DETAILED ACTION
Status of the Claims
Claims 1-20 are pending in the instant application. Claims 18-20 have been withdrawn based upon Restriction/Election as discussed below. Claims 1-17 are being examined on the merits in the instant application.
Advisory Notice
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Restriction/Election
Applicant's election without traverse of Group I, drawn to compositions of matter, currently claims 1-17 in the reply filed on 05/18/2026 is acknowledged.
Applicants have elected the following species in the reply filed 05/18/2026: A species of foam precursor with specificity to (a)(i) a starch including at least 25% by weight amylose content is pea starch; (a)(ii) a linear polysaccharide different from the starch is chitosan; and (a)(iii) a lubricant is glycerol monostearate.
The requirement is deemed proper and is therefore made FINAL.
Claims 18-20 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected subject matter, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 05/18/2026.
Priority
The U.S. effective filing date has been determined to be 05/22/2023, the filing date of the U.S. Provisional Application No. 63/468,216.
Information Disclosure Statement
The information disclosure statement submitted on 05/22/2024 was filed before the mailing date of the first office action on the merits. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the Examiner.
Specification
The abstract of the disclosure is objected to because the abstract includes claim language and beings with “A foam precursor is described.” Correction is required. See MPEP § 608.01(b).
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
The Specification is objected to because the Specification does not include a Brief Summary of the Invention section.
The following guidelines illustrate the preferred layout for the specification of a utility application. These guidelines are suggested for the applicant’s use.
Arrangement of the Specification
As provided in 37 CFR 1.77(b), the specification of a utility application should include the following sections in order. Each of the lettered items should appear in upper case, without underlining or bold type, as a section heading. If no text follows the section heading, the phrase “Not Applicable” should follow the section heading:
(a) TITLE OF THE INVENTION.
(b) CROSS-REFERENCE TO RELATED APPLICATIONS.
(c) STATEMENT REGARDING FEDERALLY SPONSORED RESEARCH OR DEVELOPMENT.
(d) THE NAMES OF THE PARTIES TO A JOINT RESEARCH AGREEMENT.
(e) INCORPORATION-BY-REFERENCE OF MATERIAL SUBMITTED ON A READ-ONLY OPTICAL DISC, AS A TEXT FILE OR AN XML FILE VIA THE PATENT ELECTRONIC SYSTEM.
(f) STATEMENT REGARDING PRIOR DISCLOSURES BY THE INVENTOR OR A JOINT INVENTOR.
(g) BACKGROUND OF THE INVENTION.
(1) Field of the Invention.
(2) Description of Related Art including information disclosed under 37 CFR 1.97 and 1.98.
(h) BRIEF SUMMARY OF THE INVENTION.
(i) BRIEF DESCRIPTION OF THE SEVERAL VIEWS OF THE DRAWING(S).
(j) DETAILED DESCRIPTION OF THE INVENTION.
(k) CLAIM OR CLAIMS (commencing on a separate sheet).
(l) ABSTRACT OF THE DISCLOSURE (commencing on a separate sheet).
(m) SEQUENCE LISTING. (See MPEP § 2422.03 and 37 CFR 1.821 - 1.825). A “Sequence Listing” is required on paper if the application discloses a nucleotide or amino acid sequence as defined in 37 CFR 1.821(a) and if the required “Sequence Listing” is not submitted as an electronic document either on read-only optical disc or as a text file via the patent electronic system.
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 1-17 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 pre-AIA the applicant regards as the invention.
Claim 1 recites the limitation "the polysaccharide" in line 8. There is insufficient antecedent basis for this limitation in the claim. Claims 2-10 are rejected as inheriting the limitation “the polysaccharide” of the parent claim and doing nothing to clarify the same.
Claim 4 recites the limitation "the polysaccharide" in line 3. There is insufficient antecedent basis for this limitation in the claim.
Claim 7 recites the limitation "the polysaccharide" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 8 recites the limitation "the polysaccharide" in line 4. There is insufficient antecedent basis for this limitation in the claim.
Claim 10 recites the limitation "the polysaccharide" in line 3. There is insufficient antecedent basis for this limitation in the claim.
Claim 11 recites the limitation "the polysaccharide" in line 8. There is insufficient antecedent basis for this limitation in the claim. Claims 12-17 are rejected as inheriting the limitation “the polysaccharide” of the parent claim and doing nothing to clarify the same.
Claim 14 recites the limitation "the polysaccharide" in line 3. There is insufficient antecedent basis for this limitation in the claim.
Claim 17 recites the limitation "the polysaccharide" in line 1. There is insufficient antecedent basis for this limitation in the claim.
