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 .
DETAILED ACTION
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.
Claims 1, 5-6, 22 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1, 3-5, 13, 17-19 of copending Application No. 19/642,807. Although the claims at issue are not identical, they are not patentably distinct from each other because both application discloses laminate biodegradable packaging and liquid comprising water and humectant.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claims 1-4, 12-14, 17-18, 20-26, 28-33, 38 are rejected under 35 U.S.C. 103 as being unpatentable over Graham et al. (WO2023283087 use US20240270470 as equivalent), and further in view of Arora et al. (WO2021072423 use US20240091115 as equivalent)
As to claim 1. Graham et al. discloses a biodegradable container (see e.g. pod capsule made of biodegradable materials in Par. 40) in combination with a liquid personal care composition (see e.g. shampoos or personal care in Par. 46) comprising:
a biodegradable vessel having at least one opening and a biodegradable cover for the opening (see e.g. removeable portion 1220 in Par. 57 and Fig 2);
a liquid personal care (see e.g. shampoos or personal care in Par. 46)
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Graham et al. does not disclose the liquid personal care composition comprising from about 14% to about 50% water;from about 20% to about 70% of a humectant; wherein there is a Water Activity (Aw) of about 0.40 to about 0.90.
Arora et al. discloses b) a liquid personal care composition comprising from about 14% to about 50% water (see 1.79 Any of the preceding compositions comprising from 5%-40%, e.g., 10%-35%, e.g., about 15%, 25%, 30%, and 35% water);from about 20% to about 70% of a humectant(see e.g. 1.41 Any of the preceding compositions, comprising a humectant in an amount of 15 to 70 wt. % or 30 to 65 wt. %, based on the total weight of the composition) ; wherein there is a Water Activity (Aw) of about 0.40 to about 0.90(see e.g. Per instant application, the water activity is the result of reduced water content using humectant in Par. 196 of instant application. By comparison, the personal composition of Arora et al. will have overlapping water activity as the instant application as Arora e al. use not only the same Humectant of glycerine and also overlapping percentage of humectant and water content within the personal care composition. ).
Both Graham and Arora are analogous in the field of personal care composition within a package, it would have been obvious for a person with ordinary skills in the art to modify/replace the liquid personal care in Graham et al. with the personal care composition taught by Arora as the composition in Arora et al. incorporate desirable humectant to reduce water evaporation and increased personal care composition preservation by lowering water activity as suggested by Arora (see e.g. in Par. 66 of Arora et al.) and as the result keep the biodegradable container integrity longer.
As to claim 2. Graham et al. in view of Arora et al. discloses A biodegradable container according to Claim 1, wherein the biodegradable vessel comprises cellulose fibers and is pulp molded (see e.g. Graham et al. discloses cellulose, molded pulp in in Par. 41).
As to claim 3. Graham et al. in view of Arora et al. discloses A biodegradable container according to Claim 1, wherein the biodegradable cover is a biodegradable lidding film(see e.g. Graham et al. discloses lid with biodegradable materials in Par. 42).
As to claim 4. Graham et al. in view of Arora et al. discloses A biodegradable container according to Claim 2, wherein the biodegradable vessel comprises a biodegradable liquid containment barrier with one or more layers and one or more coatings (see e.g. Graham et al. discloses one or more barrier layer in Par. 42, layer can be laminated or coated in Par. 45).
As to claim 12. Graham et al. in view of Arora et al. discloses A biodegradable container according to Claim 1, wherein the biodegradable vessel is made from a biodegradable paper board (see e.g. Graham et al. discloses paperboard in Par. 41).
As to claim 13. Graham et al. in view of Arora et al. discloses A biodegradable container according to Claim 1, wherein both the biodegradable vessel and biodegradable cover are pulp molded (see e.g. Graham et al. discloses the biodegradable pod capsule container and lid can be made of molded pulp in par. 40-42).
As to claim 14. Graham et al. in view of Arora et al. discloses A biodegradable container according to Claim 13, wherein the biodegradable vessel and the biodegradable cover are pulp molded in one piece and comprise a hinge (see e.g. Fig 1-2, flange in Par. 57, the pod capsule is an integrally molded in Par. 39).
