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 .
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 § 2146 et seq. 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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 19 of U.S. Patent No. US 12,070,885 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 recites all of the limitations of claim 19 of U.S. Patent No. US 12,070,885 B2.
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.
Claim(s) 1, 3- 6, 11-16, and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over He et al. (US 2014/0272357 A1).
Regarding claim 1, He meets the claimed method, comprising: determining, based on at least one of a desired gauge for a film and a desired use for the film, (He teaches varying the amount of filler in a film depending on its intended porosity, [0038]) (i) a renewable content starch, (biodegradable polymers including thermoplastic starch (TPS), [0034]) (ii) a renewable content mineral comprising oolitic aragonite, (He teaches calcium carbonate from plankton or algae sources can be harvested from the ocean bed, [0039]. Examiner notes that oolitic aragonite is calcium carbonate harvested from the sea bed, as defined by the NPL “What is Oolitic Aragonite” in the file wrapper dated 12/28/2023) and (iii) polyethylene; (polyethylene homopolymers and copolymers, [0036]) mixing (the polymer components are mixed to make an essentially homogeneous blend [0027]) (i) the renewable content starch, (ii) the renewable content mineral comprising oolitic aragonite, and (iii) the polyethylene, to create a blend at the desired ratio; operating film extrusion equipment to form the film from the blend. (an extrusion process, such as cast extrusion [0043]).
He is silent on the step of determining a desired ratio of (i) a renewable content starch, ii) a renewable content mineral, and (iii) polyethylene.
He teaches varying the amount of filler in a film depending on its intended porosity, [0038]. He teaches varying the amount of polymers to achieve films that are soft, quiet, flexible films that are not brittle, see [0035].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the present application to vary the ratio of starch, mineral, and polyethylene to meet the claimed ratio determining step in order to optimize the porosity [0038] and achieve films that are soft, quiet, flexible films that are not brittle, see [0035].
Regarding claim 3, He as modified meets the claimed method of claim 1, wherein a product formed from the film comprises at least twenty percent renewable material content. (filler should comprise about 25-75% (by weight) [0038]).
Regarding claim 4, He as modified meets the claimed method of claim 1, wherein the blend comprises at least fifteen percent by weight the renewable content starch.
He teaches the polymer film blend may contain more preferably 15% up to about 30% Bio-Sus polymer,[0035]. He teaches varying the amount of polymers to achieve films that are soft, quiet, flexible films that are not brittle, see [0035].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the present application to vary the ratio of starch, mineral, and polyethylene to meet the claimed at least fifteen percent by weight achieve films that are soft, quiet, flexible films that are not brittle, see [0035].
Regarding claim 5, He as modified meets the claimed method of claim 1, further comprising adding an odor absorber to the blend. (He teaches calcium carbonate from plankton or algae sources can be harvested from the ocean bed, [0039]. Examiner notes that oolitic aragonite is calcium carbonate harvested from the sea bed, as defined by the NPL “What is Oolitic Aragonite” in the file wrapper dated 12/28/2023. Examiner notes that the instant specification discloses oolitic aragonite to absorb odor, see claim 6 below. Therefore, this limitation is treated as a previously unappreciated property of a prior art composition, see §MPEP 2112 “[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999).)
Regarding claim 6, He as modified meets the claimed method of claim 1, wherein the renewable content mineral comprising oolitic aragonite absorbs odor given off by the renewable content starch. (He teaches calcium carbonate from plankton or algae sources can be harvested from the ocean bed, [0039], see rejection of claim 5 above).
Regarding claim 11, He as modified does not meet the claimed method of claim 1, wherein an amount by weight of the renewable content starch in the blend is greater than an amount by weight of the renewable content mineral comprising oolitic aragonite in the blend.
