DETAILED ACTION
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 of Group I, claims 1-14 and 20, and species of the film of claim 1, and polypeptide in the reply filed on 7/15/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.03(a)).
Claims 2, 10-14, 38, 52-54 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention and species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 7/15/2026.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words. It is important that the abstract not exceed 150 words in length since the space provided for the abstract on the computer tape used by the printer is limited. The form and legal phraseology often used in patent claims, such as "means" and "said," should be avoided. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, "The disclosure concerns," "The disclosure defined by this invention," "The disclosure describes," etc.
The abstract of the disclosure is objected to because it does not should the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(B) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 3-9, 20 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claim 1 recites “a hydrophilic polymer blend with a polymeric resin weight average molecular weight of from about 20,000 to about 80,000, wherein the hydrophilic polymer blend comprises a polyoxazoline polymer, a polysaccharide or a polypeptide”. What does “a hydrophilic polymer blend” mean? Does it have to be at least two polymers? For polypeptides listed in claim 9, only gelatin is hydrophilic; the rest is either hydrophobic or amphiphilic. Casein, collagen and soy protein have a Mw greater than 80,000. Wheat gluten, zein, whey protein and gelatin do not have a single molecular weight. For purposes of expediting prosecution, the claim is interpreted as “a shelf stable water soluble film comprising a polymer selected from the group consisting of a polyoxazoline polymer, a polysaccharide and a polypeptide; the film has a water content of……”
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.
Claim(s) 1, 3-4, 6-9, 20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Courchay et al (US 2024/0076587).
Courchay teaches a shelf stable water soluble film comprising a caseinate polymer and an anionic polyvinyl alcohol copolymer, the film comprises a residual moisture content of at least about 4%, preferably 5-10% (claims 1, 14, 0020). The caseinate polymer is a mixture of caseinate and casein [0031]. The anionic polyvinyl alcohol copolymer has an average degree of hydrolysis of 75-99% (claim 12).
Because Courchay teaches the claimed composition, it is therefore inherent that the composition exhibit claimed property since such a property is evidently dependent upon the nature of the composition used, see MPEP 2112.01. Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
It is noted that in the limitation of “the film at a thickness of about 3 mil”, the thickness does not further limit the film, it is directed to a property of the film when having that thickness.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claim 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Courchay et al (US 2024/0076587).
Courchay teaches the water soluble polymer is 50-95wt% by weight of the film and the weight ratio of caseinate polymer to the anionic polyvinyl alcohol is 10:90 to 90:10 (claims 2-3). Therefore the amount of the anionic polyvinyl alcohol is 5-85.5wt%. Case law holds that in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached on (571)272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WENWEN CAI/
Primary Examiner, Art Unit 1763
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