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 .
DETAILED ACTION
Claims 1-20 filed on 03/03/2024 are acknowledged. No preliminary amendment was filed.
Priority
This application was filed on 03/03/2024.
Information Disclosure Statement
The information disclosure statements (IDS) dated 05/06/2024, 05/28/2024, 12/12/2024, and 10/06/2025 comply with the provisions of 37 CFR 1.97, 1.98 and MPEP § 609. Accordingly, the IDS document has been placed in the application file and the information therein has been considered as to the merits.
Claim Rejections - 35 USC § 112(b)
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 2, 3, 5 and 8-20 are 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 2 depends from claim 1. However, claim 1 recites “a composition for making a biodegradable agricultural mulch film” and is not drawn to biodegradable mulch films. Claims 2-8 are drawn to a biodegradable agricultural mulch film and therefore lack antecedence to the earlier recited claim 1.
Claim 2 recites the phrase “recycled cellulose fibers or wastepaper pulps”. However, claim 2 incorporates claim 1 and its limitations wherein wastepaper pulp is a required component to the mulch film and therefore, “wastepaper pulps” cannot be considered in the alternative, rendering the claim indefinite. The closed language of “consists” excludes additional components such as the cross-linker.
Claim 2 recites “said matrix consists of 5 to 35 weight percent alginate polysaccharides and 65 to 95 weight percent recycled cellulose fibers or wastepaper pulps”. The closed language of “consists of” excludes additional components such as a the crosslinker required in a crosslinking alginate system of claim 1.
Claim 3 recites the phrase “recycled cellulose fibers or wastepaper pulps”. However, claim 3 incorporates claim 1 and its limitations wherein wastepaper pulp is a required component to the mulch film and therefore, “wastepaper pulps” cannot be considered in the alternative, rendering the claim indefinite. The closed language of “consists” excludes additional components such as the cross-linker.
Claim 3 recites the limitation "the recycled cellulose fibers" in the first line. There is insufficient antecedent basis for this limitation in the claim.
Claims 5 and 12 uses the phrase “such as” which is exemplary language and considered indefinite. Preferences, options and examples are properly set forth in the specification, but when included in the claims lead to confusion over the intended scope of the claim. See MPEP § 2173.05(d). For the purposes of applying prior art, the listed ions will not be considered further limiting.
The term “enhanced mechanical strength and durability” in claim 8 is a relative term which renders the claim indefinite. The term “enhanced mechanical strength and durability” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The examiner will interpret “enhanced mechanical strength and durability” as the biodegradable agricultural mulch film was optimized to increase the mechanical strength and durability compared to an unoptimized composition.
Regarding claim 9, the term(s) “preferably” render(s) the claim indefinite because it is unclear whether the limitations after said term(s) are part of the claimed invention. See MPEP § 2173.05(d). Claims 10-20 are rejected for being based on a rejected claim base.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 9 recites the broad recitation 1-50 wt%, and the claim also recites 3-10 wt% which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Claims 10-20 are rejected for being based on a rejected claim base.
Claims 10-12 states “the composition of claim 9”, claim 13 states “the biodegradable composition of claim 9”, and claim 14 states “the biodegradable agricultural mulch film of claim 9” indicating that the claims are dependent from claim 9 which is a method claim, while the preamble from claims 10-14 indicate a product claim. For the purposes of applying prior art the examiner will interpret claims 10-14 as “The method of claim 9”. Claims 15-20 are rejected for being dependent on a rejected claim base.
Claim 20 states “the biodegradable agricultural mulch film of claim 14” indicating that the claim is dependent from claim 14 which is a method claim, while the preamble from claims 20 indicates a product claim. For the purposes of applying prior art the examiner will interpret claim 20 as “the method of claim 14”.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 2 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 2 is dependent from claim 1 wherein claim 1 states a composition for making biodegradable agricultural mulch films comprising a matrix comprising a crosslinking alginate system and a wastepaper pulp material embedded with said matrix. Claim 2 further broadens the limitations of claim 1 by adding cellulose fiber as an alternative to the wastepaper pulp of claim 1. Additionally, the closed language of “consists” excludes additional components such as the cross-linker. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1and 6-7 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Gislon (WO 2011/128752 A1, published 10/20/2011, see PTO-892).
Gislon is drawn to biodegradable materials for soil mulching based on aqueous mixtures of polysaccharides and plant waste fibers and methods for their application (title). Gislon claims a composition comprising a polysaccharide that is alginic acid and a mixture of plant fibers or particles coming from waste that forms a film once it has been sprayed on the soil (claim 1). The composition forms a film gel spontaneously by capturing bi- or trivalent ions from the soil itself, or via the slow release of these ions by a component added to the solution itself (claim 4).