He teaches the polymer film blend may contain Bio-Sus concentrations of from up to about 40%,[0035]. He teaches filter the total amount of filler should comprise about 25-75% (by weight) of the film composition, [0038]. He teaches varying the amount of polymers to achieve films that are soft, quiet, flexible films that are not brittle, see [0035].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the present application to vary the ratio of starch, mineral, and polyethylene to meet the claimed renewable content starch in the blend is greater than an amount by weight of the renewable content mineral comprising oolitic aragonite to achieve films that are soft, quiet, flexible films that are not brittle, see [0035].
Regarding claim 12, He as modified does not meet the claimed method of claim 1, wherein a ratio of the amount of the renewable content starch to the amount of the renewable content mineral comprising oolitic aragonite within the blend is about two to one.
He teaches the polymer film blend may contain Bio-Sus concentrations of from up to about 40%,[0035]. He teaches filter the total amount of filler should comprise about 25-75% (by weight) of the film composition, [0038]. He teaches varying the amount of polymers to achieve films that are soft, quiet, flexible films that are not brittle, see [0035].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the present application to vary the ratio of starch, mineral, and polyethylene to meet the claimed a ratio of the amount of the renewable content starch to the amount of the renewable content mineral comprising oolitic aragonite within the blend is about two to one, to achieve films that are soft, quiet, flexible films that are not brittle, see [0035].
Regarding claim 13, He as modified meets the claimed method of claim 1, wherein the film comprises at least one material in addition to (i) renewable content starch, (ii) renewable content mineral comprising oolitic aragonite, and (iii) polyethylene. He teaches [0041] it may be necessary to include a compatibilizer in the film of the present invention, to improve the blending of the film-forming polymer with the Bio-Sus polymer. Typical compatibilizers include, but are not limited to, polymeric compounds such as polyesters.
Regarding claim 14, He meets the claimed method, comprising: determining a desired ratio of (He teaches varying the amount of filler in a film depending on its intended porosity, [0038]) (i) renewable content starch, (biodegradable polymers including thermoplastic starch (TPS), [0034]) (ii) renewable content mineral comprising oolitic aragonite, (He teaches calcium carbonate from plankton or algae sources can be harvested from the ocean bed, [0039]. Examiner notes that oolitic aragonite is calcium carbonate harvested from the sea bed, as defined by the NPL “What is Oolitic Aragonite” in the file wrapper dated 12/28/2023) and (iii) polyethylene for a film; (polyethylene homopolymers and copolymers, [0036]) mixing (the polymer components are mixed to make an essentially homogeneous blend [0027]) amounts of (i) renewable content starch, (ii) renewable content mineral comprising oolitic aragonite, and (iii) polyethylene; (see above ingredients) operating film extrusion equipment to form the film from the blended (i) renewable content starch, (ii) renewable content mineral comprising oolitic aragonite, and (iii) polyethylene. (an extrusion process, such as cast extrusion [0043]).
He is silent on the step of determining a desired ratio of (i) a renewable content starch, ii) a renewable content mineral, and (iii) polyethylene.
He teaches varying the amount of filler in a film depending on its intended porosity, [0038]. He teaches varying the amount of polymers to achieve films that are soft, quiet, flexible films that are not brittle, see [0035].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the present application to vary the ratio of starch, mineral, and polyethylene to meet the claimed ratio determining step in order to optimize the porosity [0038] and achieve films that are soft, quiet, flexible films that are not brittle, see [0035].
Regarding claim 15, He as modified does not meet the claimed method of claim 14, wherein a product formed from the film comprises at least twenty percent renewable material content.
He teaches the polymer film blend may contain more preferably 15% up to about 30% Bio-Sus polymer,[0035]. He teaches varying the amount of polymers to achieve films that are soft, quiet, flexible films that are not brittle, see [0035].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the present application to vary the ratio of starch, mineral, and polyethylene to meet the claimed at least twenty percent by weight achieve films that are soft, quiet, flexible films that are not brittle, see [0035].