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 1-17 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being clearly anticipated by LEWCZYK (WO 2023/039544 A1; published 16-MAR-2023; effectively filed 09-SEPT-2021, the filing date of US Provisional Application No. 63/242,397).
The applied reference has a common inventor with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
Applicant may rely on the exception under 35 U.S.C. 102(b)(1)(A) to overcome this rejection under 35 U.S.C. 102(a)(1) by a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application, and is therefore not prior art under 35 U.S.C. 102(a)(1). Alternatively, applicant may rely on the exception under 35 U.S.C. 102(b)(1)(B) by providing evidence of a prior public disclosure via an affidavit or declaration under 37 CFR 1.130(b).
Applicant Claims
Applicant claims a foam precursor, comprising: a starch, wherein the starch is at least 25% by weight amylose content; a lubricant; and a linear polysaccharide different from the starch, wherein a density of the foam precursor is from 0.5 g/cm3 to 1.5 g/cm3, wherein a composition of the foam precursor includes a starch weight percentage representative of the starch included in the foam precursor and a polysaccharide weight percentage representative of the linear polysaccharide in the foam precursor, and wherein the starch weight percent is greater than the polysaccharide weight percent (instant claim 1). Applicant further claims the linear polysaccharide includes chitosan, the starch includes pea starch, and the lubricant includes glycerol monostearate (instant claim 2).
Applicant claims a foam, comprising: a starch, wherein the starch is at least 25% by weight amylose content; a lubricant; and a linear polysaccharide different from the starch, wherein a density of the foam precursor is from 0.01 g/cm3 to 0.5 g/cm3, wherein a composition of the foam precursor includes a starch weight percentage representative of the starch included in the foam precursor and a polysaccharide weight percentage representative of the linear polysaccharide in the foam precursor, and wherein the starch weight percent is greater than the polysaccharide weight percent (instant claim 11).
Disclosure of the Prior Art
LEWCZYK discloses a pellet manufacturing for foam and products (title, see whole document), and particularly that “A method is described. The method comprising inputting starch into an extruder, inputting a plasticizer into the extruder, outputting an extrudate from the extruder, and chopping the extrudate output from the extruder into pellets. The extrudate includes the starch and the plasticizer. A pellet for manufacturing a biodegradable product is described. The pellet comprises starch and a plasticizer. A composition of the pellet, by weight percent, includes a starch weight percent representative of the starch included in the pellet and a plasticizer weight percent representative of the plasticizer included in the pellet. The starch weight percent is greater than the plasticizer weight percent and a density of the pellet is at least 0.5 g/cm3.” (abstract). And that: “Set forth herein are non-toxic biodegradable pellets, foam, products and methods of pellet, product, and foam production that solve the problems associated with conventional plastics and plastic foams.” (p. 2, [0010]).
LEWCZYK discloses that: “In some embodiments, the extrudate has a density from 0.5 g/cm3 to 1.6 g/cm3.” (p. 10, lines 17-18)(instant claim 1, density of foam precursor).
LEWCZYK discloses that: “For example, the resultant product may correspond to foam, which has a low density (e.g., less than 1 g/cm3, less than 0.5 g/cm3, less than 0.3 g/cm3, or less than g/cm3) due to most volume of the foam corresponding to air.” (p. 3, [0016])(instant claim 11, foam density).
LEWCZYK discloses that: “In one embodiment the input ingredients includes starch (e.g., pea starch) as a primary polymer with the starch weight percent from 50% to 90%, chitosan as a secondary polymer with the chitosan weight percent from 0.5% to 10%, glycerol monostearate as a processing aid (e.g., a lubricant) with the processing aid weight percent from 1% to 5%, calcium carbonate as a filler and/or nucleator with a weight percent from 1% to 3%, talc as a filler and/or nucleator with a weight percent from 1% to 10%, sorbitol as a first plasticizer with a weight percent from 1% to 30%, urea as a second plasticizer with a weight percent from 1% to 30%, glycerol as a third plasticizer with a weight percent from 1 % to 30%, acetic acid as an acid with an acid weight percent from 0.1 % to 3%, and water with a water weight percent from 5% to 20%.” [emphasis added](p. 9, [0028])(instant claims 1-5, 7-15 & 17). LEWCZYK discloses that: the foam precursor includes “a secondary plasticizer weight percent representative of the one or more secondary plasticizers input into the extruder, wherein the plasticizer is a primary plasticizer such that the plasticizer weight percent is greater than the secondary plasticizer weight percent.” (p. 15, claim 12)(instant claims 6 & 16).
