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 .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 1 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 1 requires “wherein the layer C comprises an amorphous PLA in an amount of about 1 wt% to about 80 wt% of the total weight of the layer C.” However, after consideration of the instant specification, there is not full support for this limitation. There is no explicit description of this limitation and the examples of the instant specification only provide various amounts of specific amorphous PLA polymers. Specifically, Table 3 illustrates the use of specific materials in specific amounts (i.e. PLA10A from 1 to 6 wt%; LX975 from 24 to 74 wt%). Therefore, the claim is rejected for failing to comply with the written description requirement as there is no support for the claimed range of 1% to 80% of all amorphous PLA polymers. Claims 3-14, 21, 23, 25, and 27-30 are rejected for depending on claim 1.
Claim 1 is 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claim 1 requires “wherein the layer C comprises an amorphous PLA in an amount of about 1 wt% to about 80 wt% of the total weight of the layer C” and “wherein the layer A and the layer C both comprise a compostable polymer and migratory additives, wherein the compostable polymer is in the range of at least 60 wt% and the migratory additives are less than 0.1 wt%.” However, it is unclear as to how a layer C can comprise both of these claimed ranges such that the inclusion of more than 39.9 wt% of an amorphous PLA resulting in a content of greater than 100%, which is not possible. Therefore, the claim is rejected for failing to point out and distinctly claim the subject matter that is applicant’s invention. Claims 3-14, 21, 23, 25, and 27-30 are rejected for depending from claim 1. For the purposes of examination, the claim is to be interpreted to state “wherein the layer C comprises an amorphous PLA in an amount of about 1 wt% to about 39.9 wt% of the total weight of the layer C” as described in paragraph [0034] of the instant specification (PGPUB Version).
Claim 13, and any claim dependent from claim 13 (claim 14), 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 13 requires “wherein the cap layer comprises a non-migratory inorganic particle at an amount less than 20 wt.% of the total weight of the cap layer.” As such, it appears as though the claim requires the cap layer to contain the inorganic particle yet requires a range which includes 0 wt.% which one of ordinary skill in the art would recognize as the inorganic particle not being present in the cap layer. Therefore, the claim is rejected for failing to point out and distinctly claim what is considered the subject matter that is applicant’s invention.
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.
Claims 1, 3-10, 12-14, 21, 23, 25 and 27-30 are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (US 2011/0081543) in view of Johnson et al. (US 2022/0033649), Cloutier et al. (WO 2010/019944) and Busch et al. (US 2009/0169851).
Regarding claim 1, Lee teaches a biodegradable multilayer film suitable for food packaging which includes a core layer (“layer B”), a polymeric barrier receiving layer (“layer A”), an inorganic barrier layer, and a heat seal layer (“layer C”) on an opposite side of the core layer from the PBR layer (Paragraphs [0002]; [0022]; Fig. 3). The core layer may be formed from a PHA or PLA resin as a major component (“a core layer having a PHA resin or a PLA resin about 20 wt.% to about 80 wt.%”) (Paragraph [0028]). The heat seal layer may be formed from a polyhydroxy acid compound such as PHA, PLA, and PCL which are identified in applicant’s specification as being a TUV-certified polymer (Instant Specification, PGPUB, Paragraph [0025]) (Paragraphs [0026]; [0028]). The PBR layer may be formed from a polyester (Paragraph [0031]).
Lee is silent with respect to the core layer further comprising a modifier X comprising a biodegradable polymer having a glass transition temperature of Tg ≤ 60°C in an amount in a range of 0 wt.% to about 40 wt.%.
Johnson teaches a biodegradable polymeric composition for packaging applications which are predominantly home compostable and are suitable for film forming applications (Paragraphs [0002]-[0005]). The compositions are formed from 5 to 95 wt% of a PHA and 5 to 95% of at least one of PLA, PBS, PBSA, PBAT and mixtures thereof, which are all suitable for the modifier X (Instant Specification, PGPUB, Paragraph [0089]) (Paragraph [0006]).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing of the invention to form the core layer from Lee from the polymeric compositions of Johnson which include from 5 to 95 wt% of a PHA and 5 to 95% of at least one of PLA, PBS, PBSA, PBAT and mixtures, which are all suitable for the modifier X of claim 1 and the compositions are predominantly home compostable and are suitable for film forming applications.
Lee is silent with respect to the heat seal layer comprising 1% to 40% of the amorphous PLA, see 35 U.S.C 112(b) rejection above, along with at least 60% of a compostable polymer and migratory additives in a weight range of less than 0.1 wt% and the PBR layer being formed from at least 60 wt% of a compostable polymer and migratory additives in a weight range of less than 0.1 wt%.
