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 .
Information Disclosure Statement
Information Disclosure Statement (IDS) submitted on 02/26/2026 is considered and signed IDS form is attached.
Claims
Claims 24-28 have improper status identifiers. Given that these claims are withdrawn, the proper status identifiers are Previously Presented – Withdrawn.
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 1-3, 5-7, 9, 10, 21-23 and 29 are rejected under 35 U.S.C. 103 as being unpatentable over Helbling et al. (US 2004/0014844 A1 cited in IDS) in view of De Bock et al. (5,428,150).
Regarding claims 1, 5-7, 22 and 23, Helbling et al. disclose a coating composition comprising 100 parts of pigment such as calcium carbonate (inorganic filler) and 1 to 300 parts by weight of starch such as crosslinked starch based on dry weight (see Abstract, page 7, claim 4 and paragraphs 0009, 0010, and 0018-0019). The crosslinked starch is obtained by crosslinking the starch using crosslinkers such as dialdehydes, epichlorohydrin, etc. (see paragraph 0019). That is, the crosslinked starch is an epichlorohydrin crosslinked starch or a dialdehyde crosslinked starch.
Based on the aforementioned amounts, the amount of pigment (filler) is 25 to 99 wt% (25 = 100/400 x 100 and 99 = 100/101 x 100) and the amount of starch is 1 to 75 wt% (1 = 1/101 x 100 and 75 = 300/400 x 100). The coating composition can also comprise a plasticizer such as a polyol, wherein the polyol can be ethylene glycol (see paragraph 0017). The amount of the plasticizer is 5 to 40 wt% based on the dry weight of starch (see paragraph 0017). Therefore, the amount of plasticizer is 0.05 to 30 wt% based on dry weight of the coating composition (0.05 = 5 x 1/100 and 30 = 40 x 75/100). Accordingly, the coating composition comprises 1 to 75 wt% of crosslinked starch, 25 to 99 wt% of filler and 0.05 to 30 wt% of polyol plasticizer of the dry weight of the coating composition.
While Helbling et al. disclose crosslinked starch, Helbling et al. do not disclose hydrolyzed crosslinked starch as presently claimed.
De Bock et al. disclose a starch containing composition comprising a starch degradation product such as starch hydrolysis product having DE (dextrose equivalent) of 1 to 40 (see col. 3, lines 19-26 and line 39-52). The starch degradation product prevents brittleness and facilitates fluent running of injection molded machine (see col. 3, lines 7-18 and col. 5, lines 17-23).
In light of motivation for using starch hydrolysis product having DE of 1 to 40 disclosed by De Bock et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art before the effective filing date of the claimed invention to use a cross-linked starch hydrolysis product (hydrolyzed crosslinked starch) having DE of 1 to 40 in Helbling et al. in order to prevent brittleness and facilitate fluent running of injection molded machine, and thereby arrive at the claimed invention.
Helbling et al. in view of De Bock et al. do not disclose the coating composition is a biodegradable coating composition. However, given that the coating composition including crosslinked starch, filler and polyol plasticizer of Helbling et al. in view of De Bock et al. is identical to that presently claimed, the coating composition of Helbling et al. in view of De Bock et al. is necessarily inherently biodegradable coating composition.
Regarding claim 2, Helbling et al. disclose the coating composition can comprise other additives such as dispersing agents (see paragraph 0011).
Regarding claim 3, Helbling et al. disclose a pregelatinized starch can be used as starting material (see paragraph 0014). That is, the crosslinked starch can be pregelatinized starch.
Regarding claim 9, Helbling et al. disclose a biodegradable coating composition as set forth above. Helbling et al. do not disclose an autodegrading biodegradable coating composition. However, given that the coating composition including crosslinked starch, filler and polyol plasticizer of Helbling et al. is identical to that presently claimed, the coating composition of Helbling et al. is necessarily inherently an autodegrading biodegradable coating composition.
Regarding claim 10, Helbling et al. disclose a biodegradable coating composition as set forth above. Helbling et al. do not disclose an on/off type biodegradable coating composition. However, given that the coating composition including crosslinked starch, filler and polyol plasticizer of Helbling et al. is identical to that presently claimed, the coating composition of Helbling et al. is necessarily inherently an on/off type biodegradable coating composition.
Regarding claim 21, Helbling et al. disclose the coating composition comprising the crosslinked starch, wherein the crosslinked starch is an epichlorohydrin crosslinked starch or a dialdehyde crosslinked starch as set forth above. Given that the titanium crosslinked starch, aluminum crosslinked starch, polycarboxylate crosslinked starch and silicate crosslinked starch are optional in claim 5, Helbling et al. meets claim 21.
Claims 4, 20 and 30 are rejected under 35 U.S.C. 103 as being unpatentable over Helbling et al. (US 2004/0014844 A1) as applied to claims 1 and 3 above, further in view of Malkki et al. (US 2002/0144629 A1).
Regarding claims 4, 20 and 30, Helbling et al. disclose the biodegradable coating composition as set forth above. Helbling et al. do not disclose the crosslinked starch has a ratio of crosslinking as presently claimed.
Malkki et al. disclose starch granules are stabilized by cross-linking, wherein cross-linking elevates gelatinization temperature and thus improves stability of structure when heated (see paragraph 0013). Further, a high degree of crosslinking weakens the plasticity of the starch (see paragraph 0013). The degree of crosslinking of starch can be 0.5 to 6% (paragraph 0016). An example of cross-linked starch includes starch crosslinked with epichlorohydrin (see paragraph 0013). The degree of crosslinking is same as a ratio of crosslinking as evidenced by the present specification (see page 8, lines 9-11 of the present specification).
In light of motivation for using cross-linked starch having degree of crosslinking of 0.5 to 6% disclosed by Malkki et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art to use cross-linked starch having degree of crosslinking of 0.5 to 6% in Helbling et al. in order to improve stability of starch as well to maintain plasticity of starch, and thereby arrive at the claimed invention.
Response to Arguments
Applicant's arguments filed 02/27/2026 have been fully considered. In light of amendments, new grounds of rejections are set forth above. All arguments except as set forth below are moot in light of new grounds of rejections.
Applicant argues that the examiner cites Malkki for teaching that starch granules are stabilized by cross-linking and that highly crosslinked starches can be used as a pigment. One skilled in the art understands that pigments are particles. Therefore, the starch of Malkki is granular, i.e., not hydrolyzed or pregelatinized. A pregelatinized starch with the specified and chosen ratio of crosslinking as presently claimed is therefore not taught by the combination of Helbling and Malkki, at least because Malkki only describes a granular starch, which is not suitable as a binder.
However, Malkki et al. is not being used to teach pregelatinized starch which is already disclosed by Helbing et al. (see paragraph 0014) or that the starch is hydrolyzed which is now taught by De Bock et al. as set forth above. Further, note that while Malkki et al. do not disclose all the features of the present claimed invention, Malkki et al. is used as teaching reference, and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather this reference teaches a certain concept, namely cross-linked starch having degree of crosslinking of 0.5 to 6%, and in combination with the primary reference, discloses the presently claimed invention.
In light of amendments, claim objections are withdrawn.
In light of amendments, 112(b) paragraph rejections and 112(d) paragraph rejection are withdrawn.
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 KRUPA SHUKLA whose telephone number is (571)272-5384. The examiner can normally be reached M-F 7:00-3:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached at 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KRUPA SHUKLA/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787
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