As to claim 17. Graham et al. in view of Arora et al. discloses A biodegradable container according to Claim 3, wherein the biodegradable lidding film comprises cellulose (see e.g. Graham et al. discloses cellulose in par. 42).
As to claim 18. Graham et al. in view of Arora et al. discloses A biodegradable container according to Claim 1, wherein the biodegradable vessel comprises a component grafted to the biodegradable vessel wherein the component is made of a biodegradable polymer (see e.g. Graham et al. discloses biodegradable plastic in Par. 41, by combination of molding process, fuse, weld, bond and etc in Par. 39).
As to claim 20. Graham et al. in view of Arora et al. discloses A biodegradable container according to Claim 1 wherein the liquid personal care composition comprises from about 35 % to about 50% water(see e.g. Arora et al. discloses 1.79 Any of the preceding compositions comprising from 5%-40%, e.g., 10%-35%, e.g., about 15%, 25%, 30%, and 35% water).
As to claim 21. Graham et al. in view of Arora et al. discloses A biodegradable container according to Claim 1 wherein the humectant is from about 23% to about 45%(see e.g. 1.41 Arora et al. discloses any of the preceding compositions, comprising a humectant in an amount of 15 to 70 wt. % or 30 to 65 wt. %, based on the total weight of the composition.
As to claim 22. Graham et al. in view of Arora et al. discloses A biodegradable container according to Claim 1 wherein the humectant is selectant from the group consisting of glycerin, amino acids, proline, arginine aspartate 1,3-butylene glycol, propylene glycol and water, codium tomentosum extract, collagen amino acids or peptides, creatinine, diglycerol, biosaccharide gum-1, glucamine salts, glucuronic acid salts, glutamic acid salts, polyethylene glycol ethers of glycerine, glycerine, glycerol monopropoxylate, glycogen, hexylene glycol, honey, hydrogenated starch hydrolysates, hydrolyzed mucopolysaccharides, inositol, keratin amino acids, glycosaminoglycans, methoxy PEG 10, methyl gluceth-10 and-20, methyl glucose, 3-methyl-1,3-butanediol, N-acetyl glucosamine salts, polyethylene glycol, PEG 4, PEG 5 pentaerythitol, PEG 6, PEG 8, PEG 9, pentaerythitol, 1,2 pentanediol, PPG-1 glyceryl ether, PPG-9,2-pyrrolidone-5-carboxylic acid and salts, glyceryl pca, saccharide isomerate, sericin, silk amino acids, sodium acetylhyaluronate, sodium hyaluronate, sodium poly-aspartate, sodium polyglutamate, sorbeth 20, sorbeth 6,sugar and sugar alcohols, glucose, sucrose, fructose, mannose, polyglycerol sorbitol, trehalose, triglycerol, trimethyolpropane, tris (hydroxymethyl) amino methane salts, yeast extract, ionic salts, sodium chloride potassium chloride and mixtures thereof(see e.g. Arora et al. discloses humectant selected from glycerin in 1.40).
As to claim 23. Graham et al. in view of Arora et al. discloses A biodegradable container according to Claim 22 wherein the humectant is selected from the group consisting of glycerin, sodium chloride and mixtures thereof (see e.g. Arora et al. discloses humectant selected from glycerin in 1.40).
As to claim 24. Graham et al. in view of Arora et al. discloses A biodegradable container according to Claim 1 wherein the Water Activity (Aw) is from about 0.80 to about 0.90(see discussion of claim 1).
As to claim 25. Graham et al. in view of Arora et al. discloses A biodegradable container according to Claim 1 wherein the Water Activity (Aw) is below from about 0.80(see discussion of claim 1).
As to claim 26. Graham et al. in view of Arora et al. discloses A biodegradable container according to Claim 1 wherein the liquid personal care composition comprises a surfactant (see e.g. Arora et al. discloses nonionic surfactant in 1.56).
As to claim 28. Graham et al. in view of Arora et al. discloses A biodegradable container according to Claim 26 wherein the surfactant is selected from one or more anionic surfactants(see e.g. Arora et al. discloses nonionic surfactant in 1.56).