Busch teaches films made from a base layer and a top layer (Paragraph [0001]). The top layer is taught to be a sealable and peelable layer formed from two different polymers being polymer A and polymer B (Paragraph [0010]). The polymer A is an amorphous PLA and component B is any polymer which leads to the reduction of the sealability of the top layer (Paragraphs [0013]; [0017]). The component A is present in the range of 30 to 80 wt% and the component B is present in the range of 20 to 70 wt% (Paragraph [0012]). The top layers provide sufficient sealability and strength (Paragraph [0009]).
Cloutier teaches multi-layer biaxially oriented polylactic acid (BOPLA) films which provide improved moisture barrier properties and may be subjected to metallizing (Paragraphs [0001]; [0014]). The films may be coextruded three-layer films with a PLA core layer, a first PLA resin-containing layer and a heat sealable resin layer (“layer C” & “wherein the layer C is a heat sealant layer”) (Paragraph [0047]). The heat sealable resin layer and the first PLA resin-containing layers are formed from an PLA resins and includes 300 to 10,000 ppm of migratory additives in order to control the COF of their respective layers (Paragraphs [0016]; [0022]-[0023]).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing of the invention to form the heat sealable layer from the mixture of components A and B, being amorphous PLA and a biodegradable polymer wherein the component A is present in the range of 30 to 80 wt% and the component B is present in the range of 20 to 70 wt% such that the mixture provides sufficient sealability and strength as taught by Busch. Furthermore, it would have been obvious to form the PBR layer from the first PLA resin layer, which is formed from PLA resins in order to allow the films to be metallized while improving moisture barrier properties, as taught by Cloutier. Furthermore, it would have been obvious to form both the heat seal layer and the PBR layers to include 300 to 10,000 ppm of migratory additives in order to control the COF properties of the layers.
Lee is silent with respect to the films having a modulus in a machine direction of about 1000 MPa to 3000 MPa and in a transverse direction in a range of about 2000 MPa to 4500 MPa measured according to ASTM D882 and the films having a plate out in a range of 0 and 1 on a scale of 0 to 3.
However, these properties appear to be dependent on the materials and methods of forming the films of claim 1 such that one of ordinary skill in the art would recognize that a film which is formed from substantially identical materials and methods would have substantially identical properties as well. MPEP 2112.01: 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). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433.
In the instant case, the films of claim 1 require the materials for forming the layer B, being the PHA or PLA resin with the modifier X, the materials for the layer C being a heat sealant layer, and the materials for the layer A. Each of the materials are taught by the combination of Lee in view of Johnson, Busch and Cloutier.
The methods of forming the films include a co-extrusion method followed by casting or blowing processes as well as biaxial stretching to achieve the claimed properties (Instant Specification, PGPUB, Paragraph [0146]). Each of these method steps are taught by Johnson which includes a co-extrusion method, a casting process and biaxial stretching (Paragraphs [0043]-[0048]).
Therefore, one of ordinary skill in the art would recognize that the materials and methods taught by the combination of Lee, Johnson, Busch and Cloutier are substantially identical to that of applicant’s invention, which would result in substantially identical properties including, but not limited to the films having a modulus in a machine direction of about 1000 MPa to 3000 MPa and in a transverse direction in a range of about 2000 MPa to 4500 MPa measured according to ASTM D882 and the films having a plate out in a range of 0 and 1 on a scale of 0 to 3.
Regarding claim 3, Lee teaches the films as discussed above with respect to claim 1. As discussed above, the core layer is formed from the compositions of Johnson which include 5 to 95 wt% of at least one of PLA, PBS, PBSA, PBAT, which are all suitable for the modifier X of claim 1.
Regarding claim 4, Lee teaches the films as discussed above with respect to claim 1. As discussed above, the heat seal layer and the PBR layers may be formed from PLA which is identified in applicant’s specification as being a TUV-certified home compostable polymer tested as per AS 5810-10 (2010).
Regarding claim 5, Lee teaches the films as discussed above with respect to claim 1. As discussed above, the heat seal layer and the PBR layers may be formed from a polyhydroxy acid compound such as PLA and copolymers of poly(lactide) and poly(glycolide) (“PLA-co-GA”) (Lee; Paragraph [0028]).
Regarding claim 6, Lee teaches the films as discussed above with respect to claim 1. As discussed above, the heat seal layers are formed from a component A, being amorphous PLA, in a range of 30 to 80 wt% (“wherein the layer C further comprises a non-home-compostable but industrial compostable polymer in an amount of about 10 wt% to 40 wt%”).
Regarding claim 7, Lee teaches the films as discussed above with respect to claim 1. As discussed above, the second biodegradable polymer of the polymer composition may include PLA polymers which one of ordinary skill in the art would recognize as including crystalline, semi-crystalline and amorphous PLA polymers.
Regarding claim 8, Lee teaches the films as discussed above with respect to claim 1. Johnson teaches the PHA compound being PHB (Paragraph [0029]).
