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 § 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.
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, 2, 4, and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Johnson et al. (US Pat. 10,316,120) in view of Coker (US Pat. 3,997,489).
Considering Claims 1 and 2: Johnson et al. teaches a polymer composition comprising 85 to 92% by weight polyvinyl alcohol, 3 to 20 weight percent of water, and a plasticizer/additive (11:33-41). Johnson et al. teaches the polymer as being water soluble (Table 1), as the properties are measured in an aqueous solution at 4% polymer. Johnson et al. teaches the polydispersity of the polyvinyl alcohol is 1.86 to 2.09.
Johnson et al. is silent towards the melt flow rate of the polyvinyl alcohol. However, Coker teaches a polyvinyl alcohol with a melt flow index of 1.01 g/10 min (Table III). Johnson et al. and Coker are analogous art as they are concerned with the same field of endeavor, namely extrudable polyvinyl alcohol. It would have been obvious to a person of ordinary skill in the art to have used the melt flow index of Coker in the polymer of Johnson et al., and the motivation to do so would have been, to control the residence time and strength of the polymer (2:10-23).
Johnson et al. does not teach that the polyvinyl alcohol is obtained from sugarcane. However, the instant claims are a product by process claim. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted). See MPEP § 2113.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients, in the claimed amounts, and teaches the composition as being made by a substantially similar process. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. the disintegration under anaerobic conditions, would necessarily arise from a composition with all the claimed ingredients in the claimed amounts. "Products of identical chemical composition can not 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. 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 enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Considering Claims 4 and 5: The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients, in the claimed amounts, and teaches the composition as being made by a substantially similar process. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. the stability and GRAS status, would necessarily arise from a composition with all the claimed ingredients in the claimed amounts. "Products of identical chemical composition can not 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. 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 enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Claims 6-11 are rejected under 35 U.S.C. 103 as being unpatentable over Johnson et al. (US Pat. 10,316,120) in view of Coker (US Pat. 3,997,489).
Considering Claims 6 and 7: Johnson et al. teaches a film prepared from a polymer composition (Example 1) comprising 85 to 92% by weight polyvinyl alcohol, 3 to 20 weight percent of water, and a plasticizer/additive (11:33-41). Johnson et al. teaches the polymer as being water soluble (Table 1), as the properties are measured in an aqueous solution at 4% polymer. Johnson et al. teaches the polydispersity of the polyvinyl alcohol is 1.86 to 2.09.
Johnson et al. is silent towards the melt flow rate of the polyvinyl alcohol. However, Coker teaches a polyvinyl alcohol with a melt flow index of 1.01 g/10 min (Table III). Johnson et al. and Coker are analogous art as they are concerned with the same field of endeavor, namely extrudable polyvinyl alcohol. It would have been obvious to a person of ordinary skill in the art to have used the melt flow index of Coker in the polymer of Johnson et al., and the motivation to do so would have been, to control the residence time and strength of the polymer (2:10-23).
Johnson et al. does not teach that the polyvinyl alcohol is obtained from sugarcane. However, the instant claims are a product by process claim. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted). See MPEP § 2113.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients, in the claimed amounts, and teaches the composition as being made by a substantially similar process. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. the disintegration under anaerobic conditions, would necessarily arise from a composition with all the claimed ingredients in the claimed amounts. "Products of identical chemical composition can not 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. 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 enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Considering Claims 8 and 10: Johnson et al. does not teach that the film is a pallet wrap. However, this is a statement of intended use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020) (The court found that the preamble in one patent’s claim is limiting but is not in a related patent); Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients, in the claimed amounts, and teaches the composition as being made by a substantially similar process. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. the WTVR and carbon footprint, would necessarily arise from a composition with all the claimed ingredients in the claimed amounts. "Products of identical chemical composition can not 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. 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 enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Considering Claim 9: Johnson et al. does not teach that the film is a pallet wrap. However, this is a statement of intended use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020) (The court found that the preamble in one patent’s claim is limiting but is not in a related patent); Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02.
Johnson et al. teaches the water content as being 0.1 to 5.0 weight percent (17:21-31). This overlaps with 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. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05. It would have been obvious to a person of ordinary skill in the art to have included water in the overlapping portion of the claimed range, and the motivation to do so would have been, as Johnson et al. suggests, to prevent dissolution of the polyvinyl alcohol during use.
Considering Claim 11: The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients, in the claimed amounts, and teaches the composition as being made by a substantially similar process. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. the amount of microplastics, would necessarily arise from a composition with all the claimed ingredients in the claimed amounts. "Products of identical chemical composition can not 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. 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 enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Claims 12, 13, 15, 16, 19, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Johnson et al. (US Pat. 10,316,120) in view of Coker (US Pat. 3,997,489) and Kazeto et al. (US 2022/0348757).
Considering Claims 12, 13, 15, 19, and 20: Johnson et al. teaches a film prepared from a polymer composition (Example 1) comprising 85 to 92% by weight polyvinyl alcohol, 3 to 20 weight percent of water, and a plasticizer/additive (11:33-41). Johnson et al. teaches the polymer as being water soluble (Table 1), as the properties are measured in an aqueous solution at 4% polymer. Johnson et al. teaches the polydispersity of the polyvinyl alcohol is 1.86 to 2.09.
Johnson et al. is silent towards the melt flow rate of the polyvinyl alcohol. However, Coker teaches a polyvinyl alcohol with a melt flow index of 1.01 g/10 min (Table III). Johnson et al. and Coker are analogous art as they are concerned with the same field of endeavor, namely extrudable polyvinyl alcohol. It would have been obvious to a person of ordinary skill in the art to have used the melt flow index of Coker in the polymer of Johnson et al., and the motivation to do so would have been, to control the residence time and strength of the polymer (2:10-23).