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1-17 are rejected under 35 U.S.C. 103 as being unpatentable over NILES (US 2021/0130586 A1; published May, 2021) in view of HANDA (US 2008/0146686 A1; published June, 2008); ZHANG (WO 2019/217268 A1; published November, 2019) and GE (US 2018/0002451 A1; published January, 2018).
Applicants Claims
Applicant claims a foam precursor, as discussed above (instant claim 1). Applicant further claims the linear polysaccharide includes chitosan, the starch includes pea starch, and the lubricant includes glycerol monostearate (instant claim 2).
Applicant claims a foam, as discussed above (instant claim 11).
Determination of the scope
and content of the prior art (MPEP 2141.01)
NILES teaches starch pellets for sheet extrusion and methods for forming the pellets (title, see whole document), and particularly “A processing system for producing starch based expanded products useful as packing material for shipping, packaging and insulating applications. Generally, two processing steps for forming materials are involved. In a first step, dense pellets or granules are formed from starch and a plasticizing agent, such as a plasticizing polymer, for example, polyvinyl alcohol. The starch in the pellets is generally formed, for example with an extruder, into a thermoplastic or thermosetting form for further processing. The pellets generally have an individual density of at least about 70 lbs./cubic foot and a small size for convenient delivery for the second processing step. The second process step is based on the expanding of the material from an extruder with water as the expansion agent in which the dwell time in the extruder is short. The process is designed such that a less expensive single screw extruder is suitable for extruding the expanded material. The starch based pellets are convenient for shipping closer to the end use location.” (abstract). And that: “The present invention relates to starch based pellets and foamed materials, such as sheet materials formed from the pellets. The invention further relates to processes for preparing starch based pellets and foamed starched based materials.” ([0002])(instant claim 1 pellets as a foam precursor; instant claim 11 a foam).
NILES teaches that: “Starch is a natural polysaccharide or carbohydrate that comprises primarily from glucose monomers assembled into the polymer. Starch generally includes two types of polysaccharide molecules, a primarily helical amylose molecule and branched amylopectin molecules. […]. Starch as used herein generally refers to natural purified starch as well as modified starch and combinations thereof. Suitable sources for starch include, for example, corn, potatoes, tapioca, wheat, sorghum, pea, other plants and combination thereof. Commercial starches are available from various plant sources and the rough am[y]lose levels for these plant starches are corn starch 25%, high amylose corn starch up to 75%, potato starch 20%, amylose rice starch 2%-20%, amylose tapioca starch 15%-18%, amylose wheat starch 25%, amylose pea starch 35%-70%.” [emphasis added]([0025])(instant claims 1-2 & 11-12, pea starch).
NILES teaches that: “Generally, the starch resin pellets comprise from about 55 wt% to about 95 wt % starch in further embodiments from about 60 wt% to about 93 wt%, and in additional embodiments from about 65 wt % to about 92 wt % starch. […] Starches can be derived from various sources, for example, corn, potato, maize, wheat, rice, sorghum, tapioca, pea, and mixtures thereof.” ([0031]).
NILES teaches that: “More generally, the transformation to a thermoplastic or thermosetting starch can be accomplished with temperature and pressure in the presence of a plasticizer, like water, glycerol, sorbitol and/or other suitable polymers. The plasticizer penetrates into the starch granules and disrupts the initial crystalline structure.” [emphasis added]([0026]). NILES teaches that: “While polyvinyl alcohol itself generally is crystalline, it is soluble in water so that with sufficient water present, the polyvinyl alcohol can plasticize starch. Other polyols, such as glycerin, propylene glycol, or ethylene glycol, can also plasticize starch, and can be included in concentrations from about 0 to 10 wt % and in further embodiments from about 0.5 wt % to 7 wt %. A person of ordinary skill in the art will recognize that additional ranges of plasticizer within the explicit composition ranges above are contemplated and are within the present disclosure.” ([0032])(instant claims 5 & 15, a primary plasticizer – includes glycerol).
NILES teaches that: “ Furthermore, the pellets can comprise elastomeric or lower melting thermoplastic polymers (from 0 to about 10 wt % and in further embodiments from about 0.5 wt % to 7 wt%), emulsifiers (from 0 to about 10 wt% and in further embodiments from about 0.5 wt % to 5 wt %), structural polysaccharides (from 0 to about 30 wt % and in further embodiments from about 0.5 wt% to 15 wt%), plant fibers (from 0 to about 30 wt % and in further embodiments from about 0.5 wt% to 15 wt%), bark (from 0 to 3 wt% and in further embodiments from 0.25 wt% to 1.5 wt%), lignins (from about 0 to about 5 wt% and in further embodiments from 0.5 wt% to 2 wt%), clay minerals (from 0 to about 5 wt % and in further embodiments from about 0.25 wt % to about 2.5 wt%), talc (from 0 to about 5 wt% and in further embodiments from about 0.25 wt % to 2.5 wt %), and/or other additives from 0 to 5 wt %. […] Suitable emulsifiers include, for example, commercial food emulsifiers or one of a large number of commercially available surfactants. Structural polysaccharides include, for example, cellulose, cellulose derivatives, chitosan […].” [emphasis added]([0033])(instant claims 1-2, 11-12, a linear polysaccharide […] chitosan).
