DETAILED ACTION
This is an Office action based on application number 18/399,001 filed 29 December 2023, which claims priority to US Provisional Application No. 63/477,561 filed 28 December 2022. Claims 1, 5, 7, 11, 14, 17, 19, 21-22, 24, 27, 32, 34-39, 43-48, 53-54, 73, 75, 86, 88-89, 102-106, and 110-116 are pending.
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, 5, 7, 11, 14, 17, 19, 21-22, 24, 27, 32, 34-39, 43-48, 53, 103-106, and 110-116 in the reply filed on 23 June 2026 is acknowledged.
Examiner’s note – Applicant omitted claim 17 in their election filed 23 June 2026; however, claim 17 is included in the elected group as set forth in the previous restriction requirement. Claim 17 is considered an elected claim.
Claims 54, 73, 75, 86, 88-89, and 102 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 23 June 2026.
Claim Interpretation
Examiner’s Note -
Each of claims 7, 19, 32, 48, and 115 recite multiple ranges inclusive of broader ranges and narrower ranges. The multiple ranges, however, do not rise to the level of indefinite limitations as each is presented as an alternative embodiment (i.e., separated by “or”). As such, each range is treated as a list of alternatively useable ranges.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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, 7, 11, 14, 17, 32, 34-39, 43-46, 48, 103-106, and 110-113 are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (US Patent Application Publication No. US 2018/0118906 A1) (Lee).
Regarding instant claims 1, 7, 11, 14, 17, 32, 34-35, and 112-113:
Lee discloses a water-soluble film comprising a mixture of a water-soluble polyvinyl alcohol and a starch (Claim 1).
Lee discloses that the starch is provided in at least an amount of 2 phr (paragraph [0077]), which includes the ranges recited by claims 1 and 14; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Lee further discloses that the starch has an amylose content of at least 20% (paragraph [0078]), which includes the range recited by claim 11; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Lee further discloses that the starch has a degree of modification of at least about 2% (paragraph [0085]), which includes the range recited by claim 17; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Lee further teaches that the starch modifications are inclusive of hydroxyproylated and hydroxyethylated (paragraph [0023]) (i.e., the non-ionic group modification recited by claim 17).
Lee further discloses that the polyvinyl alcohol (PVOH) is a copolymer comprising anionic monomer units present in amounts of about 1 mol. % to 10 mol. % (paragraph [0073]).
Lee further discloses that the anionic monomer unit is inclusive of monomethyl maleate and alkyl acrylates (paragraph [0066]). Said alkyl acrylates are inclusive methyl acrylate.
With regard to the claimed cook%:
Applicant, in their original disclosure, defines “water-soluble starch” as a starch having a cook% of at least 5%, and that a combination of at least the amylose content and chemical modification allows the starch to achieve the claimed cook% (see Specification at paragraph [0100]).
As Lee discloses a “water-soluble film”, there is substantial reason to believe that Lee desires that the individual components of the film (e.g., the starch) to be water-soluble.
Therefore, as the scope of Lee is inclusive of starches having similar modification at amylose content, as well as a desire for water-solubility, one of ordinary skill in the art would conclude that the scope of Lee includes a starch that is substantially identical to that of Applicant’s invention, and that such an encompassed starch would have the same properties (i.e., having the same cook%).
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP §2112.01(I).
With regard to the claimed miscibility or phase domain of the PVOH and water-soluble starch:
The scope of Lee encompasses modified starches and modified PVOH that are substantially identical to that of Applicant’s invention, and one of ordinary skill in the art would readily conclude that the combination of said encompassed starches and PVOH would have the same properties as the claimed invention (e.g., the same miscibility or phase domain).
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP §2112.01(I).
Regarding instant claim 36:
Lee further discloses that the water-soluble film comprises a plasticizer (Claim 1) in an amount of about 10 wt. % to about 45 wt. % (paragraph [0101]); however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Regarding instant claims 37-39:
Lee further discloses that the plasticizers are inclusive of sorbitol, glycerol, propylene glycol, dipropylene glycol, ethylene glycol, diethylene glycol, triethylene glycol, polyethylene glycol up to 400 MW, 2-methyl-1,3-propanediol, ethanolamines, trimethylpropane, polyether polyols, xylitol ([0100]).