Accordingly, the claims are anticipated by the prior art.
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 1-5, and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Gislon (WO 2011/128752 A1, published 10/20/2011, see PTO-892).
Gislon is drawn to biodegradable materials for soil mulching based on aqueous mixtures of polysaccharides and plant waste fibers and methods for their application (title). Gislon claims a composition comprising a polysaccharide such as alginic acid and a mixture of plant fibers or particles coming from waste that forms a film once it has been sprayed on the soil (claim 1). The composition forms a film gel spontaneously by capturing bi- or trivalent ions from the soil itself, or via the slow release of these ions by a component added to the solution itself (claim 4). Gislon further teaches that the composition comprises the polysaccharide at a total concentration between 1 and 10% (claim 5). The ratio of the mixture of plant fibers to polysaccharide is 1:5 to 5:1 (claim 10). The fiber may come from processing waste of fruit and vegetable or fish products or from processing waste of plant textile fibers, such as hemp, kenaf, cotton, broom, flax or processing waste from the paper industry, or from the composting thereof (claim 13). Gilson teaches that in order to regulate the mechanical resistance and duration of the film, short natural fibers can be added to the solution, in general of cellulosic nature, of plant or marine origin, from renewable sources, from dedicated cultivations or preferably from agro-industrial process waste, such as tomato skins and seeds, mare, olive oil pressing residue, citrus fruit peel and pips, waste from wheat, corn and rice (page 2). The film that is formed by evaporation after spraying the composition is completely biodegradable and compostable (claim 14).
Regarding instant claim 2, Gislon teaches that the composition comprises the polysaccharide at a total concentration between 1 and 10% (claim 5). The ratio of the mixture of plant fibers to polysaccharide is 1:5 to 5:1 (claim 10). The instant specification teaches that the method to create the composition includes mixing a water-soluble constituent component with a concentration of 0.1 to 15% with a waste paper pulp with a final concentration from 1% to 50% (instant specification paragraphs 00073-74). The composition is then dried in the oven to meet the instant claim 2 limitations of the film matrix consisting of 5-35 weight % alginate polysaccharides and 65-95 weight % cellulose fibers or wastepaper pulps. Therefore, the composition taught by Gislon would meet the limitations of instant claim 2 once dried as the composition of Gislon has a similar starting concentration as the instant specification prior to drying.
Regarding instant claim 5, Gislon further teaches that alginates may form gels due to their ability to capture bivalent ions from the surface with which they come into contact, for example capture of calcium ions from the soluble salts of the calcium present in the ground (page 5).
Regarding instant claim 8, Gilson teaches that in order to regulate the mechanical resistance and duration of the film, short natural fibers can be added to the solution, in general of cellulosic nature (page 2). The duration of the film can be modulated according to the ratio between its components or the choice of the polysaccharide. In general, high fiber contents prolong its life whereas high soluble resin contents produce shorter-lasting films. The duration times range from a few days to 12 months (page 5).
Gilson does not exemplify a biodegradable agricultural mulch film wherein the maxtrix consists of 5 to 35 weight percent alginate polysaccharides and 65 to 95 weight percent recycled cellulose fibers or wastepaper pulps. Gilson does not exemplify a cosslinking agent that is a bivalent or multivalent ion. Gilson does not exemplify the film is characterized by enhanced mechanical strength and durability.
It would have been prima facie obvious before the effective filing date of the claimed invention to optimize the composition comprising an alginic acid polysaccharide and a mixture of plant fibers or particles coming from waste that forms a film as taught by Gislon to be 5-35 weight % alginate polysaccharide and 65-95 weight % cellulose fibers to arrive at the claimed invention. It would have been prima facie obvious to optimize the amounts of alginate polysaccharide and cellulose fibers because Gilson teaches that the composition comprises the polysaccharide at a total concentration between 1 and 10% and that the ratio of the mixture of plant fibers to polysaccharide is 1:5 to 5:1 before forming the film and Gilson further teaches that increasing the fiber content increases the mechanical strength and durability of the film. 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(I)) Moreover, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). (MPEP § 2144.05(II)) “The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.” In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003).