Regarding the density of the foam precursor (pellet), NILES teaches that: “The pellets may have an individual density of from about 65 lbs/ft3 to about 90 lbs/ft3, […].” ([0035]). The examiner notes that 65 lbs/ft3 is approximately equal to 1.04g/cm3, and 90 lbs/ft3 is approximately equal to 1.44 g/cm3, which overlaps with the range of instant claim 1 (“from 0.5 g/cm3 to 1.5 g/cm3”)(MPEP §2144.05 - In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.).
Regarding the density of the foam, NILES teaches that: “The expanded product generally has a density of no more than about 10 lbs/ft3, in further embodiments no more than about 6 lbs/ft3 and in other embodiments from, about 0.5 lbs/ft3to about 5 lbs/ft3.” ([0038]). The examiner notes that 10 lbs/ft3 is approximately equal to 0.160g/cm3, and 0.5 lbs/ft3 is approximately equal to 0.008 g/cm3, which overlaps with the range of instant claim 11 (“from 0.01 g/cm3 to 0.5 g/cm3”)(MPEP §2144.05 - In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.).
Regarding the limitation “wherein the starch weight percent is greater than the polysaccharide weight percent” (instant claims 1 & 11), NILES clearly teaches a greater amount of starch ( “Generally, the starch resin pellets comprise from about 55 wt% to about 95 wt % starch in further embodiments from about 60 wt% to about 93 wt%, and in additional embodiments from about 65 wt % to about 92 wt % starch.” - [0031]), than the amount of structural polysaccharide (e.g. chitosan) (structural polysaccharides (from 0 to about 30 wt % and in further embodiments from about 0.5 wt% to 15 wt%) – [0033]).
Ascertainment of the difference between
the prior art and the claims (MPEP 2141.02)
The difference between the rejected claims and the teachings of NILES is that NILES does not expressly teach a lubricant, and particularly glycerol monostearate.
The examiner notes that NILES does expressly teach including an emulsifier “Suitable emulsifiers include, for example, commercial food emulsifiers or one of a large number of commercially available surfactants.” And “emulsifiers (from 0 to about 10 wt% and in further embodiments from about 0.5 wt % to 5 wt %),” ([0033]). And glycerol monostearate (GMS) is a widely used food emulsifier.
HANDA teaches expanded and extruded biodegradable and reduced emissions foams (title, see whole document), and particularly that: “The present invention relates generally to foams made from biodegradable polymers and environmentally benign blowing agents, and processes of making the same. Particularly, the present invention relates to biodegradable and reduced emission stable foams made from biodegradable polymers that undergo hydrolytic decomposition or biodegradation, using methyl formate-based blowing agents, and processes of making the same. The biodegradable polymer foams serve as environmentally friendly replacements in applications where foams made from petroleum-derived polymers are traditionally used.” ([0002]).
HANDA teaches that: “The partial esters of fatty acids that can be used as a stability control agent include the members of the generic class known as surface active agents or surfactants. A preferred class of surfactants includes, but is not limited to, a partial ester of a fatty acid having 12 to 18 carbon atoms and a polyol having three to six hydroxyl groups. More preferably, the partial esters of a long chain fatty acid with a polyol component of the stability control agent is glycerol monostearate, glycerol distearate or mixtures thereof.” ([0058]). It would have been prima facie obvious to select a known emulsifier (lubricant) for bio-foam precursor/bio-foam compositions in the compositions of NILES such as the “commercial food emulsifier” GMS as suggested by HANDA.
HANDA further teaches that: “A nucleating agent or combination of such agents can be employed in the polymeric foaming formulation for advantages such as its capability for regulating cell formation, morphology, and performance characteristics of the foamed article.” ([0053]). And that: “Some contemplated nucleating agents include inorganic materials (in small particulate form, preferably, with high aspect ratio (>20) and particle size in the micrometer to nanometer range, such as clay or nanoclay, talc, silica, and diatomaceous earth. For example, talc can be used from about 0.25 to about 2.0 weight percent of the polymer formulation. […] and calcium carbonate.” ([0054]). Therefore one of ordinary skill in the art would have recognized the clay minerals and talc, as taught by NILES, as nucleating agents (NILES: [0033]).
