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 .
Claim Rejections - 35 USC § 102/103
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 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.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-4, 6-7, 9, and 13-23 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by or, in the alternative, under 35 U.S.C. 103 as being unpatentable over Dong (US 2020/048422 A1).
Regarding claims 1-4, 6-7, 9, 13, 19-23, Dong teaches a biodegradable pellet composition including 30-80 wt% starch, 2-30 wt% plasticizer, 10-40 wt% flexibility agent, 3-13 wt% binder, 0.1-5 wt% hydrophobic agent, and optional plant fiber (Abstract). The plant fiber may be present in amounts ranging from 0.01-10 wt% and may be hemp fiber (p. 1, [0011]). The plasticizer may be glycerol (p. 1, [0006]). The flexibility agent may be polyvinyl alcohol (p. 1, [0007]). The binder may be glycerol monostearate and/or montmorillonite (p. 1, [0008]). The starch may have amylose content in the range of one-fifth to one-third (20-33%) (pp. 1-2, [0020]).
These prior art ranges overlap all claimed ranges with sufficient specificity to anticipate the claimed ranges. See MPEP 2131.
In the alternative, these prior art range overlap all claimed ranges. It would have been obvious to one of ordinary skill in the art at the time of filing to select amounts within the claimed ranges, as these amounts are also expressly identified by Dong as being suitable. A prima facie case of obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP 2144.05(I).
Regarding claims 14-15 and 17-18, Dong remains as applied to claims 1 and 6 above. Dong further teaches a method of making biodegradable plastic pellets, explaining that the ingredients may first be mixed, then the composition may be extruded at temperatures ranging from 30-180*C (p. 5, [0091]-[0092], [0100]).
Regarding claim 16, Dong remains as applied to claims 1, 6, and 15 above. Dong further teaches that the composition may be extruded at rates ranging from 15 to 300 rpm using a twin extruder (screw extruder) (pp. 6-7, [0107]-[0108]). This prior art range overlaps the claimed range with sufficient specificity to anticipate it or, alternatively, to render it obvious. See MPEP 2131 and 2144.05(I).
Claim Rejections - 35 USC § 103
Claims 5, 10, and 24-25 are rejected under 35 U.S.C. 103 as being unpatentable over Dong as applied to claims 1 and 6 above, and further in view of Bridewell (RU 2821000 C1, attached with translation).
Regarding claim 5, Dong remains as applied to claim 1 above. Dong is silent as to use of colorant in the composition. In the same field of endeavor, Bridewell teaches use of 1-99 wt% colorant in biodegradable polyvinyl alcohol compositions (p. 10). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to combine the composition of Dong and the colorant of Bridewell, in the amounts taught by Bridewell, to arrive at the claimed invention, and to provide additional functionality to the composition, as taught by Bridewell (p. 10).
Regarding claims 10 and 24-25, Dong remains as applied to claims 1, 6, 9, and 24 above. Dong is silent as to the viscosity and degree of hydrolysis of PVA suitable for use in the composition. In the same field of endeavor, Bridewell teaches that PVA having a degree of hydrolysis ranging from 75-99.9% and a viscosity ranging from 4-70 cP is suitable in compositions of biodegradable plastic (p. 8). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to select the PVA of Bridewell for use in the composition of Dong to arrive at the claimed invention, and to achieve a composition with suitable mechanical properties to withstand loads applied to disposable consumer goods, as taught by Bridewell (p. 1).
Claims 12 and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Dong as applied to claims 1 and 6 above, and further in view of Speer (US 2009/012210 A1).
Regarding claims 12 and 26, Dong remains as applied to claim 1 above. However, Dong is silent as to use of poly(vinyl acetate). In the same field of endeavor, Speer teaches use of poly(vinyl acetate) in biodegradable starch-based compositions (Abstract). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to select the poly(vinyl acetate) of Speer for use as the flexibility agent in the composition of Dong to arrive at the claimed invention, and to add water resistance to the composition, as taught by Speer (p. 5, [0047]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELIZABETH K AMATO whose telephone number is (571)270-0341. The examiner can normally be reached 8:30 am - 4:30 pm M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Rob Jones can be reached at (571) 270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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ELIZABETH K. AMATO
Examiner
Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
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