18DETAILED 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 Objections
Claims 8 and 12 are objected to because of the following informalities:
In claim 8, line 3, “Triacetin” is improperly capitalized and should instead read as “triacetin.”
In claim 8, line 10, “and glycol tribenzoate” should read “glycol tribenzoate.”
In claim 12, a period should be added at the end of the claim.
Appropriate correction is required.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-15 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claims do not fall within at least one of the four categories of patent eligible subject matter because they appear to be claiming a process, but do not recite any steps.
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 1-15 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 1 is drawn toward a process of making a composition but does not claim any steps, which are essential to a process. This renders the claim indefinite because the claimed subject matter is unclear.
Claims 2-15 are indefinite due to dependence on indefinite claim 1.
Claim 1 recites “a disintegratable rate of 50% or more” in line 4. Rates are understood to be a function of time; however, the claim does not specify a time frame for the disintegratable rate.
Claim 4 recites “a disintegratable rate of 60% or more” in line 2. Rates are understood to be a function of time; however, the claim does not specify a time frame for the disintegratable rate.
Claim 8 recites the limitation "said plasticizer" in lines 1-2. There is insufficient antecedent basis for this limitation in the claim.
Claim 8 recites the limitation "the benzoate containing plasticizers" in line 11. There is insufficient antecedent basis for this limitation in the claim.
Claim 9 recites the limitation "said plasticizer" in lines 1-2. There is insufficient antecedent basis for this limitation in the claim.
Claim 10 recites the limitation "said plasticizer" in lines 1-2. There is insufficient antecedent basis for this limitation in the claim.
Claim 12 recites the limitation "said branched, amorphous biofiller" in lines 1-2. There is insufficient antecedent basis for this limitation in the claim. It is unclear if this limitation refers to the biodegradable, branched starch of claim 1, or an additional biofiller. For the purpose of further examination, it is taken to refer to the starch of claim 1.
Claim 13 recites the limitation "said biofiller" in lines 1-2. There is insufficient antecedent basis for this limitation in the claim. It is unclear if this limitation refers to the biodegradable, branched starch of claim 1, or an additional biofiller. For the purpose of further examination, it is taken to refer to the starch of claim 1.
Claim 14 recites the limitation "said biofiller" in lines 1-2. There is insufficient antecedent basis for this limitation in the claim. It is unclear if this limitation refers to the biodegradable, branched starch of claim 1, or an additional biofiller. For the purpose of further examination, it is taken to refer to the starch of claim 1.
Claim 15 recites the limitation "said biofiller" in lines 1-2. There is insufficient antecedent basis for this limitation in the claim. It is unclear if this limitation refers to the biodegradable, branched starch of claim 1, or an additional biofiller. For the purpose of further examination, it is taken to refer to the starch of claim 1.
Claim 8 contains the trademark/trade names “Benzoflex” in line 7, “Admex” in line 9, “Scandiflex” in line 9, “Benzoflex” in line 12, “Paraplex” in line 14, and “Resolflex” in line 15. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe various plasticizers and, accordingly, the identification/description is indefinite.
Regarding claim 8, the phrase "such as" in lines 12-13 renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 8 contains an improper Markush grouping of alternatives. According to MPEP 2173.05(h) the Markush language may recite for example: “...wherein R is selected from the group consisting of A, B, C and D” or “...wherein R is A, B, C or D”. Instant claim 8 includes statements “such” more than one term “and” and term “series”. More than one term “and” results in Markush language as not being in alternative. Term “such as” does not limit Markush claim to a specific list of compounds to select from.
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.
(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 1-4, 7-9, and 12-15 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Mayer et al (US 5288318 A), as evidenced by Nalin et al (Determination of amylose/amylopectin ratio of starches, 29 Apr 2015, Journal of Inherited Metabolic Disease, Vol. 38, p.985-986) and Buléon et al (Starch granules: structure and biosynthesis, 19 Feb 1998, International Journal of Biological Macromolecules, Vol. 23, p.85-112).
Regarding Claims 1-2, 4, and 12-13: Mayer teaches a method of producing a biodegradable composition comprising cellulose acetate and an unmodified raw starch (col. 3, lines 34-51) such as unmodified raw/native corn starch (col. 3, lines 19-24). In the working examples, Mayer teaches Argo corn starch (col. 9, lines 60-65), which Nalin teaches has an amylose content of 28.7% and an amylopectin content of 71.3% (p.986, Table 1). Buléon teaches that amylose is a linear molecule, i.e., approximately 0% branching (p.85, col. 2) and that amylopectin is a branched molecule having 5-6% of (1→6) bonds at branch points, which is interpreted as the degree of branching of amylopectin (p.87, col. 2, final paragraph). Based on calculations, Argo corn starch having an amylopectin content of 71.3% has a degree of branching from 3.6-4.3%.