ZHANG teaches biodegradable foams (title, see whole document) including chitosan, and starch particularly that: “In some embodiments, the dispersed phase includes at least one of chitin, starch, or cellulose.” ([0018]). And that: “The discovery of adding a chitosan-compatible dispersed phase to the foam is a significant advancement in biodegradable foam technology because the properties of the foam can be tuned for a variety of applications. One can tune the pore size for example, by using a closed-mold during heating and changing the pressure inside the mold. By increasing the internal pressure, foams with smaller pore sizes can result. One can tune the density of the foam for example, by 1) changing the amount dispersed phase material and the amount of blowing agent (less dispersed phase material, more blowing agent, lower foam density), or 2) optimizing the internal pressure and temperature of the closed-mold (lower pressure, higher temperature, lower foam density). Indeed, the dispersed phases may enhance the mechanical properties of the foam by carrying part of applied loads in tension, strain may be imparted to the dispersed (e.g., phase-e.g., fibers-in the foam and not entirely carried by the polymer matrix). Furthermore, using biodegradable waste products, which may be locally sourced, reduces the cost of foam production. Dispersed phases may not totally dissolve in an acid solution, which may be used to make the foam, and may be distinct from the polymer matrix in the resultant foam adhered (e.g., to the polymer matrix but separate-not dissolved-in the polymer matrix).” (p. 6, [0019]).
ZHANG teaches that: “In some embodiments, the matrix polymer may be
substantially chitosan (e.g. chitosan with some impurities), >90% chitosan, >80% chitosan, >70% chitosan, >60% chitosan, >50% chitosan, or the like depending on the desired mechanical properties and purity of chitosan used as a source for the foam” ([0022]).
ZHANG teaches that: “One of ordinary skill in the art having the benefit of the present disclosure will appreciate that the chitosan coating improves the durability of the foam in humid conditions, and also gives the foam a smooth surface finish. More specifically, coating 303 encapsulates porous composite foam 301 to prevent water ingression into porous composite foam 301. It is appreciated that in the depicted embodiment, coating 303 includes the same chemical composition (i.e. chitosan) as the polymer in the polymer matrix of foam 301.” ([0027]).
GE teaches starch foams using specialized lignin (title, see whole document), and particularly that: “This application provides a method of using a highly clarified
and clean lignin, derived from a specific biorefinery process to make a starch foam and products of the same. The lignin can be used as a low cost filler substitute for starch and other substrates that are currently employed in foam applications. The lignin has the right mechanical, physical, thermoplastic and barrier properties to enable easy handling and to impart improved properties such as UV resistance, water resistance and other physical parameters to starch foams.” (abstract).
GE teaches the inclusion of plasticizers: “In some embodiments, the plasticizer consists of: water, glycerol, propylene glycol, glucose, sorbitol, urea, ethylene glycol, and a combination thereof.” [emphasis added]([0043], [0054])(instant claims 5 & 15, glycerol, sorbitol, urea plasticizers). GE teaches that: “Starch is readily dispersed in cold water. If heated to boiling in water, it changes and the starch/water mixture becomes a thickened, colloidal solution that gels on cooling. This process is known as destructuration since it involves destruction of the granule crystallites. However, starch can be plasticized (destructurized) by relatively low levels (15-30 wt%) of molecules that are capable of hydrogen bonding with the starch hydroxyl groups, such as water, glycerol and sorbitol This "thermoplastic starch" (TPS) will flow at elevated temperature and pressure and can be extruded to give both foams and solid molded articles.” ([0143]). And that: “TPS produced from starch plastifled only with water becomes very brittle at room temperature. To increase material flexibility and improve processing, other plasticizers are also used. Examples of plasticizers include, for example, water, glycerol, propylene glycol, glucose, sorbitol, urea, ethylene glycol, and the like. To improve the mechanical properties of the foam, other additives, such as emulsifiers, cellulose, plant fibres, bark, kaolin, pectin, and other substances, can be included. Those of skill in the art will understand that the addition of plasticizers and/or other aid materials can have a significant influence on the mechanical properties.” ([0144]).
GE teaches that: “Starch is a polysaccharide made up of glucose units linked by glycoside linkages, and its length is generally between 500-2000 repeat units. It is made up of amylase and amylopectin. Amylase is more linear and gives the foam flexibility and keeps the density low, while amylopectin is highly branched and makes the product more foamable. Starch is extracted from plants and other photosynthetic organisms or products comprising such materials.” ([0138]). GE teaches that: “In some embodiments, the starch comprises approximately 10% to 90% amylose. In some embodiments, the starch consists of approximately 10%, 15%, 20%, 25%, 30%, 35%, 40%, 45%, 50%, 55%, 60%, 65%, 70%, 75%, 80%, 85%, or 90% amylose.” ([0016])(instant claims 1 & 11, “a starch, wherein the starch is at least 25% by weight amylose content”).
