RESPONSE TO AMENDMENT
WITHDRAWN REJECTIONS
The objections to the claims made of record in the office action mailed on 09/22/2025 have been withdrawn due to Applicant’s amendment in the response filed 12/22/2025.
The 35 U.S.C. §103 rejection of the claims made of record in the office action mailed on 09/22/2025 have been withdrawn due to Applicant’s amendment in the response filed 12/22/2025.
REJECTIONS
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Objections
Claims 14 and 37 are objected to because of the following informalities: the limitation “die” appears misspelled and should be corrected to “dye”. Appropriate correction is required.
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.
Claim 15 is 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 15 recites the limitation "the salt" in claim 14. There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 103
Claims 1, 2, 5, 11-13, 22 and 31-35 are rejected under 35 U.S.C. 103 as being unpatentable over Vincent et al. (U.S. Pat. No. 10,800,596) in view of Niles et al. (U.S. App. Pub. No. 2023/0348161).
As set forth in MPEP 2144.05, in the case where the claimed range “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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 1, Vincent et al. discloses an insulation panel containing in the core a plurality of discrete puffed polysaccharide particulates defining a plurality of voids within the core. (Abstract and Fig. 1A). The particulates have densities of 0.2-2.0 pounds per cubic foot (col. 12, lines 5-11), overlapping with the presently claimed range. The puffed particulates meet the limitation of “pellets” as presently claimed and comprise less than 95% by weight starch (col. 10, lines 54-59), 0-10% by weight water (col. 10, lines 48-49), plasticizers (col. 10, line 53) and additional additives such as colorants, rheology agents, water-soluble adhesives, nucleating agents and fillers. (col. 10, lines 50-55).
Vincent et al. does not disclose the content of plasticizer or additional additives.
Niles et al. teaches starch pellets which contain 30-95 wt% starch (par. [0057]), 10-30 wt% water (par. [0058], 2-30 wt% plasticizer (par. [0059]) and other additives in the form of elastomeric/lower melting point thermoplastic polymers, fibers, minerals and other additives in the range of 0 to 10 wt%. (par. [0060]).
It would have been obvious to one of ordinary skill in the art to use contents of plasticizers and additional additives in starch particulates of Vincent et al. in the same amounts as taught by Niles.
Using known elements to improve products in the same way to yield predictable results in prima facie obvious. MPEP 2143. One of ordinary skill in the art would have a reasonable expectation of success that using plasticizers and additives in amounts as disclosed in Niles et al. would result in similar improved properties and effects provided by the materials when compounded in the starch composition of Vincent et al. due to the similarity in materials used (i.e. expanded, starch-based particles).
Regarding claim 2, Vincent et al. does not disclose that the starch is dent starch, chemically modified starch or high-amylose starch.
Niles et al. discloses that the pellets of their invention may use chemically modified starch. (par. [0055]).
It would have been obvious to one of ordinary skill in the art to use chemically modified starch in the particulates of Vincent et al. in view of the teachings of Niles et al.
One of ordinary skill in the art would have found it obvious to use chemically modified starch in view of the teachings of Niles et al. that the material would be suitably used in an expanded particulate starch-based composition such as the one disclosed in Vincent et al. One of ordinary skill in the art would therefore have a reasonable expectation of success in using chemically modified starch to obtain a material that can be predictably processed into the form of an expanded particulate material.
Regarding claim 5, the plasticizers disclosed in Vincent et al. include poly-vinyl alcohol (PVA). (col. 10, line 48).
Regarding claim 11, Vincent et al. discloses the use of starch, plasticizer, water and one or more other agents (col. 10, line 31-62) which would meet the narrower “consisting essentially of” transition phrase.
Regarding claim 12, Vincent et al. does not include fibers and cellulose may be replaced with starch. (col. 10, lines 31-35).
Vincent et al. discloses inclusions of PVA on the foamed particled.
Niles et al. teaches that in the alternative to polyvinyl alcohol, glycerin (i.e. glycerol) is known to be used as a plasticizer. (par. [0059]).
It would have been obvious to one of ordinary skill in the art to use glycerin instead of PVA as a plasticizer in the composition of Vincent et al. in view of the teachings of Niles et al.
One of ordinary skill in the art would have found it obvious to replace PVA in the starch composition of Vincent et al., thereby excluding the material completely, in view of the known interchangeability of using PVA and glycerin as taught by Niles et al. The selection of a known material based on its suitability for its intended purpose is prima facie obvious. MPEP 2144.07.
Regarding claim 13, Vincent et al. teaches inclusion of coloring agents, nucleating agents and cellulose. (col. 10, lines 31-62).