Examiner’s note – glycerine and glycerol are different names for the same composition represented by the formula:
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Regarding instant claim 43:
Lee further discloses that the water-soluble film contains auxiliary agents inclusive of antifoams, antioxidants, antiblocking agents, fillers, sodium metabisulfate, lubricants, release agents, and surfactants (paragraph [0097]).
Regarding instant claims 44-45:
Lee further discloses that the water-soluble film has a cold water (10° C) dissolution time of 100 second or less according to MTM-205 (paragraph [0021]).
Regarding instant claim 46:
Lee further discloses that the water-soluble film has a tensile strength in the range of about 45 MPa to about 60 MPa (paragraph [0021]), wherein said tensile strength is the stress required to break the film (paragraph [0169]). Said “stress required to break the film” is construed to meet the claimed “maximum stress”.
Regarding instant claim 48:
Lee further discloses that the water-soluble film contains at least 20 wt. % PVOH (paragraph [0074]) and at least 2 phr starch (paragraph [0077]).
Given disclosed amounts, Lee is construed to include and/or overlap the ratios recited by the claim; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Regarding instant claim 103:
Lee further discloses that the water-soluble film is useful for creating a sealed article in the form of a pouch defining an interior pouch volume to contain a composition therein (paragraph [0112]).
Regarding instant claims 104-106:
Lee further disclose that the compositions contained in the pouch include household care compositions (detergent compositions) (paragraph [0137]). Lee further discloses that said detergent compositions are inclusive of laundry detergents and dishwashing detergents (paragraph [0141]).
Regarding instant claim 110-111:
Lee teaches that the pouches formed of the water-soluble films contain any desired composition for release into an aqueous environment (paragraph [0114]), which suggests that the pouch has a desired release time.
While Lee does not disclose the specific release time, one of ordinary skill in the art would readily conclude that Lee encompasses an embodiment substantially identical to the claimed invention (i.e., a pouch comprising a substantially identical water-soluble film), and that such an embodiment must have the same properties (e.g., the same release time).
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP §2112.01(I).
Claims 5 and 115-116 are rejected under 35 U.S.C. 103 as being unpatentable over Lee as applied to claim 1 above, and further in view of Cheung et al. (US Patent Application Publication No. US 2009/0123728 A1) (Cheung).
Regarding instant claims 5 and 115-116:
Lee discloses a water-soluble film comprising PVOH, as cited in the rejection of claim 1.
Lee does not disclose the renewable carbon index of the water-soluble film. Lee does not disclose an amount oof bio-based polyvinyl alcohol.
However, Cheung discloses polymer blends comprising biodegradable or bio-based polymers (paragraph [0002]).
Cheung further discloses that the bio-based polymer is inclusive of polyvinyl alcohol (paragraph [0015]).
Cheung teaches that attention has been directed to making compostable polymer compositions as well as polymer compositions as well as polymer compositions that are made of a renewable or sustainable material since they are often biodegradable and nontoxic (paragraph [0007]).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to replace at least a portion of the polyvinyl alcohol of Lee with the bio-based polyvinyl alcohol of Cheung. The motivation for doing so would have been to make a polymer composition that is compostable, biodegradable, and nontoxic.
As to the relative amount of bio-based polyvinyl alcohol (which is construed to influence the renewable carbon index), since the instant specification is silent to unexpected results, the specific amount of bio-based polyvinyl is not considered to confer patentability to the claims. As the compostability, biodegradability, and nontoxic property of the water-soluble film are variables that can be modified, among others, by adjusting the amount of bio-based polyvinyl alcohol, the precise amount would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed amount cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the amount of bio-based polyvinyl alcohol in the prior art combination to obtain the desired properties (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Therefore, it would have been obvious to combine Cheung with Lee to obtain the invention as specified by the instant claims.
