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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-15, in the reply filed on 06/22/26 is acknowledged.
Claims 16-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 06/22/26.
Applicant’s election without traverse of species i., claims 9-13, in the reply filed on 06/22/26 is acknowledged.
However, after further consideration, the species requirement as set forth in the restriction requirement mailed 04/21/26 is withdrawn.
As such, claims 9-13, previously identified as species i. and claims 14-15, previously identified as species ii., are considered for examination herein.
Claims 1-15 are hereby examined in this office action.
Specification
The attempt to incorporate subject matter into this application by reference to each of the non-patent literature documents in [0021] is ineffective because the references are publications.
The incorporation of essential material in the specification by reference to an unpublished U.S. application, foreign application or patent, or to a publication is improper. Applicant is required to amend the disclosure to include the material incorporated by reference, if the material is relied upon to overcome any objection, rejection, or other requirement imposed by the Office. The amendment must be accompanied by a statement executed by the applicant, or a practitioner representing the applicant, stating that the material being inserted is the material previously incorporated by reference and that the amendment contains no new matter. 37 CFR 1.57(g).
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.
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.
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.
Claims 1-4, 6-12 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Mohanty et al. (US 2023/0192983).
With respect to independent claim 1, Mohanty et al. discloses a biodegradable plastic formulation, comprising:
about 75 wt% to about 85 wt% (Table 3) of a biodegradable polymer ([0069]; [0076]); and
about 15 wt% to about 25 wt% ([0022] and Table 2, wherein 1-40 wt% of fillers are disclosed; Table 3, wherein examples of biocarbon material in an amount of 15% are presented) of poultry waste biochar ([0084], wherein pyrolyzed bio-based products include chicken feathers) comprising a particle size of 50 microns or less ([0050]-[0051]; Table 3, wherein sub-micron and micron sized biocarbon sources are employed).
Mohanty et al. discloses wherein the inclusion of the biocarbon, i.e., pyrolyzed chicken feathers noted above, can be used to improve the oxygen barrier of biopolymers, and, further, wherein the overall filler system can be tailored for film/sheet thermoforming or injection molding for biodegradable and extremely high barrier packaging applications ([0069]). Furthermore, the reference suggests examples that include the biodegradable polymer component in an amount within a range of 75-85 wt% with a biocarbon material that is micron or sub-micron sized in an amount of 15% (Table 3). Additionally, the reference suggests wherein the size of the biocarbon can impact barrier properties ([0107]). As such, when employing a biocarbon of pyrolyzed chicken feathers, i.e., poultry waste biochar, in the biodegradable plastic formulation, it would have been obvious to one having ordinary skill in the art to provide for such having a particle size and weight percent in the range instantly claimed in order to improve the oxygen barrier of the biodegradable plastic formulation therewith and provide for improved barrier properties since it has been held wherein generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.). See also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 wherein it was held "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." and In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) wherein claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art."). Additionally, the Examiner notes, obviousness can be shown in a predictable art when a difference between the claimed ranges is virtually negligible absent any showing of unexpected results or criticality. In re Brandt, 886 F. 3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018). The instant specification fails to explicitly establish the instantly claimed weight percents and particle size range as critical and it is unclear if any unexpected results are achieved by providing for such. Since the biodegradable plastic formulation of Mohanty et al. is suggested as having an improved oxygen barrier properties, it does not appear that such would be considered an unexpected result of providing for the instantly claimed weight percents and poultry waste biochar particle size therein, and, as such, the determination of optimal weight percents for each of the biodegradable polymer and poultry waste biochar, along with the optimal particle size of the poultry waste biochar therein, would be achievable through routine experimentation in the art.
With respect to dependent claim 2, Mohanty et al. discloses wherein the biodegradable polymer comprises PBAT ([0069]; [0082]).
With respect to dependent claim 3, Mohanty et al. discloses wherein the biodegradable polymer comprises PLA ([0069]; [0080]; [0082]).
With respect to dependent claim 4, Mohanty et al. discloses wherein the poultry waste is poultry litter ([0084], wherein pyrolyzed bio-based products include chicken feathers; see instant specification BACKGROUND [0010] and DETAILED DESCRIPTION [0011], wherein poultry litter includes feathers).
