DETAILED ACTION
Response to Amendment
This office action is in response to the Amendment filed on 9/11/2025. Claims 8, 20 and 27 have been canceled previously. Claims 12 and 29-37 have been canceled without prejudice. Claims 1-7, 9-11, 13-19, 21-26 and 28 are pending in this application. Claims 1-7, 9-11, 24-26 and 28 have been withdrawn with traverse in the reply filed on May 13/2025.
The objection of claim 9 set forth in the Office Action dated 6/11/2025 are WITHDRAWN due to Applicant's responsive amendments. The rejections of claims 12-19, 21-23, 29-37 under 35 USC 112 set forth in the Office Action are MOOT due to Applicant's responsive amendments.
The rejections of the claims under 35 USC 103 over Luo et al. set forth in the Office Action dated 06/11/2024 are WITHDRAWN due to Applicant's responsive amendments.
In view of the amendment a new rejection of claims 13-19, 21-26 and 28 over Pulikkalparambil et al. are made.
The double patenting rejections of claims 13, 18 and 22 over claims 15, 22 and 26 of copending Application No. 18/699,343 are MAINTAINED.
This action is final.
Claim Objections
Claim 13 is objected to because of the following informalities:
In claims 13, the term “composition ” is suggested to be replaced to “mixture” in order to ensure consistency. Appropriate correction is required.
Claim Analysis
Summary of Claim 13:
A biocomposite comprising a mixture of:
a)
about 30 to about 99.5% by weight of a polybutylene adipate terephthalate (PBAT)-component;
b)
about 0.5 to about 50 % by weight hemp residue comprising ground hemp stalk wherein hemp hurd and/or fibers are ground and/or sliced into micron size particles; and
c)
optionally about 0.1 to about 50 % by weight of:
PBAT grafted with one or more compatibilizers selected from maleic anhydride, glycidyl
methacrylate, pyromellitic anhydride, acrylic acid, polyacrylic acid, methylene diphenyl
diisocyanate, poly(glycidyl methacrylate, copolymer(s) of glycidyl methacrylate and/or
copolymers of acrylic acid, and/or
one or more compatibilizers selected from maleic anhydride, pyromellitic anhydride,
acrylic acid; polyacrylic acid, and methylene diphenyl diisocyanate,
wherein the mixture has been heated and
wherein the composition is free of polylactic acid.
Claim Interpretation
Regarding claim 13, Examiner is interpreting that the limitation “wherein the composition is free of polylactic acid” is not optional as the feature c).
Claim Rejections - 35 USC § 102
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 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 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.
Claims 13, 19, 23 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Pulikkalparambil et al. (AIMS Materials Science, 4(3): 814-831, 2017 as listed on the IDS dated 3/12/2024) as evidenced by Enarevba et al. (AgriEngineering 2024,6, 2891–2925).
Regarding claim 13, Pulikkalparambil et al. teach a biocomposite comprising poly(butylene adipate-co-terephthalate (PBAT) and different percentages of hemp or Sihemp fiber (abstract and introduction, figure 1). Pulikkalparambil et al. further teach a content of hemp fibers of 2%, 5% 10% and 20% (paragraph 2.3, Fig.3), 0.05-1 wt.% of carbon nanofibers and 50-200 ppm of Ag-Nps, which implies about 79 wt.% to about 98 wt.% of PBAT (see table below). It is noted the component C is optional. Additionally, Pulikkalparambil et al. teach the fibers are grinded and sieved using an 80 mesh sieve (numeral 2.2, p.816), wherein a nominal sieve opening for an 80 mesh sieve is 177 µm, thereby reading on the hemp fibers ground into micron size particles. It is noted as evidenced by Enarevba that the hemp stalk is the stem of the hemp plant, from which two distinct components are derived: the outer hemp fiber and the inner hemp hurd (see Enarevba et al. Figure 6 right and p.2898). Then, the hemp fibers ground into micron size particles of Pulikkalparambil et al. are considered to read on the hemp residue comprising ground stalk wherein the fibers are ground into micron size particles. It is noted that the composite of Pulikkalparambil et al. is free of PLA, as required by the instant claim.
