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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address; COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`17/048,380
`
`10/16/2020
`
`Ignatius A. Kadoma
`
`80615US006
`
`9173
`
`3M INNOVATIVE PROPERTIES COMPANY
`PO BOX 33427
`ST. PAUL, MN 55133-3427
`
`ZHANG, MICHAEL N
`
`ART UNIT
`
`1781
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`04/01/2022
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`
`LegalUSDocketing@mmm.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`Application No.
`Applicant(s)
`17/048 380
`Kadoma etal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`MICHAEL ZHANG
`1781
`Yes
`
`
`
`-- The MAILING DATEofthis communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom the mailing
`date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHSfrom the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133}.
`Any reply received by the Office later than three months after the mailing date of this communication, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`
`
`1) Responsive to communication(s) filed on 16 March 2022.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`2a)¥) This action is FINAL.
`2b) (J This action is non-final.
`3)02 An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4\0) Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`Disposition of Claims*
`1-15 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`C] Claim(s)__ is/are allowed.
`Claim(s) 1-15 is/are rejected.
`(1 Claim(s)__is/are objectedto.
`C} Claim(s)
`are subjectto restriction and/or election requirement
`* If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http://www.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) ) ) )
`
`Application Papers
`10) The specification is objected to by the Examiner.
`11)0) The drawing(s) filedon__ is/are: a)(J accepted or b)() objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12)1) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`c)Z None ofthe:
`b)() Some**
`a)C All
`1.2 Certified copies of the priority documents have been received.
`2.1.) Certified copies of the priority documents have been received in Application No.
`3.1.) Copies of the certified copies of the priority documents have been receivedin this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`* See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1) ([] Notice of References Cited (PTO-892)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`
`3) (J Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`
`4)
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20220328
`
`

`

`Application/Control Number: 17/048,380
`Art Unit: 1781
`
`Page 2
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`DETAILED ACTION
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`Notice of Pre-AlA or AIA Status
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`1.
`
`The present application, filed on or after March 16, 2013, is being examined under the
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`first inventor to file provisions of the AIA.
`
`Claim Rejections - 35 USC § 103
`
`2.
`
`Claims 1-7 and 15 are rejected under 35 U.S.C. as being unpatentable over Wongetal.
`
`(US 2015/0337094).
`
`3.
`
`Regarding Claim 1, Wong teaches a biodegradable layered composite or mulch film
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`(Abstract; Paragraph 0047) comprising a first nonwoven biodegradable layer having a first and
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`second major surface (Paragraph 0025) comprising a biodegradable polymeric melt-blown
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`fibers (Paragraph 0024, 0031) with a filler of starch or calcium carbonate, which would qualify
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`as particles enmeshed in the biodegradable fibers as the it would obvious to one with ordinary
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`skill in the art that the particles of calcium carbonate would be physically held by the fibers,
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`(Paragraph 0038) and a biodegradable polymer film on a portion of the first major surface of
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`the first nonwoven biodegradable layer. (Paragraph 0026).
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`4.
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`Regarding Claim 2, Wong teaches the layers can fully cover each other. (Examples;
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`Paragraph 0038-0054). Thus, this overlaps the claimed range ofat least 25%.
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`5.
`
`Regarding Claim 3 and 4, Wongteaches the film and fibers comprises polylactide or
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`polybutylene succinate (Paragraph 0054).
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`6.
`
`Regarding Claim 5, Wongteaches the filler can be calcium carbonate, which can be
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`considered agriculture waste. Calcium carbonateis used as feed additive and fertilizer.
`
`(Paragraph 0038)
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`