As to claim 29. Graham et al. in view of Arora et al. discloses A biodegradable container according to Claim 1 wherein the liquid personal care composition comprises an amphoteric co- surfactant(see e.g. Arora et al. discloses amphoteric surfactants in Par. 50) .
As to claim 30. Graham et al. in view of Arora et al. discloses A biodegradable container according to Claim 29 wherein the amphoteric co-surfactant is selected from the group consisting of cocamidopropyl betaine, lauramidopropyl betaine and mixtures thereof(see e.g. Arora et al. discloses cocamidopropylbetaine in Par. 49.)
As to claim 31. Graham et al. in view of Arora et al. discloses A biodegradable container according to Claim 1 wherein the liquid personal care composition comprises a thickener(see e.g. Arora et al. discloses thickening agent in 1.38).
As to claim 32. Graham et al. in view of Arora et al. discloses A biodegradable container according to Claim 31 wherein the liquid personal care composition comprises a thickener selected from the group consisting of acrylic acid/acrylonitrogens copolymer, acrylates/steareth-20 itaconate copolymer, acrylates/ceteth-20 itaconate copolymer, Acrylates/Aminoacrylates/C 10-30 Alkyl PEG-20 Itaconate Copolymer,acrylates/aminoacrylates copolymer, acrylates/steareth-20 methacrylate copolymer, acrylates/beheneth-25 methacrylate copolymer, acrylates/steareth-20 methacrylate crosspolymer, acrylates/beheneth-25 methacrylate/HEMA crosspolymer, acrylates/vinyl neodecanoate crosspolymer, acrylates/vinyl isodecanoate crosspolymer, Acrylates/Palmeth-25 Acrylate Copolymer, Acrylic Acid/Acrylamidomethyl Propane Sulfonic Acid Copolymer, andacrylates/C10-C30 alkyl acrylate crosspolymer and mixtures thereof(see e.g. Arora et al. discloses ydroxyethyl cellulose in 1.77).
As to claim 33. Graham et al. in view of Arora et al. discloses A biodegradable container according to Claim 32 wherein the thickener is selected from the group consisting of hydroxyethyl cellulose(see e.g. Arora et al. discloses hydroxyethyl cellulose in 1.77).
As to claim 38. Graham et al. in view of Arora et al. discloses A biodegradable container in combination with a liquid personal care composition wherein the liquid personal care composition gains water when packaged inside the container, wherein the liquid personal care composition gain of water enables physical or chemical properties of a final formulation of the liquid personal care composition(as Graham et al. in view of Arora et al. discloses analogous biodegradable pulp package, with analogous personal care composition as discussed above, it is expected the composition of personal care and biodegradable package will interact the same way as the instant application).
Claims 5-11, 15-16, 19 are rejected under 35 U.S.C. 103 as being unpatentable over Graham et al. (WO2023283087 use US20240270470 as equivalent) and Arora et al.(WO2021072423 use US20240091115 as equivalent), and further in view of Boswell et al. (US 20220112663)
As to claim 5. Graham et al. in view of Arora et al. discloses A biodegradable container according to Claim 2, wherein the biodegradable vessel comprises barrier layer and an metal or metalized film on cellulose fiber and other barrier can be separate layers formed on the barrier layer in Par. 42. Of Graham et al.
Graham et al. in view of Arora et al. does not explicitly discloses the biodegradable vessel comprises an inorganic barrier layer by vapor phase deposition after pulp molding. However by vapor phase deposition after pulp molding is product by process claim, PRODUCT-BY-PROCESS CLAIMS ARE NOT LIMITED TO THE MANIPULATIONS OF THE RECITED STEPS, ONLY THE STRUCTURE IMPLIED BY THE STEPS per MPEP 2113. 7.
Boswell et al. discloses a biodegradable and recyclable barrier laminate that has inorganic barrier layer in abstract, wherein inorganic barrier coating layers could be laid down on top of each other. In other embodiments, a biodegradable primer layer would be used between each of the inorganic barrier coating layers in order to protect them. Each additional vapor-deposited inorganic coating can be applied similarly to the previously described vapor-deposited inorganic coatings—or alternatively they could be applied in a different way in Par. 146. Biodegradable barrier layer are applied on cellulose fiber in par. 75 by vapor deposition of an inorganic barrier layer in Par. 166.