Condition
Hemp (wt.%)
CNF (wt. %)
Ag-NPs (wt.%)
Total filler
PBAT (wt.%)
Lowest Range
2
0.05
0.005 (50 ppm)
2.055
97.945
Highest Range
20
1
0.02 (200 ppm)
21.02
78.98
Regarding claim 13, Pulikkalparambil et al. teach the biocomposites comprising the composition as discussed in the rejection of claim 12. Pulikkalparambil et al. further teach the biocomposites were prepared by melt mixing using an internal mixer at 140 ◦C with a rotor speed of 40 rpm, thereby reading on the mixture being heated.
Regarding claims 19, Pulikkalparambil et al. teach the density of untreated hemp is 1.25 g/cm3 (paragraph 3.2, p.820), as required by the instant claim.
Regarding claims 23, Pulikkalparambil et al. teach the addition of 0.05 -200 ppm of carbon nanofibers and silver nanoparticles (paragraph 2.3, p.816, p.828), thereby reading on the inorganic filler.
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.
Claims 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Pulikkalparambil et al. (AIMS Materials Science, 4(3): 814-831, 2017) in view of Fourati et al. (Carbohydrate Polymers 199 (2018) 51-57) as listed on the IDS dated 3/12/2024).
Pulikkalparambil et al. teach the composition according to claim 13 as set forth above and incorporated herein by reference.
Regarding claim 14, Pulikkalparambil et al. teach the hydrophilic nature of hemp and hydrophobic nature of the polymeric matrix, which is PBAT (abstract) lead to incompatibility and thereby reduce the interfacial adhesion between the fiber and the matrix (Introduction, p. 815), which implies the use of a compatibilizer.
Pulikkalparambil et al are silent on the compatibilizer including PBAT grafted with one or more compatibilizers.
Fourati et al. teach that the use of maleated PBAT (PBAT-g-MA) as a compatibilizer in PBAT blends results in improved interfacial adhesion and mechanical properties, due to the chemical interaction of the anhydride functionality with hydroxyl groups, as in thermoplastic starch (abstract and p.51). It is noted that hemp residue also contains a high concentration of hydroxyl groups and the same principle is applicable. In light of this benefits, it would have been obvious to a person of ordinary skill in the art to use PBAT-g-MA as compatibilizer on the biocomposite of Pulikkalparambil et al. to improve compatibility between PBAT and hemp fibers and to enhance interfacial adhesion, thereby arriving to the claimed invention.
Regarding claim 15, Pulikkalparambil et al are silent on the biocomposite further comprising a plasticizer.
Fourati et al. teach the PBAT blend comprising 20 wt.% of plasticizer glycerol (paragraph 2.1, p.52). Fourati et al. offers the motivation of using the plasticizer to improve flexibility, dispersion of natural filler- containing biocomposites and the processability. In light of this benefits, it would have been obvious to a person of ordinary skill in the art to use the plasticizer on the biocomposite of Pulikkalparambil et al. to improve interfacial adhesion between the fiber and matrix, thereby arriving to the claimed invention.
Claims 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over Pulikkalparambil et al. (AIMS Materials Science, 4(3): 814-831, 2017) in view of Narayan et al. ( US 2009/0160095 A1 as listed on the IDS dated 9/17/2024).
Pulikkalparambil et al. teach the composition according to claim 13 as set forth above and incorporated herein by reference.
Regarding claims 16 -17, Pulikkalparambil et al. teach the biocomposites are used to produce food packaging containers (introduction and paragraph 4).
Pulikkalparambil et al. are silent on the mixture of PBAT, starch and plasticizer as the PBAT component.
In the same field of endeavor, Narayan et al. teach reactive blends of thermoplastic starch (TpS) with biodegradable polyesters such as PBAT to form biodegradable composites ([0004], [0008], [0051]), wherein the TpS is a plasticized starch comprising about 30 to about 70 wt.% of starch [0043] and about 15 wt.% to about 50 wt.% of plasticizer [0044]. Narayan et al. further teach the reactive blend comprises about 30 wt.% to about 70 wt.% of biodegradable polyester PBAT ([0048], thus implying a content of 30 wt.% to 70 wt.% of TpS (Table 2), which overlaps with the claimed amounts (about 50 wt.% to about 65 wt.% of PBAT, about 15 wt.% to about 35 wt.% of starch and about 10 wt. to about 15 wt.% of plasticizer of claim 16 and about 30 wt.% to about 40 wt.% of thermoplastic starch of claim 17), thereby a prima facie case of obviousness being established. MPEP 2144.05. Narayan et al. offers the motivation of using the claimed PBAT-component to improve mechanical strength, processability and cost efficiency of PBAT-based materials that are suitable for thermoforming applications and single used biodegradable packaging ([0008]-[0010], [0012],[0015]-[0016],[0017], [0048]). In light of this benefits, it would have been obvious to a person of ordinary skill in the art to use starch, plasticizer and PBAT mixture on the biocomposite of Pulikkalparambil et al., thereby arriving to the claimed invention.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Pulikkalparambil et al. (AIMS Materials Science, 4(3): 814-831, 2017) in view of Xiao et al. (Composites Science and Technology vol. 184 (2019)107887 as listed on the IDS dated 3/12/2024).