Regarding claim 9, Lee teaches the films as discussed above with respect to claim 2. As discussed above, the layer A is a PBR and an inorganic barrier layer (“non-sealable layer”) and the layer C is a heat sealable layer.
Regarding claim 10, Lee teaches the films as discussed above with respect to claim 1. As discussed above, the films of the combination of Lee and Johnson have substantially identical properties which would include a gloss less than 120 measured at 60° angle on a non-heat sealable layer measured according to ASTM 2457.
Regarding claim 12, Lee teaches the films as discussed above with respect to claim 1. As discussed above, the heat seal layers are formed from a component A, being amorphous PLA, in a range of 30 to 80 wt% (“wherein the non-home-compostable but industrial compostable polymer comprises a PLA resin”).
Regarding claims 13-14, Lee teaches the films as discussed above with respect to claim 1. The heat seal layer may further contain antiblocking inorganic particles in a range of 5 wt% or less (Paragraphs [0038]-[0039]).
Regarding claim 21, Lee teaches the films as discussed above with respect to claim 1. Cloutier further teaches the films having a thickness of 10 to 100 microns(Paragraph [0050]).
Regarding claim 23, Lee teaches the films as discussed above with respect to claim 1. The heat seal layer may further contain antiblocking inorganic particles in a range of 5 wt% or less (Paragraphs [0038]-[0039]).
Regarding claim 25, Lee teaches the films as discussed above with respect to claim 1. Cloutier further teaches the heat seal layers having thicknesses of 0.5 to 5 microns (Paragraph [0043]).
Regarding claims 27-28, Lee teaches the films as discussed above with respect to claim 1. Johnson further teaches the compositions including up to 5% of a nucleating agent (Abstract).
Regarding claim 29, Lee teaches the films as discussed above with respect to claim 23. Cloutier further teaches antiblock particles having a diameter of 2 to 6 microns (Paragraph [0021]).
Regarding claim 30, Lee teaches the films as discussed above with respect to claim 1. Busch further teaches the amorphous PLA resins having a glass transition temperature of 40 to 80°C (Paragraph [0016]).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (US 2011/0081543) in view of Johnson et al. (US 2022/0033649), Cloutier et al. (WO 2010/019944) and Busch et al. (US 2009/0169851) as applied to claim 1 above, and further in view of Khemani et al. (US 6,573,340).
Regarding claim 11, Lee teaches the films as discussed above with respect to claim 1.
Lee is silent with respect to the core layer further including a petroleum-based polymer having a glass transition temperature of less than 10°C in an amount ranging from more than 0 wt% and less than 5 wt%.
Khemani teaches biodegradable polymer blends which include stiff and soft biopolymers wherein the soft biopolymers have glass transition temperatures of less than 0° (Abstract). The soft polymers are provided in a range of 1 wt% to 80 wt% and provide flexibility to the blends when formed into films (Col. 4, Lines 11-28).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing of the invention to form the core layers of Lee to further include 1 wt% to 80 wt% of a soft biopolymer in order to impart flexibility as taught by Khemani.
Response to Arguments
Applicant’s arguments/amendments, see page 5, filed 01/09/2026, with respect to the 35 U.S.C 112(b) rejections of claims 1 and 11 have been fully considered and are persuasive. The rejections of 09/09/2025 has been withdrawn.
Applicant's arguments filed 01/09/2026, regarding the 35 U.S.C 112(b) rejection of claim 13 have been fully considered but they are not persuasive. Applicant has not amended the claim to require more than 0 wt% indicating that the non-migratory additives of layer A and/or layer C are present. Therefore, the rejection is maintained.
Applicant’s arguments/amendments, see page 6, filed 01/09/2026, with respect to the 35 U.S.C 103 rejection of claim 1 have been fully considered and are persuasive.
On page 6, applicant argues that the amendments to claim 1 overcome the combination of Lee in view of Johnson such that neither reference teaches “wherein the layer C comprises an amorphous PLA in an amount of about 1 wt.% to about 80 wt.% of the total weight of the layer C; wherein the layer C is a heat sealant layer; wherein the layer A and the layer C both comprise a compostable polymer and migratory additives, wherein the compostable polymer is in a range of at least 60 wt. %and the migratory additives are less than 0.1 wt. %of a total weight of their respective layer.”
The examiner concedes in that the amendments overcome the most recent rejection in view of Lee and Johnson. Therefore, the rejection of 09/09/2025 has been withdrawn. However, upon further consideration, a new ground of rejection is made in view of Lee, Johnson, Busch, and Cloutier.
The current rejection is made FINAL in view of the amendments to the claims.
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 DANIEL P DILLON whose telephone number is (571)270-5657. The examiner can normally be reached Mon-Fri; 8 AM to 5 PM.
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/DANIEL P DILLON/Examiner, Art Unit 1783
/MARIA V EWALD/Supervisory Patent Examiner, Art Unit 1783
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