Regarding instant claims 4 and 5, it would have been prima facie obvious before the effective filing date of the claimed invention to modify the composition comprising an alginic acid polysaccharide and a mixture of plant fibers or particles coming from waste that forms a film as taught by Gislon to further comprise a crosslinking agent consisting of bivalent or multivalent ions to arrive at the claimed invention. It would have been prima facie obvious to modify the composition taught by Gislon to further comprise a crosslinking agent consisting of bivalent or multivalent ions because Gislon teaches that the composition may further comprise bi- or trivalent ions or another component added to the solution to form the gels. One of ordinary skill in the art would have a reasonable expectation of success because Gilson teaches that bi- or trivalent ions may be used in the composition to form a gel such as calcium ions from the soluble salts of the calcium present in the ground.
Claims 9-20 are rejected under 35 U.S.C. 103 as being unpatentable over Gislon (WO 2011/128752 A1, published 10/20/2011, see PTO-892), Liling et al. (Carbohydrate Polymers, published 09/12/2015, see PTO-892) and Pan et al. (CN 116438203 A, published 07/14/2023, see PTO-892).
The teachings of Gislon are discussed above.
Gislon further teaches that the film is completely biodegradable and at the end of its life is assimilated into the soil becoming an amender or fertilizer thereof (page 6).
Gislon does not teach the concentration of the divalent or multivalent ions. Gislon does not teach the process of manufacturing the film using a continuous extruder and an oven.
Liling is drawn to the study of the effects of ionic crosslinking on the physical and mechanical properties of alginate mulching films (title). Liling teaches that crosslinking by Mn2+, Zn2+, and Ca2+ increased the tensile strength and light transmission and decreased the water vapor permeation (WPV) of the alginate mulching films. Ca2+ had the greatest tensile strength and exhibited the highest elongation and light transmission. Furthermore, the WPV and light transmission decreased gradually with increasing Ca2+ concentration (abstract). Liling exemplified using a Liling compared alginate mulch film without crosslinking (0% CaCl2) with crosslinked alginate with 1-5% calcium chloride solution to show that crosslinking increased the tensile strength of the alginate mulch film (Figure 2, page 262).
Pan is drawn to an extrudable biodegradable composition comprising alginate nanocellulose, alginate derivatives, biodegradable polymer, and a crosslinking agent (abstract). The crosslinking agent may be calcium chloride (page 4). Pan teaches a method of using a double-screw extruder, which is a continuous extruder. The composition is extruded through a die, then the biodegradable composite material can be collected on the conveyor belt and oven dried (page 6).
It would have been prima facie obvious to combine the teachings of Gislon, Liling, and Pan before the effective filing date of the claimed invention by optimizing the concentration of the Ca2+ divalent cross linker in the composition as taught by Gislon to be between 1-50% Ca2+ as taught by Liling to arrive at the claimed invention. It would have been prima facie obvious to optimize the concentration of the Ca2+ ions because Gislon teaches that Ca2+ ions may be used as a crosslinker and Liling shows that increasing the Ca2+ ions concentration between 1-5% increased the tensile strength and light transmission and decreased the water vapor permeation of alginate mulch films. 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(I)) Moreover, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). (MPEP § 2144.05(II)) “The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.” In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003).
It would have been prima facie obvious to combine the teachings of Gislon, Liling, and Pan before the effective filing date of the claimed invention by utilizing the method of manufacturing extrudable biodegradable composition by using a double-screw continuous extruder, extruding through a die and oven dried taught by Pan for the manufacturing of the mulch film taught by Gislon with the concentration of Ca2+ taught by Liling to arrive at the claimed invention. It would have been prima facie obvious for one of ordinary skill in the art to utilize the method of manufacturing taught by Pan to manufacture the mulch film taught by the combine with the concentration of Ca2+ taught by Liling because Pan teaches a method of manufacturing an extrudable biodegradable composition comprising alginate and a biodegradable polymer and Gislon teaches that a biodegradable composition comprising alginate and a crosslinker such as calcium chloride. One of ordinary skill in the art would have a reasonable expectation of success because Pan teaches a method of manufacturing an extrudable biodegradable composition comprising alginate, a biodegradable polymer and a crosslinker such as calcium chloride, and Gislon teaches that a biodegradable composition comprising alginate and a crosslinker such as calcium chloride.
Conclusion
No claims allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SAMANTHA LYNN SCHACHERMEYER whose telephone number is (703)756-5337. The examiner can normally be reached Monday thru Friday, alternate Fridays off, 7:30AM-5PM EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Scarlett Goon can be reached on (571) 270-5241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format.
For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SAMANTHA LYNN SCHACHERMEYER/Examiner, Art Unit 1693
/SCARLETT Y GOON/Supervisory Patent Examiner, Art Unit 1693
Prosecution Insights