`

`Application/Control Number: 17/048,380
`Art Unit: 1781
`
`Page 3
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`7.
`
`Regarding Claim 6, Wongteachersthe filler can comprise 5 to 60% of the composite
`
`layers, which means the compositeitself has the same weightrage. (Paragraph 0038-0040).
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`This overlaps the claimed rangeof 1 to 85 wt%.
`
`8.
`
`Regarding Claim 7, Wong teaches the nonwoven fabric can comprise SMS structure or
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`spunbound/meltblown/spunbound (Paragraph 0024). This means a second nonwoven
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`biodegradable layer comprising spunbound fibers are on the second major surface of the first
`
`nonwoven biodegradable layer.
`
`
`
`9. Regarding Claim 15, Wong teaches this types of material can be stored asaroll.
`
`(Paragraph 0061). Thus, it would have been obvious to stores the composite as a roll.
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`10.
`
`Claim 2 and 11-14 are rejected under 35 U.S.C. 103 for being unpatentable over Wong
`
`in view of Merill et al. (US 3,080,681).
`
`11.
`
`Regarding Claim 2, 11, and 13, Wong teaches the composite has a length and width, as
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`is a three-dimensional object.
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`12.
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`Wong does notspecifically teach the claimed coverage range, the film having openings
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`or the film is in the form of sections along the length of the biodegradable layer with areas
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`between sections free of the film.
`
`13.
`
`Merill teaches a weed barrier sheet, akin to a mulching sheet, comprising a nonwoven
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`layer and a film layer on top. (Fig. 1-4, 6; Abstract; Claim 1 of Merrill). Merill teaches the film has
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`a plurality of openings/film being in sections along the length of the composite with film-free
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`sections on the composite and the film still covers at least 25% of the nonwoven. (Fig 1-4, 6).
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`Merill teaches this allows for seeds to be placed in a specific order within the nonwoven layer
`
`

`

`Application/Control Number: 17/048,380
`Art Unit: 1781
`
`Page 4
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`and be fully protected by weeds, which allows for more production . (Column 1- 2). Thus,it
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`would have been obvious to one with ordinaryskill in the art to add openingsinto the film of
`
`Wong toallow for easier and better production of desired plants.
`
`14.
`
`Regarding Claim 12 and 14, Wong and Merill do not specifically teach the opening area
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`or the spacing (openings) in the film. However, Merill teaches these openings/spacing between
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`sections are present to place seeds to grow plants. (Column 1-2; Fig. 4). One with ordinaryskill
`
`in the art in gardening/planting knowsthat plants have optimal spacing requirements between
`
`seeds to ensure proper growth. In other words, the opening area and spacing offilm sections
`
`could have been optimized through routine experimentation to a person with ordinaryskill in
`
`the art. Since the seed spacing is an important part of the design of a mulching sheet, the
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`calculation of a workable or optimum opening area or spacing, a results effective variable, to
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`obtain a mulch sheet that could grow certain plants, is well within the skill of one with ordinary
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`skill in the art. (MPEP §2144.05,IIB).
`
`15.
`
`Thus, it would have been obvious to one with ordinaryskill in the art to reach the
`
`claimed opening area and section spacing ranges in the claimed invention, as taught by Merrill.
`
`16.
`
`Claim 8 is rejected under 35 U.S.C. 103 for being unpatentable over Wongin view of
`
`Labbeet al. (US 6,401,390)
`
`17.
`
`18.
`
`Regarding Claim 8, Wong does not teach the basis weight of the composite.
`
`Labbe teaches a mulching sheet (Abstract) comprising a biodegradable fiber material
`
`and a biodegradable film coated on the fiber material. (Claim 1 of Labbe). Labbe teaches the
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`composite could have a basis weight of 50-150 g/m2. (Claim 10 of Labbe). This overlaps the
`
`

