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 with traverse of Group I, claims 1-9, in the reply filed on 8/14/2026 is acknowledged. The traversal is on the ground(s) that claim 10, as amended, requires all the limitations of claim 1, and claims 10-20 are now depending on claim 1. Pursuant to the procedures set forth in MPEP § 821.04(a), the restriction requirement between inventions Group I and Group II, as set forth in the Office action mailed on 6/22/2026, is hereby withdrawn and claims 10-20 are hereby rejoined and fully examined for patentability under 37 CFR 1.104.
Claims 1-20 are pending and are being examined on the merits in the present action.
Claim Objections
Claim 1 is objected to because of the following informalities: claim 1 currently recites “…and a plasticizer, a lubricant, or both….”. It appears applicant intended to recite “…and a plasticizer, or a lubricant, or both….”. Appropriate correction is required.
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.
Claim(s) 1-3, 5-10, 14-15 and 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over Jung (US 2008/0145656) in view of Vaisanen (US 2022/0033648).
Regarding claims 1 and 5, Jung teaches a composition (para [0009]-[0018]) comprising:
-a biodegradable resin (para [0009], i.e., biodegradable resin);
-a plant-based filler (para [0010], [0024] [0025], plant-based filler such as hemp, meeting the claimed material limitations of claim 5) present in an amount of about 10 to 50% (para [0010]), which range overlaps with the instantly claimed range of 20 percent or more based on a total weight of the composition (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). MPEP 2144.05);
- one or more compatibilizers (para [0032] [0033]); and
-a plasticizer, or, a lubricant, or both (para [0038], includes suitable additives such as plasticizer).
Jung teaches its composition is suitable for production of various articles (para [0018]), and suitable to be configured to be extruded into various articles as desired (para [0017] [0052]).
Jung does not specifically teach an article having a wall of the specific thickness as instantly claimed.
Vaisanen teaches biodegradable resin-based composition including biodegradable resin and plant-based filler (para [0040-[0042] [0058]) that is suitable to be configured to be extruded into a thin walled article having a wall of thickness of equal or less than about 1.5 mm (para [0001] [0023] [0028] [0040-[0042]), which range overlaps with the instantly claimed range of 0.1 mm to 0.22 mm. 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). MPEP 2144.05).
It would have been obvious to one of ordinary skill in the art to modify Jung in view the teachings of Vaisanen, to form the biodegradable resin composition of Jung into a thin-walled article as taught by Vaisanen (i.e., having a wall having a thickness overlapping with the instantly claimed range, as discussed above), and there is a reasonable expectation of success because Vaisanen teaches that biodegradable resin-based compositions (including biodegradable resin and plant-based filler) are suitable to be configured to be extruded into a thin walled article (para [0001] [0040]-[0042]), which would have predictably arrived at a satisfactory article/device that is the same as instantly claimed.
Regarding claim 2, Vaisanen teaches the composition includes a biodegradable resin having a lubricant, and Vaisanen teaches the inclusion of a lubricant reduces friction during processing and promotes a more homogeneous distribution of the fillers in the resin, and provides the resin composition with improved processability (para [0090] [0091], [0133]-[0134]).
It would have been obvious to one of ordinary skill in the art to modify the modified Jung in view the teachings of Vaisanen, to include suitable lubricant in the resin composition of Jung as taught by Vaisanen (para [0133]-[0134]), to provide a resin composition with a more homogeneous distribution of the fillers in the resin and with improved processability as taught by Vaisanen, which would have predictably arrived at a satisfactory composition that is the same as instantly claimed.
Regarding claim 3, Vaisanen teaches the suitable amount of lubricant is about in an amount of about 1 percent to about 7 percent based on a total weight of the composition (para [0090] [0091]), which range overlaps with the instantly claimed range of 1 percent to about 5 percent based on a total weight of the composition. 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). MPEP 2144.05.
It would have been obvious to one of ordinary skill in the art to modify the modified Jung in view the teachings of Vaisanen, to include suitable lubricant in the suitable amount in the resin composition of Jung as taught by Vaisanen (para [0090] [0091] [0133]-[0134]), to provide a resin composition with a more homogeneous distribution of the fillers in the resin and with improved processability as taught by Vaisanen, which would have predictably arrived at a satisfactory composition that is the same as instantly claimed.