Claims 19, 21, 22, 24 are rejected under 35 U.S.C. 103 as being unpatentable over Lee as applied to claim 1 above, and further in view of Matsunaga et al. (US Patent No 4,139,509) (Matsunaga).
Regarding instant claims 19, 21, 22, 24:
Lee discloses a water-soluble film comprising a modified starch having a degree of modification of at least 2%, as cited above.
Lee does not explicitly disclose the claimed cationic group modification.
However, Matsunaga discloses a water-soluble cationic starch wherein the cation is a quaternary ammonium, wherein said cationic starch is represented by the formula:
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See col. 11, lines 7-30.
Such a formula is inclusive of those ranges recited by claims 21, 22, and 24.
Matsunaga teaches that such a cationic starch has excellent storage stability (col. 2, lines 53-54) and is readily combinable with polyvinyl alcohol (col. 2, lines 59-63).
Matsunaga further discloses that the viscosity of the cationic starch is 50 to 1000 centipoises (col. 11, lines
Before the effective filing date of the claims, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to use the cation groups of Matsunaga to modify the starches of Lee. The motivation for doing so would have been that said cationic-modified starches meet those modified starches combinable with polyvinyl alcohol desired by Lee while also providing storage stability.
Therefore, it would have been obvious to combine Matsunaga with Lee to obtain the invention as specified by the instant claims.
Claims 19, 21, and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Lee as applied to claim 1 above, and further in view of Maruhashi et al. (US Patent No. 5,106,890) (Maruhashi).
Regarding instant claims 19, 21, and 27:
Lee discloses a water-soluble film comprising a modified starch having a degree of modification of at least 2%, as cited above.
Lee does not explicitly disclose the claimed cationic group modification.
However, Maruhashi discloses a film prepared from a composition comprising a polyvinyl alcohol and a starch, wherein said film is easily degradable due to mechanical actions or microorganisms (col. 1, lines 5-11).
Maruhashi further discloses that said starch is a cationic starch inclusive of a reaction product of a starch and 2,3-epoxypropyltrimethylammonium chloride (a quaternary ammonium salt) (col. 3, lines 15-19).
Before the effective filing date of the claims, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to modify the starches of Lee with the 2,3-epoxypropyltrimethylammonium chloride of Maruhashi. The motivation for doing so would have been that such a cationic starch is readily combinable with polyvinyl alcohol to form a film that is easily degradable.
Therefore, it would have been obvious to combine Maruhashi with Lee to obtain the invention as specified by the instant claims.
Claims 47 and 114 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lee as applied to claims 1 and 113 above, and further in view of Souter et al. (US Patent Application Publication No. US 2017/0369823 A1) (Souter).
Regarding instant claims 47 and 114:
Lee discloses the water-soluble films as cited in the rejection of claims 1 and 113, above.
Lee further discloses that physical properties inclusive of elongation are of importance and influenced by the composition of the film (paragraph [0083]).
Lee does not explicitly disclose the claimed strain at break.
However, Souter discloses a water-soluble unit composed of a film comprising at least one polyvinyl alcohol copolymer comprising anionic monomer units (Claim 9) and modified starches (paragraph [0062]).
Souter further discloses that said films have a tensile strain at break between 300% and 1600% (paragraph [0067]), which include the ranges recited by the claims; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Souter teaches that it is desirable for said water-soluble units to have adequate strength both soon after making and upon storage, to withstand forces that may be applied during packing, transport, storage, and usage (paragraph [0006]).
Before the effective filing date of the claims, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to ensure that the water-soluble film of Lee has the tensile strain at break disclosed by Souter. The motivation for doing so would have been to ensure that those products composed of the water-soluble film have adequate strength to withstand forces encountered during the intended use of the structure.
Therefore, it would have been obvious to combine Souter with Lee to obtain the invention as specified by the instant claims.
Claim 53 is rejected under 35 U.S.C. 103 as being unpatentable over Lee as applied to claim 1 above, and further in view of Maruhashi and Katayama et al. (JPH0673259A) (Katayama).