`

`Application/Control Number: 17/048,380
`Art Unit: 1781
`
`Page 5
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`claimed range of 60 to 300 g/m2. Labbe teaches the basis weightis directly related to the
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`biodegradability (lifetime) of the film. (Column 2, Lines 27-35). Thus, it would have been
`
`obvious to one with ordinaryskill in the art at the time of invention to use the claimed range
`
`taught by Labbe for the composite and optimize the basis weight within the claimed range
`
`depending on how long the mulching sheet is supposed to last outdoors.
`
`19.
`
`Claim 9 is rejected under 35 U.S.C. 103 for being unpatentable over Wongin view of
`
`Ehretet al. (US 5,783,504).
`
`20.
`
`Regarding Claim 9, Wong does notspecifically teach the thickness of the nonwoven
`
`layer.
`
`21.
`
`Ehret teaches a mulch sheet formed of a nonwoven/film biodegradable polymer
`
`composite (Title; Abstract). Ehret teaches the nonwoven portion should havethickness of 0.01
`
`to 0.10 mm. (Column 6, Lines 25-31). This overlaps the claimed range of 10 to 3000 microns.
`
`Ehret teaches the thickness can be adjusted depending the lifetime of the film. Thus, it would
`
`have been obvious to one with ordinaryskill in the art at the time of invention to use the
`
`claimed range taught by Ehret for the nonwoven and optimize the thickness within the claimed
`
`range depending on how long the mulching sheet is supposed to last outdoors.
`
`22.
`
`Claim 10 is rejected under 35 U.S.C. 103 for being unpatentable over Wongin view of
`
`Spittle (US 6,360,478).
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`23.
`
`Regarding Claim 10, Wong does not teach the moisture uptake of the composite.
`
`

`

`Application/Control Number: 17/048,380
`Art Unit: 1781
`
`Page 6
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`24.
`
`Spittle teaches biodegradable mulch (Abstract), where absorbentparticles are added to
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`the mulch. (Column 2). Spittle teaches controlling water absorption allows for even hydration
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`to the seeds planted in the mulch. (Column 2). Thus, it would have been obvious to one with
`
`ordinary skill in the art to adjust the moisture uptake of the composite to reach a desired
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`moisture level to maximize hydration for the seeds that are being planted within the mulch,
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`including those ranges currently claimed.
`
`Response to Arguments
`
`Applicant’s arguments have befully considered.
`
`Applicant argues a different definition for enmeshed and that Wong does teach the
`
`25.
`
`26.
`
`American Heritage Dictionary definition of enmeshed. This argument is not found unpersuasive.
`
`Wong teaches the filler would be physically on the fibers, as discussed above. Applicant defines
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`enmeshed in the instant Specification as “particles that are dispersed and physically held in the
`
`fibers of a nonwoven biodegradable layer.” (Paragraph 0011 of PGPub). An applicantis entitled
`
`to be their own lexicographer and may rebut the presumption that claim terms are to be given
`
`their ordinary and customary meaning byclearly setting forth a definition of the term thatis
`
`different from its ordinary and customary meaning(s) in the specification at the time offiling.
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`See /n re Paulsen, 30 F.3d 1475, 1480, 31 USPQ2d 1671, 1674 (Fed. Cir. 1994). Here, Applicant
`
`has specifically re-defined enmeshedin the initially filed Application and Wong teaches the
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`fibers are physically held onto the fibers. Therefore, the particles in the fibers taught by Wong
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`meets the definition of “enmeshed.”
`
`27.
`
`The remaining arguments have been fully considered, but found unpersuasive as Wong
`
`teaches the independent claim.
`
`

`

`Application/Control Number: 17/048,380
`Art Unit: 1781
`
`28.
`
`The rejections are maintained.
`
`Conclusion
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`Page 7
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`THIS ACTION IS MADE FINAL. 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 eventa first reply is filed within TWO MONTHS of
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`the mailing date of this final action and the advisory action is not mailed until after the end of
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`the THREE-MONTH shortened statutory period, then the shortened statutory period will expire
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`on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a)
`
`will be calculated from the mailing date of the advisory action.
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`In no event, however,will the
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`statutory period for reply expire later than SIX MONTHS from the mailing date of this final
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`action.
`
`Correspondence
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to MICHAEL ZHANG whosetelephone number is (571)270-0358.
`
`The examiner can normally be reached Monday through Friday: 7:00am-4:00pm.
`
`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.
`
`

`

`Application/Control Number: 17/048,380
`Art Unit: 1781
`
`Page 8
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
`
`supervisor, FRANK VINEIS can be reached on (571)270-1547. The fax phone number for the
`
`organization wherethis 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:
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`
`Customer Service Representative, call 800-786-9199 (IN USA OR CANADA)or 571-272-1000.
`
`/Michael Zhang/
`Primary Examiner, Art Unit 1781
`
`