Regarding instant claims 3 and 13 claiming “the lubricant weight percent is from about 2% to about 4%.” NILES teaches that: “ Furthermore, the pellets can comprise […] emulsifiers (from 0 to about 10 wt% and in further embodiments from about 0.5 wt % to 5 wt %), […] Suitable emulsifiers include, for example, commercial food emulsifiers or one of a large number of commercially available surfactants.” [emphasis added]([0033])(instant claims 1-2, 11-12, a linear polysaccharide […] chitosan). And HANDA teaches that: “The partial esters of fatty acids that can be used as a stability control agent include the members of the generic class known as surface active agents or surfactants. A preferred class of surfactants includes, but is not limited to, a partial ester of a fatty acid having 12 to 18 carbon atoms and a polyol having three to six hydroxyl groups. More preferably, the partial esters of a long chain fatty acid with a polyol component of the stability control agent is glycerol monostearate, glycerol distearate or mixtures thereof.” ([0058]). It would have been prima facie obvious to select a known emulsifier (lubricant) for bio-foam precursor/bio-foam compositions in the compositions of NILES such as the “commercial food emulsifier” GMS as suggested by HANDA. The amount of the emulsifier being in the claimed range of “about 2% to about 4%” (weight percent), the amount would have been prima facie obvious (MPEP §2144.05 - In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.).
Regarding the claim that “the lubricant weight percentage is less than the polysaccharide weight percent.” (instant claims 4 and 14), NILES teaches that: “Furthermore, the pellets can comprise elastomeric or lower melting thermoplastic polymers (from 0 to about 10 wt % and in further embodiments from about 0.5 wt % to 7 wt%), emulsifiers (from 0 to about 10 wt% and in further embodiments from about 0.5 wt % to 5 wt %), structural polysaccharides (from 0 to about 30 wt % and in further embodiments from about 0.5 wt% to 15 wt%), […] Suitable emulsifiers include, for example, commercial food emulsifiers or one of a large number of commercially available surfactants. Structural polysaccharides include, for example, cellulose, cellulose derivatives, chitosan […].” [emphasis added]([0033])(instant claims 1-2, 11-12, a linear polysaccharide […] chitosan). It would have been prima facie obvious to include a larger amount of structural polysaccharide, for example 7-15 wt% relative to the amount of lubricant (emulsifier), for example 3-5 wt%, within the ranges taught by NILES. (MPEP §2144.05 - In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.).
Regarding the limitation “wherein the primary plasticizer weight percentage is greater than the secondary plasticizer weight” (instant claims 6 & 16), it is clear that the prior art teaches each of glycerol, sorbitol, and urea as plasticizers that can be utilised in combination (NILES: [0026] & [0032]; GE: [0043] & [0054]), and including amounts overlapping with Applicants disclosed amounts (instant Specification, [0040], as filed & as published) teaching 1% to 5% sorbitol and urea and 1-20% glycerol (NILES teaching “Other polyols, such as glycerin, propylene glycol, or ethylene glycol, can also plasticize starch, and can be included in concentrations from about 0 to 10 wt % and in further embodiments from about 0.5 wt % to 7 wt %.” – [0032]) (MPEP §2144.05 - In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.), as well as the prior art clearly teaching the function of the plasticizers in foam (precursor) materials. It would have been prima facie obvious to include a combination of plasticizers in amounts sufficient to improve the mechanical properties of the foam (GE - “TPS produced from starch plastifled only with water becomes very brittle at room temperature. To increase material flexibility and improve processing, other plasticizers are also used. Examples of plasticizers include, for example, water, glycerol, propylene glycol, glucose, sorbitol, urea, ethylene glycol, and the like. To improve the mechanical properties of the foam, other additives, such as emulsifiers, cellulose, plant fibres, bark, kaolin, pectin, and other substances, can be included. Those of skill in the art will understand that the addition of plasticizers and/or other aid materials can have a significant influence on the mechanical properties.” - [0144])(MPEP 2144.05(II) – Generally, 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.).