Both Graham et al. in view of Arora et al. and Boswell et al. are analogous in the field of biodegradable paper substrate with barrier layer laminate, it would have been obvious for a person with ordinary skills in the art to modify/replace the barrier layer laminate of Graham et al. in view of Arora et al with the inorganic barrier layer laminate as taught by Boswell as the inorganic barrier layer laminate comprising prime layer, inorganic barrier layer in Boswell lead to reduction in the ability of the paper to biodegrade in various environments and thus improved barrier properties as suggested by Boswell et al. (see e.g. Par. 52, Par. 114, Par. 116 of Boswell et al.)
As to claim 6. Graham et al. in view of Arora et al. and Boswell et al. discloses A biodegradable container according to Claim 4, wherein the biodegradable liquid containment barrier comprises one or more primer layers comprising a material selected from the group consisting of cellulose fibers, polyvinyl alcohol (PVOH), polyvinyl alcohol copolymers, polyhydroxyalkanoates (PHA), polybutylene succinate adipate (PBSA), chitosan, natural gums such as xanthan and carrageenan gum, psyllium husk, sodium alginate, maltodextrin, polysaccharides, casein, whey, agar-agar, thermoplastic starch and mixtures therein(see e.g. Boswell et al. discloses barrier layer comprise primer layer such as PVOH in Par. 128).
As to claim 7. Graham et al. in view of Arora et al. and Boswell et al. discloses A biodegradable container according to Claim 4, wherein the biodegradable liquid containment barrier comprises an inorganic barrier layer (see e.g. Boswell et al. discloses inorganic barrier layer in Par. 52).
As to claim 8. Graham et al. in view of Arora et al. and Boswell et al. discloses A biodegradable container according to Claim 4, wherein the biodegradable liquid containment barrier comprises one or more topcoat layers selected from the group consisting of linseed oil, carnauba, beeswax, cutin, rapeseed wax, castor wax, candelilla wax, soy wax,palm oil wax, biodegradable paraffin oil-based waxes, shellac, chitosan, inorganic-organic hybrid-polymer and mixtures thereof(see e.g. Boswell et al. discloses coated with bees wax in Par. 444).
As to claim 9. Graham et al. in view of Arora et al. and Boswell et al. discloses A biodegradable container according to Claim 8, wherein a topcoat free surface energy is between 40 and 50 mN/m and wherein the dispersion energy component is between 32 to 37 mN/m the polar energy component is between 5 to 16 mN/m(see e.g. theses are the property of the barreier laminate comprising top coat, as discuss above in claim 8, Graham et al. in view of Arora et al. and Boswell et al. discloses a same/obvious variant barrier and top coat as the instant application, thus it is expected that the expected property are met.)
As to claim 10. Graham et al. in view of Arora et al. and Boswell et al. discloses A biodegradable container according to Claim 4, wherein the liquid containment barrier is a thermoplastic material selected from the group consisting of aliphatic and/or aromatic polyesters or thermoplastic starches(see e.g. Boswell et al. discloses biodegradable aliphatic aromatic polyester and water in-soluble polymer such as thermoplastic starch in Par. 103).
As to claim 11. Graham et al. in view of Arora et al. and Boswell et al. discloses A biodegradable container according to Claim 10 wherein the thermoplastic material is applied by hot vacuum thermoforming (see e.g. Boswell et al. discloses by vacuum in Par. 27., heating method in par. 446, as By hot vacuum thermoforming is product by process claim, PRODUCT-BY-PROCESS CLAIMS ARE NOT LIMITED TO THE MANIPULATIONS OF THE RECITED STEPS, ONLY THE STRUCTURE IMPLIED BY THE STEPS per MPEP 2113. 7. As the Graham et al. in view of Arora et al. and Boswell et al. have the same thermoplastic materials product structure. Obvious claim rejection claim limitation is met.)
As to claim 15. Graham et al. in view of Arora et al. and Boswell et al. discloses A biodegradable container according to Claim 3, wherein the biodegradable lidding film comprises a sealant layer made from a water in-soluble biodegradable polymer(see e.g. Boswell et al. discloses sealant polymer in Par. 427, biodegradable polymer can be water in-soluble in Par. 49).