With respect to dependent claim 6, Mohanty et al. discloses wherein the poultry waste biochar is obtained by pyrolyzation that can at a temperature of 200-1500oC with a pyrolysis time ranging from 10-60 minutes ([0084]). The reference further suggests wherein barrier properties imparted to the biodegradable plastic formulation can be attributed to the particle size of the biocarbon due to differences in porosity, pore-volume, specific surface area and polarity, which can be influenced by pyrolysis conditions ([0107]). Although silent to the ash content of the poultry waste biochar, since Monhanty et al. suggests wherein various pyrolysis conditions can be used to obtain such, as well as wherein such conditions include the particle size thereof, as well as porosity, pore-volume, specific surface area and polarity in a manner that enables imparting excellent improvements in oxygen barrier properties, it would have been obvious to one having ordinary skill in the art to subject the poultry waste to pyrolysis conditions that provide for an ash content within the range as claimed in order to effectively enhance the oxygen barrier properties of the biodegradable plastic formulation therewith since it has been held wherein generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.). See also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 wherein it was held "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." and In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) wherein claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art."). Additionally, the Examiner notes, obviousness can be shown in a predictable art when a difference between the claimed ranges is virtually negligible absent any showing of unexpected results or criticality. In re Brandt, 886 F. 3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018). The instant specification fails to explicitly establish the instantly claimed ash content as critical and it is unclear if any unexpected results are achieved by providing for such. Since the poultry waste of Mohanty et al. is subjected to pyrolysis conditions that affect the properties thereof, wherein such properties impart improved oxygen barrier properties to the biodegradable plastic formulation, it does not appear that such would be considered an unexpected result of providing for the instantly claimed ash content in the poultry waste biochar, and, as such, the determination of optimal ash content therein would be achievable through routine experimentation in the art.
With respect to dependent claim 7, Mohanty et al. discloses an extruded pellet comprising the biodegradable plastic formulation ([0008]; [0023]; [0085]).
With respect to dependent claim 8, Mohanty et al. discloses wherein the invention relates to reactive extrusion to control the melt flow index (MFI) of the composites so that such can be used in injection molding, blow molding, blown film or thermoforming types of molded products ([0008]). The reference further suggests various exemplary compositions, wherein such are indicated to have a low or high MFI (Table 3). Although silent to the particular value thereof for an extruded pellet at 190oC at 2.16 kg one having ordinary skill in the art would recognize the optimal MFI to impart to the extruded pellet at 190oC at 2.16 kg in order to enhance the properties thereof and/or further enable the use of such in injection molding, blow molding, blown film or thermoforming types of molded products as suggested by Mohanty et al. since
it has been held "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art."). Additionally, the Examiner notes, obviousness can be shown in a predictable art when a difference between the claimed ranges is virtually negligible absent any showing of unexpected results or criticality. In re Brandt, 886 F. 3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018). The instant specification fails to explicitly establish the instantly claimed MFI as critical and it is unclear if any unexpected results are achieved by providing for such. Since the MFI of the extruded pellet of Mohanty et al. can be controlled, one having ordinary skill would recognize the optimal value for an optimized extruded pellet.
With respect to dependent claim 9, Mohanty et al. discloses a biodegradable blown film produced from the extruded pellet ([0008]; [0069]; [0085]; [0089]; [0090]).
With respect to dependent claims 10-12, Mohanty et al. teaches wherein the melt strength of the polymer melt refers to the resistance of the polymer melt to stretching, which influences drawdown and sag from the die to the rolls in polymer processing ([0059]). The reference further suggests wherein the composites have high melt strength ([0010]). Although silent to a tear resistance, tensile resistance or percent elongation in each direction as claimed when measured at the noted conditions, since the composites of Mohanty et al. have high melt strength and thus resistance to stretching, it is the position of the Office that one having ordinary skill would recognize the optimal tear resistance, tensile resistance or percent elongation to impart to the composite in order to enhance the durability of the blown film during polymer processing since it has been held "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art."). Additionally, the Examiner notes, obviousness can be shown in a predictable art when a difference between the claimed ranges is virtually negligible absent any showing of unexpected results or criticality. In re Brandt, 886 F. 3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018). The instant specification fails to explicitly establish the instantly claimed tear resistance, tensile resistance or percent elongation as critical and it is unclear if any unexpected results are achieved by providing for such. Since the resistance of the blown film to stretching is high to enhance the durability of the blown film during polymer processing, it does not appear that such would be an unexpected result of providing for a tear resistance, tensile resistance or percent elongation as claimed, and, as such, one having ordinary skill would recognize the optimal tear resistance, tensile resistance or percent elongation to impart to the biodegradable composite to obtain an optimized blown film.