Regarding claim 16, He as modified does not meet the claimed method of claim 14, wherein the amount of the renewable content starch is greater than the amount of the renewable content mineral comprising oolitic aragonite.
He teaches the polymer film blend may contain Bio-Sus concentrations of from up to about 40%,[0035]. He teaches filter the total amount of filler should comprise about 25-75% (by weight) of the film composition, [0038]. He teaches varying the amount of polymers to achieve films that are soft, quiet, flexible films that are not brittle, see [0035].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the present application to vary the ratio of starch, mineral, and polyethylene to meet the claimed renewable content starch in the blend is greater than an amount by weight of the renewable content mineral comprising oolitic aragonite to achieve films that are soft, quiet, flexible films that are not brittle, see [0035].
Regarding claim 18, He meets the claimed film, comprising a ratio of (i) renewable content starch, (biodegradable polymers including thermoplastic starch (TPS), [0034]) (ii) renewable content mineral comprising oolitic aragonite, (He teaches calcium carbonate from plankton or algae sources can be harvested from the ocean bed, [0039]. Examiner notes that oolitic aragonite is calcium carbonate harvested from the sea bed, as defined by the NPL “What is Oolitic Aragonite” in the file wrapper dated 12/28/2023) and (iii) polyethylene, (polyethylene homopolymers and copolymers, [0036]).
He does not teach wherein the ratio is based on a desired use for the film.
He teaches varying the amount of filler in a film depending on its intended porosity, [0038]. He teaches varying the amount of polymers to achieve films that are soft, quiet, flexible films that are not brittle, see [0035].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the present application to vary the ratio of starch, mineral, and polyethylene to meet the claimed ratio based on desired use in order to optimize the porosity [0038] and achieve films that are soft, quiet, flexible films that are not brittle, see [0035].
Claim(s) 2, 7-10, 17, 19, and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over He et al. (US 2014/0272357 A1) in view of Showalter (US 2021/0238390 A1).
Regarding claim 2, He is silent on the method of claim 1, further comprising creating a bag from the film.
Showalter meets the claimed creating a bag from the film. Showalter teaches earth plant-based composition having eco-friendly sustainable properties, which can be effectively used to produce bioplastic without the use of plasticizers or thermoplastic starch additives, using organic, sustainable, renewable or recyclable material sources to produce masterbatch of bioplastic resins—biopolymers for use in durable goods, food, and beverage containers, cosmetic, and healthcare packaging, medical devices, [0002] such as food and beverage containers, packaging, film, plastic bags, [0111].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the present application use the film of He to create a food plastic bag as taught by Showalter because He teaches are soft, quiet, flexible films that are not brittle, see [0035], which are suitable for food bags.
Regarding claim 7, He is silent on the method of claim 1, wherein the determined use is a container.
Showalter meets the claimed wherein the determined use is a container. Showalter teaches earth plant-based composition having eco-friendly sustainable properties for use in durable goods, food, and beverage containers, cosmetic, and healthcare packaging, medical devices, [0002] such as food and beverage containers, packaging, film, plastic bags, [0111].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the present application use the film of He to create a food plastic bag as taught by Showalter because He teaches are soft, quiet, flexible films that are not brittle, see [0035], which are suitable for food bags.
Regarding claim 8, He is silent on the method of claim 1, wherein the determined use is at least one of a sandwich bag, a storage bag, a freezer bag, and a waste bag.
Showalter meets the claimed wherein the determined use is at least one of a sandwich bag, a storage bag, a freezer bag, and a waste bag. Showalter teaches earth plant-based composition having eco-friendly sustainable properties, for use in durable goods, food, and beverage containers, cosmetic, and healthcare packaging, medical devices, [0002] such as food and beverage containers, packaging, film, plastic bags, [0111].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the present application use the film of He to create a food plastic bag as taught by Showalter because He teaches are soft, quiet, flexible films that are not brittle, see [0035], which are suitable for food bags.