Regarding the claim that “the polysaccharide weight percent is greater than the primary plasticizer weight percent” (instant claims 8 & 18), NILES teaches that: “Furthermore, the pellets can comprise elastomeric or lower melting thermoplastic polymers (from 0 to about 10 wt % and in further embodiments from about 0.5 wt % to 7 wt%), emulsifiers (from 0 to about 10 wt% and in further embodiments from about 0.5 wt % to 5 wt %), structural polysaccharides (from 0 to about 30 wt % and in further embodiments from about 0.5 wt% to 15 wt%), […] Suitable emulsifiers include, for example, commercial food emulsifiers or one of a large number of commercially available surfactants. Structural polysaccharides include, for example, cellulose, cellulose derivatives, chitosan […].” [emphasis added]([0033]), and the teaches “Other polyols, such as glycerin, propylene glycol, or ethylene glycol, can also plasticize starch, and can be included in concentrations from about 0 to 10 wt % and in further embodiments from about 0.5 wt % to 7 wt %.” – [0032]). It would have been prima facie obvious to include a larger amount of structural polysaccharide, for example 7-15 wt% relative to the amount of plasticizer (e.g. glycerol), for example 5-7 wt%, within the ranges taught by NILES, the amount of the structural polysaccharide being greater than the (primary) plasticizer (instant claims 9 & 17)(MPEP §2144.05 - In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.).
Regarding the limitation: “wherein the foam precursor is a solid at room temperature, […] and wherein the polysaccharide weight is greater than the water weight percent.” (instant claim 1), NILES clearly teaches pellets (a solid) as a foam precursor, and teaches water of, for example, about 13 wt% ([0031] & [0036]), and teaches a structural polymer of, e.g. 15 wt% ([0033]). It would have been prima facie obvious to include a larger amount of structural polysaccharide, for example 15 wt% relative to the amount of water, for example 13 wt%, within the ranges taught by NILES, the amount of the structural polysaccharide being greater than the (primary) plasticizer (instant claims 9 & 17)(MPEP §2144.05 - In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.).
Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to produce a bio-foam precursor pellet and a bio-foam from the same including a starch such as pea starch having an amylose content of greater than 25%, and a lubricant such as glycerol monostearate, and a structural polysaccharide such as chitosan, the starch being the major component (starch-based foam), as suggested by NILES & HANDA, and to include a combination of plasticizers, as suggested by GE, and specifically to include chitosan in the matrix as suggested by ZHANG.
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention as starch-based foams are known in the prior art including each of the claimed components useful for the same purpose. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as evidenced by the references, especially in the absence of evidence to the contrary.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103.
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent Nos. 12,473,413 (claims 1-19; hereafter ‘413); 12,509,565 (claims 1-9; hereafter ‘565); 12,576,571 (claims 11-19; hereafter ‘571) and 12,617,917 (claims 1-6 & 15-19; hereafter ‘917) in view of NILES (US 2021/0130586 A1; published May, 2021); HANDA (US 2008/0146686 A1; published June, 2008); ZHANG (WO 2019/217268 A1; published November, 2019) and GE (US 2018/0002451 A1; published January, 2018).
Instant claims 1 and 11 are discussed above.
‘413 claim 1 recites a foam precursor comprising a plurality of granules, wherein individual granules included in the plurality of granules comprise: an unmodified starch; polybutylene adipate-co-terephthalate (PBAT) wherein a PBAT weight percent representative of the PBAT included in the plurality of granules is from 10% to 40%, wherein a starch weight percent representative of the unmodified starch included in the plurality of granules is greater than the PBAT weight percent; […]. ‘413 claim recites the foam precursor of claim 5, wherein the additional materials weight percent is from 0% to 5%, […]. And claim 8 recites “The foam precursor of claim 5, wherein the additional materials include at least one of a polycaprolactone, polybutylene succinate, polyvinyl alcohol, glycerol monostearate, stearate-based lubricants, silicone-based lubricants, calcium carbonate, talc, glycerol, urea, sorbitol, chitosan, acetic acid, iron oxide pigments, a non-hydrogenated natural wax and metal fatty acid derivative blend, a silane coupling agent, or a heat stabilizer.” [emphasis added]. ‘413 claim 2 recites the foam precursor of claim 1, wherein the unmodified starch corresponds to pea starch that has not been chemically modified.
‘565 claim 1 recites... a foam, comprising: starch; urea, wherein a composition of the foam is characterized by a starch weight percent representative of the starch included in the foam and a urea weight percent representative of the urea included in the foam, and wherein the starch weight percent is greater than the urea weight percent; and glycerol, glycerol monostearate, and chitosan, wherein the composition of the foam is further characterized by a glycerol weight percent, a glycerol monostearate weight percent, and a chitosan weight percent respectively representative of the glycerol, glycerol monostearate, and chitosan included in the foam wherein the urea weight percent is greater than the glycerol weight percent, the glycerol monostearate weight percent, and the chitosan weight percent, and wherein the urea weight percent is greater than 10%. [emphasis added].