Regarding claim 6, Jung teaches its composition includes suitable amount of the plant-based filler in an amount of about 10 to 50% (para [0010]), which range overlaps with the instantly claimed range of about 40 percent or less based on a total weight of the composition. 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). MPEP 2144.05.
Regarding claim 7, Jung teaches its composition includes suitable plant-based having average size of 0.1 to 50 microns (para [0013]), which range overlaps with the instantly claimed range of about 5 microns to about 30 microns. 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). MPEP 2144.05.
Regarding claim 8, Vaisanen teaches the composition having suitable melt flow index of about 1 g/10 min to about 30 g/10 min at 190 °C grams/10 minutes provides good processable resin composition, and that is suitable for forming thin-walled articles (para [0080] [0081] [0090]), which melt flow index range overlaps with the instantly claimed range of about 1 g/10 min to about 5 g/10 min at 190 °C grams/10 minutes. 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). MPEP 2144.05.
It would have been obvious to one of ordinary skill in the art to modify the modified Jung in view the teachings of Vaisanen, to select and provide the resin composition of Jung with suitable melt flow index as taught by Vaisanen (para [0080] [0081] [0090]), to provide a resin composition with good processibility and that is suitable for forming thin-walled articles as taught by Vaisanen, which would have predictably arrived at a satisfactory composition that is the same as instantly claimed.
Regarding claim 9, Jung teaches the suitable biodegradable polymer includes those derived from starch (para [0021], cornstarch), meeting the claimed limitations.
Regarding claim 10, Jung teaches its composition (para [0009]-[0018]) comprising a plant-based filler (para [0010], [0024] [0025], plant-based filler such as hemp) present in an amount of about 10 to 50% (para [0010]), which range overlaps with the instantly claimed range of 20 percent to about 40 percent based on a total weight of the composition. 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). MPEP 2144.05).
Jung does not specifically teach a device having a wall of the specific thickness as instantly claimed.
Vaisanen teaches biodegradable resin-based composition including biodegradable resin and plant-based filler (para [0040-[0042] [0058]) that is suitable to be configured to be extruded into a thin walled article having a wall of thickness of equal or less than about 1.5 mm (para [0001] [0023] [0028] [0040-[0042]), which range overlaps with the instantly claimed range of 0.1 mm to 0.22 mm. 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). MPEP 2144.05). The thin walled article of Vaisanen are hollow articles such as straws and tubes, and having an inner side and an outer side with a middle located therebetween (para [0024] para [0033], Fig. 1).
It would have been obvious to one of ordinary skill in the art to modify Jung in view the teachings of Vaisanen, to form the biodegradable resin composition of Jung into a thin-walled article as taught by Vaisanen (i.e., having a wall having a thickness overlapping with the instantly claimed range, as discussed above), and there is a reasonable expectation of success because Vaisanen teaches that biodegradable resin-based compositions (including biodegradable resin and plant-based filler) are suitable to be configured to be extruded into a thin walled article (para [0001] [0040]-[0042]), which would have predictably arrived at a satisfactory device that is the same as instantly claimed.
Regarding claim 14, Jung teaches its composition (para [0009]-[0018]) comprising a plant-based filler distributed thereof (para [0010], [0024] [0025], plant-based filler such as hemp). Jung does not restrict the orientation of the plant-based filler, and thus, is considered as meeting the claimed limitations, i.e., the plant-based filler is randomly oriented within the device.
Regarding claim 15, Vaisanen teaches the suitable amount of lubricant is about in an amount of about 1 percent to about 7 percent based on a total weight of the composition (para [0090] [0091]), which range overlaps with the instantly claimed range of 1 percent to about 5 percent based on a total weight of the composition. 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). MPEP 2144.05.
It would have been obvious to one of ordinary skill in the art to modify the modified Jung in view the teachings of Vaisanen, to include suitable lubricant in the suitable amount in the resin composition of Jung as taught by Vaisanen (para [0090] [0091] [0133]-[0134]), to provide a resin composition with a more homogeneous distribution of the fillers in the resin and with improved processability as taught by Vaisanen, which would have predictably arrived at a satisfactory composition that is the same as instantly claimed.