Regarding claim 9 and 20 , He is silent on wherein the gauge of the film is suitable for at least one of a sandwich bag, a storage bag, a freezer bag, and a waste bag.
Showalter meets the claimed wherein the gauge of the film is suitable for at least one of a sandwich bag, a storage bag, a freezer bag, and a waste bag. Showalter teaches earth plant-based composition having eco-friendly sustainable properties, for use in durable goods, food, and beverage containers, cosmetic, and healthcare packaging, medical devices, [0002] such as food and beverage containers, packaging, film, plastic bags, [0111].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the present application use the film of He to create a food plastic bag as taught by Showalter because He teaches are soft, quiet, flexible films that are not brittle, see [0035], which are suitable for food bags.
Regarding claim 10 and 17, He is silent on the method of claim 1, further comprising: forming the film into a bag; and coupling a reclosable closure element to a top portion of the bag.
Showalter meets the claimed further comprising: forming the film into a bag; and coupling a reclosable closure element to a top portion of the bag. Showalter teaches earth plant-based composition having eco-friendly sustainable properties, for use in durable goods, food, and beverage containers, cosmetic, and healthcare packaging, medical devices, [0002] such as food and beverage containers, packaging, film, plastic bags, [0111]. Examiner notes that a reclosable closure element is obvious to one of ordinary skill in the art when teaching a food container or plastic bag.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the present application use the film of He to create a food plastic bag as taught by Showalter because He teaches are soft, quiet, flexible films that are not brittle, see [0035], which are suitable for food bags.
Regarding claim 19, He is silent on wherein a bag formed from the film comprises at least twenty percent renewable material content.
He teaches the polymer film blend may contain more preferably 15% up to about 30% Bio-Sus polymer, [0035]. He teaches varying the amount of polymers to achieve films that are soft, quiet, flexible films that are not brittle, see [0035].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the present application to vary the ratio of starch, mineral, and polyethylene to meet the claimed at least twenty percent by weight achieve films that are soft, quiet, flexible films that are not brittle, see [0035].
Showalter meets the claimed a bag. Showalter teaches earth plant-based composition having eco-friendly sustainable properties, for use in durable goods, food, and beverage containers, cosmetic, and healthcare packaging, medical devices, [0002] such as food and beverage containers, packaging, film, plastic bags, [0111]. Examiner notes that a reclosable closure element is obvious to one of ordinary skill in the art when teaching a food container or plastic bag.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the present application use the film of He to create a food plastic bag as taught by Showalter because He teaches are soft, quiet, flexible films that are not brittle, see [0035], which are suitable for food bags.
Relevant Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Falken (US 2023/0123482 A1) teaches [0037] The one or more fillers may include, for example, precipitated calcium carbonate, oolitic aragonite.
Oakley (US 2009/0312462 A1) teaches Abstract: A polymer composition and its use for thin film packaging applications including on a dry basis: a) from 45 to 90% by weight of starch; b) from 0.1 to 15% by weight of a water soluble polymer selected from polyvinyl alcohol, polyvinylacetate, and copolymers of ethylene and vinyl alcohol which have a melting point compatible with the molten state of the starch component; and c) from 5 to 45% by weight of one or more plasticizers having a molecular weight in the range of 50-6000, more preferably 50-2500 and more preferably still 100-400 and desirably selected from the group consisting of sorbitol, glycerol, maltitol, xylitol, mannitol, erythritol, glycerol trioleate, tributyl citrate, acetyl tri-ethyl citrate, glyceryl triacetate, 2,2,4-trimethyl-1,3-pentanediol diisobutyrate, polyethylene oxide, ethylene glycol, diethylene glycol or polyethylene glycol.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL M. ROBINSON whose telephone number is (571)270-0467. The examiner can normally be reached Monday-Friday 9:30AM-6PM.
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, Sam Zhao can be reached at (571)270-5343. 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.
/MICHAEL M. ROBINSON/Primary Examiner, Art Unit 1744