Regarding claim 22, Vincent et al. discloses that the particulates are included a panel having an insulation core on a substrate divided into several portions wherein the particulates form voids between them. (Abstract and Fig. 1).
Regarding claim 31, Vincent et al. in Fig. 1C the following:
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Regarding claim 32, Vincent et al. disclose including less than 95% by weight starch (col. 10, lines 54-59).
Vincent et al. does not disclose the content of plasticizer.
Niles et al. teaches starch pellets which contain 2-30 wt% plasticizer (par. [0059]).
It would have been obvious to one of ordinary skill in the art to use contents of plasticizers in starch particulates of Vincent et al. in the same amounts as taught by Niles.
Using known elements to improve products in the same way to yield predictable results in prima facie obvious. MPEP 2143. One of ordinary skill in the art would have a reasonable expectation of success that using plasticizers and additives in amounts as disclosed in Niles et al. would result in similar improved properties and effects provided by the materials when compounded in the starch composition of Vincent et al. due to the similarity in materials used (i.e. expanded, starch-based particles).
Regarding claims 33-34, Vincent et al. discloses that the particulates have densities of 0.2-2.0 pounds per cubic foot (col. 12, lines 5-11), overlapping with the presently claimed range.
Regarding claim 35, Vincent et al. does not disclose the inclusion of a blowing agent including the materials listed.
Niles et al. discloses inclusion of an elastomeric or thermoplastic polymer in the form of vinyl copolymer in the form of polyethylene, ethylene vinyl acetate (i.e. meeting the limitation of a blowing agent) in amounts of 0-10%.
It would have been obvious to one of ordinary skill in the art to include blowing agents in the starch composition of Vincent et al. in view of the teachings of Niles et al.
One of ordinary skill in the art would have found it obvious to incorporate these materials in the starch-based composition of Niles et al. to predictably modify the properties of the expanded starch based particulate materials with a reasonable expectation of success.
Claims 14-15 and 39 are rejected under 35 U.S.C. 103 as being unpatentable over Vincent et al. (U.S. Pat. No. 10,800,596) in view of Niles et al. (U.S. App. Pub. No. 2023/0348161), further in view of Catchmark et al. (U.S. App. Pub. No. 2022/0298319) (cited in the IDS filed on 05/08/2025) and Dehennau et al. (U.S. Pat. No. 5,703,160).
Vincent in view of Niles et al. is relied upon as described in the rejection of claim 1, above.
Vincent et al. does not disclose the particular materials used for the coloring agent, nucleating agent and blowing agent.
Niles et al. discloses inclusion of coloring agents such as lignin in amounts of 0-5%, nucleating agents such as talc in amount of 0-5%, an elastomeric or thermoplastic polymer in the form of vinyl copolymer in the form of polyethylene, ethylene vinyl acetate (i.e. meeting the limitation of a blowing agent) in amounts of 0-10% and a surfactant. (par. [0060]).
It would have been obvious to one of ordinary skill in the art to include lignin, nucleating agents such as talc and blowing agents in the starch composition of Vincent et al. in view of the teachings of Niles et al.
One of ordinary skill in the art would have found it obvious to incorporate these materials in the starch-based composition of Niles et al. to predictably modify the properties of the expanded starch based particulate materials with a reasonable expectation of success.
Vincent in view of Niles et al. does not teach inclusion of rheology agents or surfactants selected from the materials in claim 14.
Catchmark et al. discloses a method of making insoluble polysaccharide (i.e. starch) based foams by including an anionic and cationic polysaccharide, solvent and plasticizer in the starch composition. (Abstract). Catchmark et al. discloses it is known in the art to include compounds such as carboxymethyl cellulose and xantham gum in starch composite to improve the shape, texture and structure of the composite. (par. [0004]). Catchmark et al. uses these materials as well as guar gum and carrageenan for the same purpose (par. [0074]-[0075]).
It would have been obvious to one of ordinary skill in the art to include carboxmethyl cellulose and xanthum gum (equivalent to the claimed rheology agent and surfactant presently claimed) in the starch pellet composition of Niles et al.
One of ordinary skill in the art would have found it obvious to include these components in view of the known improved properties imparted to starches including these modifiers such as shape, texture and structure of the starch composite, which would be relevant to the applications of Vincent et al. for adjusting the desire shape of the puffed polysaccharide particulates.
Vincent in view of Niles and Catchmark et al. does not disclose the presence of yeast in the starch pellet.