Regarding claim 17, Jung teaches the plant-based filler is hemp and the biodegradable polymer is derived from starch or a starch blend (para [0010], [0024] [0025], plant-based filler such as hemp, and Jung teaches the suitable biodegradable polymer includes those derived from starch, para [0021], cornstarch), meeting the claimed limitations.
Regarding claim 18, modified Jung teaches a device that is the same as instantly claimed, as discussed above in rejection to claim 10. Jung is silent as to the biodegradable property of the device made of its composition when contacted with water. However, because the device of modified Jung and the instantly claimed device are identical or substantially identical in composition, and also because the ranges taught by Jung substantially overlap those claimed, it is expected that the device of modified Jung is capable of performing in the same or similar manner as the instantly claimed device, i.e., biodegradable from about 4 weeks to about 1 year when the device is contacted with water. "Products of identical chemical composition can not have mutually exclusive properties." A chemical composition and its properties are inseparable. See MPEP 2112. 01. Once a reference teaching product appearing to be substantially identical is made the basis of a rejection, and the examiner presents evidence or reasoning tending to show inherency, the burden shifts to the applicant to show an unobvious difference. See MPEP 2112.
Claim(s) 4 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Jung in view of Vaisanen as applied to claim 1 above, further in view of Camilo et al. (US 2019/0315951; “Camilo”).
The limitations of claims 1 and 10 are taught by Jung in view of Vaisanen as discussed above.
Regarding claims 4 and 16, Jung does not teach the inclusion of the compatibilizer includes an ethylene vinyl acetate copolymer.
Camilo teaches an ethylene vinyl acetate copolymer compatibilizer for polymer resin blends, including biodegradable resin, PLA (para [0001] [0050] [0061]). Camilo teaches the inclusion of an ethylene vinyl acetate copolymer compatibilizer decreasing the interfacial tension between the immiscible polymer resins and providing blend with good mechanical properties and processing characteristic (para [0059]).
It would have been obvious to one of ordinary skill in the art to modify the modified Jung in view the teachings of Camilo, to include in the resin composition of Jung with suitable compatibilizer of an ethylene vinyl acetate copolymer as taught by Camilo (para [0050] [0059] [0061]), to provide a resin composition with good mechanical properties and processing characteristic as taught by Camilo, which would have predictably arrived at a satisfactory composition that is the same as instantly claimed.
Claim(s) 11-13 and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Jung in view of Vaisanen as applied to claim 1 above, further in view of Lipson (US 2014/0004228; “Lipson”).
The limitations of claims 1 and 10 are taught by Jung in view of Vaisanen as discussed above.
Regarding claim 11, modified Jung teaches a device having a thin wall of the biodegradable resin composition having the plant-based filler therein. Modified Jung does not teach the device of specific configuration as instantly claimed.
Lipson teaches a thin-wall device such as a straw having a wall of plurality layers/sections including an inner side skin and an outer side skin with a middle layer located, of which the layers are coextruded, with desired scent and/or flavor in the skin layers to impart desired flavoring to the entire article as desired (Fig. 4, para [0005] [0021]).
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It would have been obvious to one of ordinary skill in the art to further modify the thin wall device of modified Jung in view the teachings of Lipson, to provide the thin wall device with an inner side skin and an outer side skin as taught by Lipson with desired scent and/or flavor in the skin layers (Fig. 4, para [0005] [0021]), to impart desired flavoring to the entire article as desired as taught by Lipson, which would have predictably arrived at a satisfactory device that is the same as instantly claimed, i.e., the plant-based filler is only located within the middle and the plant-based fillers are free of extension through or to an exterior of the wall (of the skin layers).
Regarding claim 12, modified Jung teaches a device having a thin wall of the biodegradable resin composition having the plant-based filler therein. Modified Jung does not teach the device of specific configuration as instantly claimed.
Lipson teaches a thin-wall device such as a straw having a wall of plurality layers/sections including an inner side skin and an outer side skin with a middle layer located, of which the layers are coextruded, with desired scent and/or flavor in the skin layers to impart desired flavoring to the entire article as desired (Fig. 4, para [0005] [0021]).