‘571 claim 12 recites a pellet for manufacturing a biodegradable product, the pellet comprising: starch; and a primary plasticizer and a secondary plasticizer, wherein the primary plasticizer includes urea, wherein the primary plasticizer is different than the secondary plasticizer, wherein a primary plasticizer weight percent for the pellet is greater than a secondary plasticizer weight percent, wherein a starch weight percent for the pellet is greater than the primary plasticizer weight percent, and wherein a density of the pellet is at least 0.5 g/cm3. ‘571 claim 19 recites the pellet of claim 12, further comprising: chitosan with a weight percent in the pellet from 0.5% to 10%; glycerol monostearate with a weight percent in the pellet from 1% to 5%; calcium carbonate with a weight percent in the pellet from 1% to 3%; talc weight a weight percent from 1 % to 10%; acetic acid with a weight percent from 0.1 % to 3%; and water with a weight percent from 5% to 20%, and wherein a starch weight percent for the pellet is from 50% to 90%.
‘917 claim 1 recites a foam, comprising: a polymer matrix including at least one of chitin, chitosan, or chitosan oligosaccharide, wherein the polymer matrix is porous; and alginate disposed in the foam, wherein the foam has a density of less than 1 g/cm3, wherein: (i) a chitosan weight percent representative of the chitosan included in the foam is greater than an alginate weight percent representative of the alginate included in the foam; or (ii) a chitin weight percent representative of the chitin included in the foam is greater than the alginate weight percent. ‘917 claim 4 recites The foam of claim 1, further comprising a dispersed phase disposed within the polymer matrix, wherein the dispersed phase includes at least one of chitin, starch, cellulose, shellfish shells, wood flour, hemp, paper pulp, coconut husks, cornstarch, pea starch, or tapioca powder.[emphasis added]
The difference between the instantly rejected claims and the claims of ‘413 is that the claim of ‘413 do not expressly claim a foam, however they claim a foam precursor which one of ordinary skill in the art would recognize suggests a foam made from the same. And the claims of ‘413 do not claim amounts or relative amounts of the constituent ingredients.
The difference between the instantly rejected claims and the claims of ‘565 is that the claim of ‘565 do not expressly claim a foam precursor, however, in the art to which the invention pertains a foam precursor is used to produce a foam. And the claims of ‘565 do not expressly claim the starch is pea starch.
The difference between the instantly rejected claims and the claims of ‘571 is that the claim of ‘571 do not expressly claim the pellet is a foam precursor, or the starch is pea starch. However, it would have been prima facie obvious that the pellet is for manufacturing a foam (title), and claim 8.
The difference between the instantly rejected claims and the claims of ‘917 is that the claim of ‘917 do not expressly claim a foam precursor, however, in the art to which the invention pertains a foam precursor is used to produce a foam. And a lubricant that is glycerol monostearate is included.
NILES teaches starch pellets for sheet extrusion and methods for forming the pellets, as discussed above and incorporated herein by reference.
HANDA teaches expanded and extruded biodegradable and reduced emissions foams, as discussed above and incorporated herein by reference.
ZHANG teaches biodegradable foams including chitosan, and starch, as discussed above and incorporated herein by reference.
GE teaches starch foams using specialized lignin, as discussed above and incorporated herein by reference.
It would have been prima facie obvious before the effective filing date of the claimed invention that the instantly rejected claims are an obvious variant of the claims of ‘413, ‘565, ‘571 and ‘917 because the are each directed to foam precursors and/or foams including the same constituent ingredients. The skilled artisan would have been motivated to modify the claims of ‘413, ‘565, ‘571 and ‘917 and produce the instantly rejected claim in order to produce a bio-starch-based foam precursor and foam product from the same. Furthermore, the skilled artisan would have had a reasonable expectation of success in producing the invention of the instantly rejected claims because the foam precursors and foams including the same constituent ingredients are known in the prior art for production of bio-starch-based foam precursors and foam products from the same.
Conclusion
Claims 1-17 are pending and have been examined on the merits. The Specification is objected to for content of the abstract, and the omission of “BRIEF SUMMARY OF THE INVENTION” section. Claims 1-17 are rejected under 35 U.S.C. 112(b); claims 1-17 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2); claims 1-17 are rejected under 35 U.S.C. 103; and Claims are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent Nos. 12,473,413; 12,509,565; 12,576,571 and 12,617,917. No claims allowed at this time.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to IVAN A GREENE whose telephone number is (571)270-5868. The examiner can normally be reached M-F, 8-5 PM PST.
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/IVAN A GREENE/Examiner, Art Unit 1619
/TIGABU KASSA/Primary Examiner, Art Unit 1619
Prosecution Insights