Pulikkalparambil et al. teach the composition according to claim 13 as set forth above and incorporated herein by reference.
Regarding claims 18, Pulikkalparambil et al. teach hemp fibers were ground and sieved using a 80 mesh sieve (177 µm) (numeral 2.2, p. 816). Pulikkalparambil et al. teach the diameter of the untreated fiber is 40 µm and the treated fiber is 30 µm (numeral 3.1, p.818, Fig. d, e, p.819), thereby reading on the claimed width.
Pulikkalparambil et al. are silent on the length and aspect ratio of the hemp residue particles.
In the same field of endeavor, Xiao et al. teach industrial hemp hurd as a bio-based filler in biocomposites, wherein hemp hurd is milled to a volume-median diameter of 50 µm with an aspect ratio between 1 to 7 (abstract; col.1, first paragraph, p.1), which overlaps the claimed particle dimensions (length of about 75 to about 150 µm, width of about 15 µm to about 40 µm and aspect ratio of about 3.5 to about 5), thereby a prima facie case of obviousness being established. MPEP 2144.05. Xiao et al. further teach the hemp hurd load influences the rheological behavior, melt flow, physical, thermal and mechanical properties of biocomposites based on biodegradable polyesters including PBAT (abstract and col.1, first paragraph, p.1). Xiao et al. offers the motivation of using the specific hemp particles to improve processability, dispersion and mechanical properties. In light of this benefits, it would have been obvious to a person of ordinary skill in the art to use the specific hemp particles of Xiao et al. on the biocomposite of Pulikkalparambil et al., thereby arriving to the claimed invention.
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Pulikkalparambil et al. (AIMS Materials Science, 4(3): 814-831, 2017 as listed on the IDS dated 3/12/2024) in view of USDA Final Rule on Hemp Production (January 2021) .
Pulikkalparambil et al. teach the composition according to claim 13 as set forth above and incorporated herein by reference.
Regarding claim 21, Pulikkalparambil et al. teach the biocomposites are used to produce food packaging containers (introduction and paragraph 4).
Pulikkalparambil et al. are silent on the pre- treatment to remove tetrahydrocannabinol (THC) and cannabidiol (CBC).
However, the USDA Final rule on hemp production requires that all industrial hemp materials must contains less than 0.3% THC on a dry weight basis. This regulation applies to industrial hemp used in downstream product including food packaging or similar applications (p.1-3, introduction). Therefore, it would be obvious to one of ordinary skill in the art to treat the hemp residue to remove cannabinoids such as THC or CBD if the biocomposite is intended to be used for food contact applications, as required by the instant claim.
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Pulikkalparambil et al. (AIMS Materials Science, 4(3): 814-831, 2017) in view of Luo et al. (CN 11244262 (A); full English Machine translation incorporated herewith).
Regarding claim 22, Pulikkalparambil et al. teach the composition according to claim 13 as set forth above and incorporated herein by reference.
Pulikkalparambil et al. are silent on the processing agent.
In the same field of endeavor, Luo et al. teach biocomposites comprising 3-15% tackifier (abstract), which overlaps the claimed range of processing agent. Luo et al. offer the motivation of using a processing agent to improve the compatibility of the hemp fibers and PBAT, which improve processing. In light of this benefits, it would have been obvious to a person of ordinary skill in the art to use the processing agent on the biocomposite of Pulikkalparambil et al., thereby arriving to the claimed invention.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 13, 18 and 22 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 15, 22 and 26 of copending Application No. 18/699,343 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because claim 15 of the copending application teach a biocomposite comprising a blend or mixture of 30-99.5 wt.% of PBAT, 0.5-60 wt. % of hemp residue with all the features of instant claim 13 and optionally 0.1-50 wt.% of PBAT grafted with a compatibilizer, wherein the content of hemp residue overlap with the content of hemp of instant claim 13 and both claim sets teach the mixture is heated.