Not disclosed is the disintegration rate. However, Mayer teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties, i.e. a disintegratable rate of 60% or more, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Regarding Claim 3: Mayer teaches that the biodegradability and compostability of the composition depend on the acetyl substitution of the cellulose acetate, as well as the amount and type of plasticizer present (col. 1, lines 40-50). Mayer further teaches that the composition is biodegradable in soil containing natural microorganisms (col. 4, lines 6-15), indicating that the composition of Mayer has the appropriate acetyl substitution and plasticizer type to make it compostable.
Regarding Claim 7: Mayer teaches the use of recycled paper in the production of the cellulose acetate (col. 6, lines 1-33).
Regarding Claims 8-9: Mayer teaches 5-35 wt% of a plasticizer such as triacetin (col. 3, lines 34-51).
Regarding Claims 14-15: Mayer teaches 10-60wt% of the starch/biofiller (col. 3, lines 34-51), as well as a working example containing approximately 14wt% of the starch (col. 9, lines 60-65; 1000g cellulose acetate, 200g corn starch, 250g triacetin).
Claim 11 is rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Mayer et al (US 5288318 A), as evidenced by Nalin et al (Determination of amylose/amylopectin ratio of starches, 29 Apr 2015, Journal of Inherited Metabolic Disease, Vol. 38, p.985-986), Buléon et al (Starch granules: structure and biosynthesis, 19 Feb 1998, International Journal of Biological Macromolecules, Vol. 23, p.85-112), and Yuan et al (Shellac: A promising natural polymer in the food industry, 2021, Trends in Food Science & Technology, Vol 109, p.139-153).
Mayer teaches shellac (col. 8, lines 22-34), which Yuan teaches is a biodegradable polymer (p.139, Abstract: Background).
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.
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.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Mayer et al (US 5288318 A), as evidenced by Nalin et al (Determination of amylose/amylopectin ratio of starches, 29 Apr 2015, Journal of Inherited Metabolic Disease, Vol. 38, p.985-986) and Buléon et al (Starch granules: structure and biosynthesis, 19 Feb 1998, International Journal of Biological Macromolecules, Vol. 23, p.85-112).
Mayer teaches the limitations of claim 1, as set forth above. Mayer further teaches the degree of substitution of the cellulose acetate is from 1.2-3.0 (col. 4, lines 28-44). This overlaps the claimed range. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. MPEP 2144.05 (I). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use cellulose acetate with an overlapping degree of substitution, and they would have been motivated to do so to tune properties such as rate of biodegradation (col. 1, lines 35-45) and solubility in organic solvents (col. 4 line 28 – col 5 line 1).
Claims 6 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Mayer et al (US 5288318 A) in view of Lemmouchi et al (GB 2489491 A), as evidenced by Nalin et al (Determination of amylose/amylopectin ratio of starches, 29 Apr 2015, Journal of Inherited Metabolic Disease, Vol. 38, p.985-986) and Buléon et al (Starch granules: structure and biosynthesis, 19 Feb 1998, International Journal of Biological Macromolecules, Vol. 23, p.85-112).
Regarding Claim 6: Mayer teaches the limitations of claim 1, as set forth above. Mayer further teaches that the molecular weight of the cellulose acetate is from 28,000-62,000 (col. 3, lines 38-41)but is silent to the cellulose acetate being a cellulose diacetate.
Lemmouchi teaches a biodegradable composition comprising cellulose acetate with a degree of substitution of 2.1-2.6, i.e. a cellulose diacetate, which improves solubility in solvents such as acetone, allowing for solvent processing of the composition, resulting in an intimate blend of the cellulose acetate and a plasticizer (p.6, lines 6-30). Lemmouchi and Mayer are analogous art because they are directed toward the same field of endeavor, namely biodegradable cellulose ester compositions.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a cellulose diacetate in the composition taught by Mayer to allow for intimate mixing of the components through solvent processing.
Regarding Claim 10: Mayer teaches the limitations of claim 1, as set forth above. Mayer further teaches the use of a plasticizer, such as triacetin or ethylene glycol (col. 3, lines 34-51).
However, Mayer is silent to the use of polyethylene glycol or methoxy polyethylene glycol as the plasticizer.
Lemmouchi teaches a biodegradable composition comprising cellulose acetate and a plasticizer (p.5, line 28 – p.6, line 5), wherein the plasticizer may be triacetin or polyethylene glycol (p.9, lines 8-11).
Lemmouchi establishes equivalency of triacetin and PEG as plasticizers in cellulose acetate compositions. As the instant specification is silent to unexpected results, it would have been obvious to one of ordinary skill in the art at the time the invention was made to substitute at least a portion of the triacetin with PEG, since such modification would have involved a mere substitution of known equivalent structures. A substitution of known equivalent structures is generally recognized as being within the level of ordinary skill in the art. See MPEP § 2144.06.
Additional Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Yi et al (US 2007/0043148 A1) teaches a biodegradable composition containing a cellulose diacetate and a plasticizer.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CAITLIN N ILLING whose telephone number is (571)270-1940. The examiner can normally be reached Monday-Friday 8AM-4PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at (571)272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/C.N.I./Examiner, Art Unit 1767
/KATARZYNA I KOLB/Primary Examiner, Art Unit 1767
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