content within the range of 0.01-9 wt% suggested by Yano, including a content that falls within claimed range of 1% to 20% by weight. One would have been motivated to optimize the crosslinker content in order to achieve sufficient heat resistance and moldability without reducing operability by crosslinking the composition too much. 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.).
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 32, Bastioli teaches the material of claim 1 where the plasticizer is in an amount of 5-25 wt%.
Bastioli does not anticipate plasticizer in an amount of 5% to 20% by weight.
However, it would have been obvious to one of ordinary skill in the art prior to the effective filing date to have used any plasticizer content in the range of 5-25 wt% because Bastioli teaches this range. A range of 5-25 wt% overlaps with the claimed range of 5-20% 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 claims 41 and 45, Bastioli teaches the material of claim 1 where the plasticizer is in an amount of 5-25 wt%. Bastioli further teaches that plasticizer can lower the melting points of synthetic polymers (col. 10, lines 30-32). The plasticizers of Bastioli therefore read on wherein the plasticizer is a melting temperature modifier.
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.
Regarding claim 67, Bastioli teaches the material of claim 1. Bastioli further exemplifies using the composition to make bottles (col. 14, lines 18-19), reading on packaging, and teaches packaging in general comprising the material (col. 16, line 23).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Bastioli (US 5,412,005 A) and Yano (US 2006/0276617 A1) 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 poly(ε-caprolactone). Bastioli further teaches that a poly(ε-caprolactone) molecular weight above 40,000 is preferred (col. 3, lines 48-51).
Bastioli does not explicitly teach a number average molecular weight (Mn) of 80,000.
However, Bastioli exemplifies the use of poly(ε-caprolactone) sold under the tradename TONE P-787 from Union Carbide (col. 12, lines 21-22). TONE P-787 has a Mn of about 80,000, as evidenced by Wnuk (Wnuk, col. 12, lines 40-44). 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 used poly(ε-caprolactone) with a Mn of 80,000 because Bastioli exemplifies use of a poly(ε-caprolactone) with a Mn of about 80,000.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Bastioli (US 5,412,005 A) and Yano (US 2006/0276617 A1) 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 where the biodegradable polymer is poly(ε-caprolactone). A poly(ε-caprolactone) content of about 40% by weight would have been obvious to one of ordinary skill because the content range taught by Bastioli overlaps with the claimed range of about 40% by weight, as laid out above for claim 9.
Bastioli teaches that a poly(ε-caprolactone) molecular weight above 40,000 is preferred (col. 3, lines 48-51).
Bastioli does not explicitly teach a weight average molecular weight (Mw) of 80,000.
However, Bastioli exemplifies the use of poly(ε-caprolactone) sold under the tradename TONE P-787 from Union Carbide (col. 12, lines 21-22). TONE P-787 has a Mw of about 80,000, as evidenced by Chen (Chen, [0090]). 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 used poly(ε-caprolactone) with a Mw of 80,000 because Bastioli exemplifies use of a poly(ε-caprolactone) with a Mw of about 80,000.
Claims 18 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Bastioli (US 5,412,005 A) and Yano (US 2006/0276617 A1) as applied to claim 1 above, and further in view of Miyashita (US 20150025216 A1).
Bastioli teaches the material of claim 1. Bastioli further teaches that the mixture can comprise additives such as cellulose acetates and chitosan (col. 10, lines 57-61). These components read on the filler is cellulose acetate or chitosan (claim 18).
Bastioli is silent as to the filler amount.
However, Miyashita teaches adding fillers to aliphatic polyesters in order to provide the polyesters with mechanical strength (Miyashita, [0045]). Miyashita’s fillers include chitosan and cellulose (Miyashita, [0045]). Miyashita teaches that the filler amount is preferably 1-50 parts by weight per 100 parts by weight of the polyester (Miyashita, [0045]). It would have been obvious to one of ordinary skill in the art prior to the effective filing date to have substituted the unspecified chitosan quantity of Bastioli with the filler content of Miyashita in order to provide mechanical strength.
A chitosan content of 1-50 parts by weight per 100 parts by weight of the polyester corresponds to 1-50 parts by weight per 100 parts by weight of poly(ε-caprolactone) in Bastioli’s material. Modified Bastioli teaches 10-50 wt.% of poly(ε-caprolactone) (see claim 1 discussion above). Modified Bastioli in view of Miyashita therefore suggests about 0.1-25 wt.% of chitosan. It would have been obvious to one of ordinary skill in the art prior to the effective filing date to have selected any chitosan content in the range of 0.1-25 wt.% because modified Bastioli teaches this range. A range of 0.1-25 wt.% overlaps with the claimed range of 1-20% by weight (claim 21). 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.
Claim 50 and 53 are rejected under 35 U.S.C. 103 as being unpatentable over Bastioli (US 5,412,005 A) and Yano (US 2006/0276617 A1) as applied to claim 1 above, and further evidenced by Wempe (US 2009/0163449 A1).
Bastioli teaches the material of claim 1. Bastioli’s preferred plasticizers include polyethylene glycol and polypropylene glycol (col. 10, lines 3-6).
Bastioli does not explicitly state that the plasticizer is a lubricant.
However, prior to the effective filing date of the claimed invention, polyethylene glycol and polypropylene glycol were known as lubricants, as evidenced by Wempe. Wempe teaches lubricants including polyethylene glycol and polypropylene glycol (Wempe, [0044]). Bastioli’s polyethylene glycol and polypropylene glycol plasticizers therefore read on wherein the plasticizer is a lubricant (claim 50).
Bastioli teaches 5-25 wt% of a plasticizer (col. 7, lines 10-13). A content of 5-25 wt.% falls within the claimed range of 3% to 30% by weight (claim 53).
Claim 62 is rejected under 35 U.S.C. 103 as being unpatentable over Bastioli (US 5,412,005 A) and Yano (US 2006/0276617 A1) as applied to claim 1 above, and further evidenced by Mergtoglu (US 20170327621 A1).
Bastioli teaches the material of claim 1. Bastioli further teaches 0-45 wt.% of a component B (col. 6, line 11) and teaches that component B is preferably polyvinyl alcohol (col. 5, lines 21-23).
Bastioli does not explicitly state that polyvinyl alcohol is a tackifier.
However, prior to the effective filing date of the claimed invention polyvinyl alcohol was known as a tackifier, as evidenced by Mergtoglu. Mergtoglu includes polyvinyl alcohol in a list of tackifiers (Mergtoglu, [0215]). Bastioli’s polyvinyl alcohol therefore reads on the instantly claimed tackifier.
Bastioli does not anticipate a tackifier content of 1% to 15% by weight.
However, it would have been obvious to one of ordinary skill in the art to have selected any polyvinyl alcohol content in the range of 0-45 wt.% because Bastioli teaches this range. A range of 0-45 wt.% polyvinyl alcohol overlaps with the claimed tackifier content of 1% to 15% 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.
Conclusion
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.
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
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