Additionally, Claims 22 and 26 of the copending application recite all the limitations of instant claims 18 and 22, including the hemp residue particle dimensions and the processing agent.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
8. Applicant' s arguments, see p. 7-16, filed 09/11/2025, with respect to the rejection of claims under 103 over Luo et al. have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. Applicant's arguments, see p. 7-16, filed 09/11/2025, with respect to the rejection of claims over Pulikkalparambil et al. have been fully considered but are not persuasive.
Regarding the rejection over Pulikkalparambil et al., Applicant states that “the composite of Pulikkalparambil, which exhibits desirable mechanical and/or thermomechanical properties, requires the use of silane functionalization of hemp fibers”. “The hemp residue of the presently claimed invention does not require any chemical modification, which makes the production process easy and cost effective”. In response, Examiner acknowledges that the composite of Pulikkalparambil comprising silane functionalization of hemp fibers and PBAT exhibit improved properties compared with the untreated hemp fibers and PBAT composite. However, the instant claims only require ground hemp stalk and the hemp fibers of Pulikkalparambil are ground hemp even if it has been further manipulated and meets the limitations of the claim. It is noted that the claims do not exclude the ground hemp stalk from being treated.
Further, Applicant states “the instant application has established that the use of hemp residue (not hemp fibers) comprising ground hemp stalk wherein the hemp hurd and/or fibers are ground and/or sliced into micron size particles with the PBAT components defined in the instant claims, results in PBAT-biocomposites that exhibit enhanced tensile modulus, tensile strength, and heat deflection while maintaining sufficient toughness of the resulting biocomposites”. In response, attention is drawn to the rejection over Pulikkalparambil as evidenced by Enarevba, wherein it is noted that Enarevba provides evidence that hemp stalk contains fibrous tissue (fiber) and woody hurd (core) parts ( see Enarevba (p.2898, Fig. 6, right)), therefore the ground fibers of Pulikkalparambil are considered to read on the ground stalk (hemp residue). There is no evidence to suggest that the product of the prior art using hemp fiber would have different properties than the same product generated from the ground hemp stalk, as the micron sized hemp would be the same in the end regardless of method of generating it.
Applicant further submits that Pulikkalparambil does not disclose or teach use of hemp residue having micron sized particles, but rather teaches use of carbon nanofiber (CNF) and silver nanoparticle and silane functionalization of hemp fibers. In response, attention is drawn to the rejection as set forth above, wherein Pulikkalparambil et al. teach the fibers are grinded and sieved using an 80 mesh sieve , which is equivalent to a micron size. Pulikkalparambil et al. further teach the diameter of the untreated fiber is 40 µm and the treated fiber is 30 µm (numeral 3.1, p.818, Fig. d, e, p.819).
Regarding the traverse of the rejection with respect to the combination of Pulikkalparambil and Fourati. Nor does Fourati provide any hint, teaching or suggestion that would motivate or make obvious to a person or ordinary skill in the art to investigate the use of hemp residue as a component of PBAT composite systems. In response, attention is drawn to the rejection set forth above. It is noted that both references teach biocomposites comprising hydrophilic fillers such as hemp fiber for Pulikkalparambil and starch for Fourati. It is known in the art the hydrophilic starch and hemp exhibit poor compatibility with hydrophobic PBAT, which results in poor mechanical properties of the final product (Introduction, p. 815 of Pulikkalparambil). Therefore, it would have been obvious to use the same type of compatibilizers already proven effective in PBAT/TPS mixtures.
Regarding the double patenting rejections of claims 13, 18 and 22 over claims 15, 22 and 26 of copending Application No. 18/699,343, Examiner acknowledges the claims of the co-pending Application are directed to a biocomposite comprising a mixture of PHBV with polybutylene adipate terephthalate (PBAT) and hemp residue. However, the claims of the co-pending application even if narrower still anticipate the broader claims of the present application and the rejection is maintained.
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 OLGA L. DONAHUE whose telephone number is (571)270-1152. The examiner can normally be reached M-F 8:00-5:00.
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/OLGA LUCIA DONAHUE/Examiner, Art Unit 1763
/CATHERINE S BRANCH/Primary Examiner, Art Unit 1763