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 without traverse of Group I, claims 1-23 in the reply filed on 24 April 2024 is acknowledged.
Claims 24-28 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention there being no allowable generic or linking claim.
Claim Rejections - 35 USC § 112
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 12-22 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 12 recites the limitation "the first layer provides an interior surface of the package" in lines 5-6. There is insufficient antecedent basis for this limitation in the claim. Claim 12 does not previously recite a "first layer" or a "package". Based on the instant spec Par. 0060 it appears that the water dispersible paper is the interior surface, however claim 12 also requires a first biodegradable polymeric layer and a second biodegradable polymeric layer on each side, and thus the water dispersible paper cannot form the interior surface of the package. The instant specification does not discuss any other layer as being an interior of a package. For purposes of examination, claim 12 is interpreted such that the line "the first layer provides an interior surface of the package" has been deleted.
Claims 13-22 are also rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, since these claims depend from the claims rejected above and do not remedy the aforementioned deficiencies.
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 (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 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 1-6, 9-17, 20-23 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Miranda et al. (US 20210032002 A1).
Regarding claim 1, Miranda teaches a dispersible and biodegradable composite, the composite comprising: a dispersible substrate (first layer) comprising a water-dispersible paper and a first biodegradable polymeric film (second layer) adjacent a first side of the dispersible substrate (Miranda, Abstract, Par. 0002, 0005-0006, 0022-0025). Miranda teaches the dispersible substrate satisfies the requirements of OECD 301B and the first biodegradable polymeric film satisfies the requirements of ASTM D5988 (Miranda, Par. 0025, 0048, and 0065).
Regarding claims 2 and 13, Miranda teaches the dispersible substrate comprises from 60 wt.% to 100 wt.% of a water-dispersible paper (Miranda, Par. 0022).
Regarding claim 3, Miranda teaches the biodegradable component comprises a polybutylene succinate (Miranda, Abstract and Par. 0028).
Regarding claim 4 and 15, Miranda teaches the first biodegradable polymeric film further comprises a first additive that provides the composite with improved structure (Miranda, Par. 0029 – see “stabilizers” and “processing aids”).
Regarding claim 5 and 16, Miranda teaches the first biodegradable film is a multilayer polymeric film (Miranda, Par. 0024 – see “built up of successive layers of the same material”).
Regarding claim 6 and 17, Miranda teaches a barrier layer between the dispersible substrate and the first biodegradable polymeric film (Miranda, Par. 0061-0062).
Regarding claim 9 and 20, Miranda teaches the barrier layer is a oxygen barrier layer comprising polyvinyl alcohol (Miranda, Par. 0062).
Regarding claim 10 and 21, Miranda teaches a core layer between the water dispersible substrate and the first biodegradable polymeric film that strengthens the film and thus satisfies the limitation of a strengthening barrier (Miranda, Par. 0061-0063).
Regarding claim 11 and 22, Miranda teaches a printing on the dispersible substrate (Miranda, Par. 0006).
Regarding claim 12, Miranda teaches a dispersible and biodegradable composite, the composite comprising: a dispersible substrate (first layer) comprising a water-dispersible paper and a first biodegradable polymeric film (second layer) adjacent a first side of the dispersible substrate (Miranda, Abstract, Par. 0002, 0005-0006, 0022-0025). Miranda teaches the dispersible substrate satisfies the requirements of OECD 301B and the first biodegradable polymeric film satisfies the requirements of ASTM D5988 (Miranda, Par. 0025, 0048, and 0065). Miranda teaches a varnish applied to the dispersible substrate opposite the first biodegradable polymeric film wherein the varnish is identical to the second layer and thus teaches a second biodegradable polymeric film adjacent a second side of the dispersible substrate, comprising at least one biodegradable component, wherein the biodegradable component satisfies the requirement of ASTM D 5988 (Miranda, Par. 0039).
Regarding claim 14, Miranda teaches the first and second biodegradable component comprises a polybutylene succinate (Miranda, Abstract and Par. 0028).
Regarding claim 23, Miranda teaches a package comprising the composite (Miranda, Abstract).
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 7-8 and 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over Miranda et al. as applied to claims 1 and 12 above, further in view of Spinella et al. (US 20250128844 A1).
Regarding claims 7-8 and 18-19, Miranda teaches all of the elements of the claimed invention as stated above for claims 1 and 12. Miranda is silent regarding the barrier layer being a water barrier component selected from the group consisting of: nanocellulose, cellulose stearoyl ester nanoparticles, starch nanocrystals, bentonite, calcium carbonate, a soy-based thermoplastic, and combinations thereof as required by claims 7 and 18 and is further silent regarding the barrier layer being a grease barrier component selected from the group consisting of: one or more clay mineral, carboxylated nanofibrillated cellulose, a soy-based thermoplastic, and combinations thereof as required by claims 8 and 19.
Spinella teaches a packaging material comprising a paper substrate and a barrier layer adjacent the water substrate wherein the barrier layer comprises clay minerals and/or nanocellulose and/or bentonite, which are the same materials as the instant invention and therefore satisfy the claimed limitations of being a water barrier component and a grease barrier component (Spinella, Abstract, Par. 0026-0029, 0049-0050).
Miranda and Spinella are analogous art as they both teach packaging materials comprising a paper substrate and an adjacent barrier layer. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used the barrier of Spinella as the barrier of Miranda. This would allow for good barrier properties (Spinella, Par. 0026-0029).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS J KESSLER JR whose telephone number is (571)272-3075. The examiner can normally be reached 7:30-5:30 M-Th.
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/THOMAS J KESSLER/Examiner, Art Unit 1782
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