It would have been obvious to one of ordinary skill in the art to further modify the thin wall device of modified Jung in view the teachings of Lipson, to provide the thin wall device with an inner side skin and an outer side skin as taught by Lipson with desired scent and/or flavor in the skin layers (Fig. 4, para [0005] [0021]), to impart desired flavoring to the entire article as desired as taught by Lipson, which would have predictably arrived at a satisfactory device that is the same as instantly claimed, i.e., substantially all of the plant-based filler is located within the middle.
Regarding claim 13, modified Jung teaches a device having a thin wall of the biodegradable resin composition having the plant-based filler therein. Modified Jung does not teach the device of specific configuration as instantly claimed.
Lipson teaches a thin-wall device such as a straw having a wall of plurality layers/sections including an inner side skin and an outer side skin with a middle layer located, of which the layers are coextruded, with desired scent and/or flavor in the skin layers to impart desired flavoring to the entire article as desired (Fig. 4, para [0005] [0021]).
It would have been obvious to one of ordinary skill in the art to further modify the thin wall device of modified Jung in view the teachings of Lipson, to provide the thin wall device with an inner side skin and an outer side skin as taught by Lipson with desired scent and/or flavor in the skin layers (Fig. 4, para [0005] [0021]), to impart desired flavoring to the entire article as desired as taught by Lipson, which would have predictably arrived at a satisfactory device that is the same as instantly claimed, i.e., 70 percent or more (i.e., all of) of the plant-based filler is located within the middle.
Regarding claim 19, modified Jung teaches a device having a thin wall of the biodegradable resin composition having the plant-based filler therein. Modified Jung does not teach the device of specific configuration as instantly claimed.
Lipson teaches a thin-wall device such as a straw having a wall of plurality layers/sections including an inner side skin and an outer side skin with a middle layer located, of which the layers are coextruded, with desired scent and/or flavor in the skin layers to impart desired flavoring to the entire article as desired (Fig. 4, para [0005] [0021]).
It would have been obvious to one of ordinary skill in the art to further modify the thin wall device of modified Jung in view the teachings of Lipson, to provide the thin wall device with an inner side skin and an outer side skin as taught by Lipson with desired scent and/or flavor in the skin layers (Fig. 4, para [0005] [0021]), to impart desired flavoring to the entire article as desired as taught by Lipson, which would have predictably arrived at a satisfactory device that is the same as instantly claimed, i.e., includes one or more boundary layers (i.e., skin layers) that form an external wall of the device and the one or more boundary layers are substantially free of filler.
Regarding claim 20, modified Jung teaches a device having a thin wall of the biodegradable resin composition having the plant-based filler therein. Modified Jung does not teach the device of specific configuration as instantly claimed.
Lipson teaches a thin-wall device such as a straw having a wall of plurality layers/sections including an inner side skin and an outer side skin with a middle layer located, of which the layers are coextruded, with desired scent and/or flavor in the skin layers to impart desired flavoring to the entire article as desired (Fig. 4, para [0005] [0021]).
It would have been obvious to one of ordinary skill in the art to further modify the thin wall device of modified Jung in view the teachings of Lipson, to provide the thin wall device with an inner side skin of biodegradable polymer and an outer side skin of biodegradable polymer as taught by Lipson with desired scent and/or flavor in the skin layers (Fig. 4, para [0005] [0021]), to impart desired flavoring to the entire article as desired as taught by Lipson, which would have predictably arrived at a satisfactory device that is the same as instantly claimed, i.e., includes one or more boundary layers that form an external wall of the device and the one or more boundary layers are substantially only biodegradable polymer.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Wang et al. (US 2013/0154151) that teaches biopolymer composition includes plasticizer and compatibilizer (para [0003]). Han et al. (US 9,963,832) that teaches a composition for sheet comprising an impregnated mixture of a biomass and an nano-inorganic filler; a polyolefin resin; and a flow enhancer (col. 1, lines 58-65).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YAN LAN whose telephone number is (571)270-3687. The examiner can normally be reached Monday - Friday 7AM-4PM.
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/YAN LAN/Primary Examiner, Art Unit 1782
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