Dehennau et al. discloses thermoformable compositions containing a starchy compound, a biodegradable polyester and a salt of hydroxycarboxylic acid. (Abstract). Dehennau et al. further discloses that it is known in the art to include 0.01 to 10% weight of a culture medium such as yeast extract in with hydrolysable/biodegradable polymers such as lactic, maleic and glycolic acid to improve the biodegradability thereof. (col. 4, lines 6-20).
It would have been obvious to one of ordinary skill in the art to include yeast in the amount disclosed in Dehennau et al. in the starch pellet composition of Niles et al.
One of ordinary skill in the art would have found it obvious to include a yeast extract component in the starch pellets composition disclosed in Vincent et al. for the purpose of improving the biodegradability or the rate of degradation thereof for reducing the environmental impact of the starch pellets.
Regarding claim 15, the contents of each component are disclosed as discussed in the rejection of claim 14, above.
With respect to the content of the carboxymethyl cellulose and xanthan gum, one of ordinary skill in the art would have found it obvious to optimize the relative amounts of these components relative to the starch pellet, balancing for the other components, based on the result effective variable teaching in Catchmark et al. of the components and their interaction with the starch. One of ordinary skill in the art would have found it obvious to balance the contents thereof with the overall optimal mechanical properties of the starch pellets. "Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456 (CCPA 1955). MPEP 2144.05 (II).
Regarding claim 39, the claim is rejected for substantially the same reasons as claims 1, 14 and 15 above.
Claims 36-37 are rejected under 35 U.S.C. 103 as being unpatentable over Vincent et al. (U.S. Pat. No. 10,800,596) in view of Niles et al. (U.S. App. Pub. No. 2023/0348161), further in view of Catchmark et al. (U.S. App. Pub. No. 2022/0298319)
Vincent in view of Niles et al. is relied upon as described in the rejection of claim 1, above.
Regarding claims 36-37, Vincent in view of Niles et al. does not disclose rheology agents or surfactants selected from the materials in claims 36-37
Catchmark et al. discloses a method of making insoluble polysaccharide (i.e. starch) based foams by including an anionic and cationic polysaccharide, solvent and plasticizer in the starch composition. (Abstract). Catchmark et al. discloses it is known in the art to include compounds such as carboxymethyl cellulose and xantham gum in starch composite to improve the shape, texture and structure of the composite. (par. [0004]). Catchmark et al. uses these materials as well as guar gum and carrageenan for the same purpose (par. [0074]-[0075]).
It would have been obvious to one of ordinary skill in the art to include carboxmethyl cellulose and xanthum gum (equivalent to the claimed rheology agent and surfactant presently claimed) in the starch pellet composition of Niles et al.
One of ordinary skill in the art would have found it obvious to include these components in view of the known improved properties imparted to starches including these modifiers such as shape, texture and structure of the starch composite, which would be relevant to the applications of Vincent et al. for adjusting the desire shape of the puffed polysaccharide particulates.
Claim 38 is rejected under 35 U.S.C. 103 as being unpatentable over Vincent et al. (U.S. Pat. No. 10,800,596) in view of Niles et al. (U.S. App. Pub. No. 2023/0348161) and Catchmark et al. (U.S. App. Pub. No. 2022/0298319), further in view of Lohmann et al. (U.S. App. Pub. No. 2019/0202087).
Vincent in view of Niles and Catchmark et al. is relied upon as described in the rejection of claim 38, above.
Vincent in view of Niles and Catchmark et al. does not disclose the inclusion of calcium carbonate and dyes in the puffed polysaccharide particulate.
Lohmann et al. teaches a method for making expanded granular material foamed materials including a polyester material. (Abstract). Lohmann et al. teaches that calcium carbonate and dyes are known in the art to be included in the composition as compounded materials. (par. [0085]-[0087]).
It would have been obvious to one of ordinary skill in the art to include calcium carbonate and a dye in the puffed polysaccharide particulate composition discloses in Vincent et al.
One of ordinary skill in the art would have found it obvious to include calcium carbonate and a dye as they are well-known compounded ingredients for adjusting the aesthetic and physical properties of expandable polymer compositions used for making pellets or other particulate materials and therefore one of ordinary skill in the art would have a reasonable expectation of success in obtaining predictable results by including it within the puffed polysaccharide particulate composition of Vincent.
ANSWERS TO APPLICANT’S ARGUMENTS
Applicant’s arguments in the response filed 12/22/2025 regarding the rejections made of record in the previous office action have been considered but are moot due to the new grounds of rejection.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/ALEXANDRE F FERRE/Primary Examiner, Art Unit 1788 01/09/2025
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