Regarding instant claim 53:
Lee discloses a water-soluble film comprising a mixture of a water-soluble polyvinyl alcohol and a starch (Claim 1).
Lee discloses that the starch is provided in at least an amount of 2 phr (paragraph [0077]), which includes the ranges recited by claims 1 and 14; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Lee further discloses that the starch has an amylose content of at least 20% (paragraph [0078]), which includes the range recited by claim 11; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Lee further discloses that the starch has a degree of modification of at least about 2% (paragraph [0085]), which includes the range recited by claim 17; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Lee further discloses that the polyvinyl alcohol (PVOH) is a copolymer comprising anionic monomer units present in amounts of about 1 mol. % to 10 mol. % (paragraph [0073]).
Lee further discloses that the anionic monomer unit is inclusive of monomethyl maleate and alkyl acrylates (paragraph [0066]). Said alkyl acrylates are inclusive methyl acrylate.
With regard to the claimed cook%:
Applicant, in their original disclosure, defines “water-soluble starch” as a starch having a cook% of at least 5%, and that a combination of at least the amylose content and chemical modification allows the starch to achieve the claimed cook% (see Specification at paragraph [0100]).
As Lee discloses a “water-soluble film”, there is substantial reason to believe that Lee desires that the individual components of the film (e.g., the starch) to be water-soluble.
Therefore, as the scope of Lee is inclusive of starches having similar modification at amylose content, as well as a desire for water-solubility, one of ordinary skill in the art would conclude that the scope of Lee includes a starch that is substantially identical to that of Applicant’s invention, and that such an encompassed starch would have the same properties (i.e., having the same cook%).
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP §2112.01(I).
With regard to the claimed miscibility or phase domain of the PVOH and water-soluble starch:
The scope of Lee encompasses modified starches and modified PVOH that are substantially identical to that of Applicant’s invention, and one of ordinary skill in the art would readily conclude that the combination of said encompassed starches and PVOH would have the same properties as the claimed invention (e.g., the same miscibility or phase domain).
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP §2112.01(I).
Lee does not disclose the claimed cationic-modified starch having a particular viscosity.
With regard to the claimed cationic-modification:
Maruhashi discloses a film prepared from a composition comprising a polyvinyl alcohol and a starch, wherein said film is easily degradable due to mechanical actions or microorganisms (col. 1, lines 5-11).
Maruhashi further discloses that said starch is a cationic starch inclusive of a reaction product of a starch and 2,3-epoxypropyltrimethylammonium chloride (a quaternary ammonium salt) (col. 3, lines 15-19).
Before the effective filing date of the claims, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to modify the starches of Lee with the 2,3-epoxypropyltrimethylammonium chloride of Maruhashi. The motivation for doing so would have been that such a cationic starch is readily combinable with polyvinyl alcohol to form a film that is easily degradable.
With regard to the claimed viscosity:
Katayama discloses a film-forming composition comprising a polyvinyl alcohol-based resin and a starch-based resin (paragraph [0001]).
Katayama teaches that the viscosity of the composition impacts initial adhesive strength and coatability (paragraph [0010]). Said viscosity is construed to be influenced, in part, by the viscosity of the starch.
Since the instant specification is silent to unexpected results, the viscosity of the starch component is not considered to confer patentability to the claims. As the coatability of the polyvinyl alcohol/starch composition is a variable that can be modified, among others, by adjusting the viscosity of the component parts of the composition, the precise amount would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed amount cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the viscosity of the starch in the prior art combination to obtain the desired coatability (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Therefore, it would have been obvious to combine Maruhashi and Katayama with Lee to obtain the invention as set forth by the instant claim.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Thomas A Mangohig whose telephone number is (571)270-7664. The examiner can normally be reached M-F 9-5 Eastern.
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/TAM/Examiner, Art Unit 1788 09/11/2026
/HUMERA N. SHEIKH/Supervisory Patent Examiner, Art Unit 1784
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