Johnson et al. does not teach that the polyvinyl alcohol is obtained from sugarcane. However, the instant claims are a product by process claim. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted). See MPEP § 2113.
Johnson et al. does not teach the film as being used in a waste collection bag. Kazeto et al. teaches a waste storage bag (¶0064) made from a film comprising a sugar cane derived polyvinyl alcohol (¶0006; 0025), where the film has a thickness of 5 to 200 microns (¶0063). Kazeto et al. teaches the composition as comprising a plasticizer (¶0051), starch (¶0053), and filler (¶0062). Johnson et al. and Kazeto et al. are analogous art as they are concerned with the same field of endeavor, namely polyvinyl alcohol films. It would have been obvious to a person of ordinary skill in the art to have used the film of Johnson et al. to form a waste storage bag, as in Kazeto et al., and the motivation to do so would have been, as Kazeto et al. suggests, to produce a biodegradable waste storage bag.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients, in the claimed amounts, and teaches the composition as being made by a substantially similar process. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. the amount of microplastics and disintergrates, would necessarily arise from a composition with all the claimed ingredients in the claimed amounts. "Products of identical chemical composition can not 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. 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 enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Considering Claim 16: Johnson et al. teaches the plasticizer as being glycerol (Example 1).
Claim 14 are rejected under 35 U.S.C. 103 as being unpatentable over Johnson et al. (US Pat. 10,316,120) in view of Coker (US Pat. 3,997,489) and Kazeto et al. (US 2022/0348757)as applied to claim 12 above, and further in view of Labeque et al. (EP 3207084).
Considering Claim 14: Johnson et al., Coker, and Kazeto et al. collectively teach the composition of claim 12 as shown above.
Johnson et al. does not teach the species of filler used in the film. However, Labeque et al. teaches using calcium carbonate, silica or talc as a filler for a polyvinyl alcohol film (¶0061). Johnson et al. and Labeque et al. are analogous art as they are concerned with the same field of endeavor, namely polyvinyl alcohol films. It would have been obvious to a person of ordinary skill in the art to have chosen the filler of Labeque et al. for the film of Johnson et al., and the motivation to do so would have been, as Labeque et al. suggests, they are conventional fillers for polyvinyl alcohol films.
Response to Amendment
The declaration under 37 CFR 1.132 filed February 17, 2026 is insufficient to overcome the rejection of claims 1, 2, 4-16, and 19-20 based upon over Johnson et al. (US Pat. 10,316,120) in view of Coker (US Pat. 3,997,489) as set forth in the last Office action because:
The declaration presents opinion evidence that the claimed polymer composition meets and unmet need with regard to the biodegradation rate and the disintegration properties claimed are unexpected over the prior art.
Although factual evidence is preferable to opinion testimony, such testimony is entitled to consideration and some weight so long as the opinion is not on the ultimate legal conclusion at issue. While an opinion as to a legal conclusion is not entitled to any weight, the underlying basis for the opinion may be persuasive. In re Chilowsky, 306 F.2d 908, 134 USPQ 515 (CCPA 1962) (expert opinion that an application meets the requirements of 35 U.S.C. 112 is not entitled to any weight; however, facts supporting a basis for deciding that the specification complies with 35 U.S.C. 112 are entitled to some weight); In re Lindell, 385 F.2d 453, 155 USPQ 521 (CCPA 1967) (Although an affiant’s or declarant’s opinion on the ultimate legal issue is not evidence in the case, "some weight ought to be given to a persuasively supported statement of one skilled in the art on what was not obvious to him." 385 F.2d at 456, 155 USPQ at 524 (emphasis in original)).
In assessing the probative value of an expert opinion, the examiner must consider the nature of the matter sought to be established, the strength of any opposing evidence, the interest of the expert in the outcome of the case, and the presence or absence of factual support for the expert’s opinion. Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 227 USPQ 657 (Fed. Cir. 1985), cert. denied, 475 U.S. 1017 (1986). See MPEP § 716.02.
The declaration is made by the sole named inventor in the application, and is not supported by factual support for the position of the declarant. As such, the declarant’s legal conclusion, that the claimed invention is novel and unexpected is not being given patentable weight.
"[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C. 102, on ‘prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same." In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977) (footnote and citation omitted). The burden of proof is similar to that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (citing Best, 562 F.2d at 1255). See MPEP § 2112. As the declaration does not directly compare the claimed properties with the closest prior art, namely Johnson et al., the applicant has not meet their burden of proof in rebutting the outstanding rejection.
Response to Arguments
Applicant's arguments filed February 17, 2026 have been fully considered but they are not persuasive, because:
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., the exclusion of polyethylene, wax and oil components) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
In fact, the current claims allow for the inclusion of components such as olefins, waxes, and stearic acid/oil components, as shown by claim 14. There is no evidence that the inclusion of these components would render the resultant product incapable of disintegrating under anaerobic conditions in 28 days.
It is noted that the claimed property, disintegration under anaerobic conditions is not synonymous with biodegradable. The instant specification defines a composition as passing if, after treatment under anaerobic conditions, 95% of the material basses through a 1 mm sieve (¶0147-149). Thus, the composition must only be broken into smaller pieces, rather than completely biodegraded to pass the test. As such, the inclusion of polyethylene, which is not considered to be biodegradable, would not necessarily render the composition incapable of passing the claimed disintegration test.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LIAM J HEINCER whose telephone number is (571)270-3297. The examiner can normally be reached M-F 7:30-5:00.
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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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/LIAM J HEINCER/Primary Examiner, Art Unit 1767
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