As to claim 16. Graham et al. in view of Arora et al. and Boswell et al. discloses A biodegradable container according to Claim 3, wherein the biodegradable lidding film comprises an inorganic barrier layer (see e.g. Boswell et al. discloses inorganic barrier layer in Par. 70)..
As to claim 19. Graham et al. in view of Arora et al. and Boswell et al. discloses A biodegradable container according to Claim 18, wherein the biodegradable polymer is a thermoplastic starch (see e.g. Boswell et al. discloses biodegradable water insoluble polymer such as thermoplastic starch in Par. 103).
Claims 27, 34-37 are rejected under 35 U.S.C. 103 as being unpatentable over Graham et al. (WO2023283087 use US20240270470 as equivalent) and Arora et al.(WO2021072423 use US20240091115 as equivalent), and further in view of Santos et al. WO2020247594, use US20240352079 as equivalent)
As to claim 27. Graham et al. in view of Arora et al. discloses the surfactant can be 0.1% to 5% (see e.g. Par. 51 of Arora et al). However Graham et al. in view of Arora et al. does not discloses the surfactant concentration can be from about 10% to about 18%
Santos et al. discloses A biodegradable container according to Claim 26 wherein the surfactant is from about 10% to about 18%(see e.g. Santos et al. discloses 0.0001%w/w to 20%w/w or 0.0001% to 50% w/w of excipients in Par. 217 as carrier, diluent, or vehicle for the active agent or primary component, surfactant in Par. 56 wherein Excipients can be surfactants in par. 217).
Both Graham et al. in view of Arora et al., and Santos et al. are analogous in the field personal care composition, it would have been obvious for a person with ordinary skills in the art to modify the personal composition of Graham et al. in view of Arora et al. to vary the excipients/surfactant concentration as the surfactant is a result effective variable that can reduce the surface tension between two materials as suggested by Santos (see e.g. in Par. 56 of Santos et al.) and ultimately adjust the viscosity and ultimately reduce water content within the personal care concentration and increase the duration of the integrity of the biodegradable package/container(see e.g. in Par. 283 of Santos).
As to claim 34. Graham et al. in view of Arora et al., and Santos et al. discloses A biodegradable container according to Claim 1 wherein the liquid personal care composition comprises sodium chloride (see e.g. Santos et al. discloses excipient can be sodium chloride in Par. 217).
As to claim 35. Graham et al. in view of Arora et al., and Santos et al. discloses A biodegradable container according to Claim 1 wherein the liquid personal care composition comprises a scalp health active (see e.g. Santos et al. discloses excipients can be scalp treatment in table 1).
As to claim 36. Graham et al. in view of Arora et al., and Santos et al. discloses A biodegradable container according to Claim 35 wherein the scalp health active is selected from the group consisting of piroctone olamine, zinc pyrithione, climbazole, sulfur and mixtures thereof (see e.g. Santos et al. discloses zinc pyrithione in table 1).
As to claim 37. Graham et al. in view of Arora et al., and Santos et al. discloses A biodegradable container according to Claim 1 wherein the personal care composition has a viscosity of from about 5,000 cps to about 20,000 cps(see e.g. Santos et al. discloses thickening agent can be added in Par. 217 to have thickening effects in par. 277 in order to provide stability of cosmetic products and enhance their viscosity and consistency in Par. 283. Thus it would have been obvious for a person with ordinary skills in the art to modify the thickening agent amount in personal care composition of Graham et al. in view of Arora et al., and Santos et al. as result effective variable to achieve desired thickness effect of the final personal care product of Graham et al. in view of Arora et al., and Santos et al.)
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure
Renn et al. (US20070292643) discloses a biodegradable multilayer film has at least one starch blend layer of a modified thermoplastic starch blend that contains more than 1% to 10% water and at least one polyester layer of a biodegradable polyester(abstract).
Wei et al. (US 20230014524) discloses 1% to 15% surfactant in Par. 49 in personal care composition.
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/TONG GUO/
Primary Patent Examiner
Art Unit 1781
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