With respect to dependent claim 14, Mohanty et al. discloses an injection molded product produced from the extruded pellet ([0008]; [0085]; [0089]).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Mohanty et al. as applied to claim 1 above, and further in view of Mohanty et al. (US 2017/0107334 – ‘334 herein).
Mohanty et al. discloses the biodegradable plastic formulation as set forth above with respect to independent claim 1, wherein biocarbon material is present therein for the purpose of improving the oxygen barrier of the biopolymers ([0069]); the biocarbon can be pyrolyzed from various feedstocks including materials derived from biomass including soy hulls, oat hulls, plant-derived Miscanthus fibers ([0080]) or other biobased products such as chicken feathers ([0084]). The reference, however, fails to disclose the poultry waste as poultry manure as claimed. ‘334 teaches biocarbon materials used in the production of plastic composites (abstract) wherein such include pyrolyzed biomass, including biomass selected from plant fibers, agricultural biomass, forest biomass and animal/bird manure ([0015]; [0040]; [0056]). It would have been obvious to one having ordinary skill in the art to try animal/bird, i.e., poultry, manure as a biomass source in the biodegradable plastic formulation of Mohanty et al. in order to yield the predictable result of improving the oxygen barrier of the biopolymers therewith. ‘334 suggests bird manure as a known alternative to the biomass sources disclosed by Mohanty et al. and thus one of but a finite list of possibilities, and therefore, one of ordinary skill would recognize the ability to try such as an alternative to the biomass sources disclosed by Mohanty et al.. When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Mohanty et al. as applied to claim 9 above, and further in view of Reich (US 5350783).
With respect to dependent claim 13, Mohanty et al. discloses the blown film as set forth above with respect to claim 9, wherein such is used in packaging and other applications such as biodegradable trays, pouch bags, capsules and other containers for oxygen sensitive products such as chemicals, pharmaceuticals and food ([0068]). The reference, however, fails to disclose such as comprising an agricultural mulch film. Reich teaches degradable polymer products having enhanced biodegradability (abstract) wherein such are useful as plastic structures in the form of agricultural films and packaging films, wherein such packaging films include those used for food, cosmetics and pharmaceuticals, while agricultural films include those used for agricultural mulch (col. 1, l. 6-21); the films are reduced to products that can biodegrade (col. 3, l. 8-21). Since Mohanty et al. suggests the blown films useful as packaging liners for food, cosmetics and pharmaceuticals and Reich teaches biodegradable polymer products used for such purposes, as well as agricultural mulch film, it would have been obvious to one having ordinary skill in the art to try the blown film of Mohanty et al. as an agricultural mulch film in order to yield the predictable result of enabling subsequent biodegradation thereof after use so that it does not leave impacts on the environment after its useful life.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Mohanty et al. as applied to claim 14 above, and further in view of Bergman (US 5060420).
With respect to dependent claim 15, Mohanty et al. discloses wherein the plastic composite is injection molded and may be used in packaging and other applications such as biodegradable trays, pouch bags, capsules and other container for oxygen sensitive products such as chemicals, pharmaceuticals and food ([0068]). Although silent to such as including a planting pot, Bergman teaches a bag 14 that is biodegradable and used for the purpose of planting so that is does not impede the growth of a bulb after planting (col. 2, l. 42-56). Since Mohanty et al. discloses the molded product as including pouch bags, it would have been obvious to one having ordinary skill in the art to try such a pouch bag as a planting pot as taught by Bergman in order to plant a bulb without impeding the growth thereof after planting.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
CN 110698822 B discloses a full biodegradable composite material for a catering tool comprising 40 parts of PBAT, 60 parts of PLA, and 5 parts of surface high temperature modified biological carbon in the form of biochar.
US 11168207 discloses a green biodegradable binder comprising biochar obtained from poultry manure and curable epoxy.
US 2019/0330443 discloses a biodegradable plastic formulation comprising biochar obtained from hemp with degradable PLA, wherein particle sizes thereof are suggested.
US 20200283600 discloses a biodegradable plastic formulation comprising an algae biomass having a particle size with PBAT or PLA.
US 10870608 discloses biochar encased in a biodegradable material
CA 2929129 C discloses a polymer composite containing polycarbonate, PLA and biochar derived from animal/bird manure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Angela M DiTrani Leff whose telephone number is (571)272-2182. The examiner can normally be reached Monday-Friday, 9AM-5PM.
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, Doug Hutton can be reached at 5712724137. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Angela M DiTrani Leff/Primary Examiner, Art Unit 3674
ADL
08/18/26
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