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 1-5 and 9-13 are rejected under 35 U.S.C. 103 as being unpatentable over Feng et al. (US 20190264007) in view of Thomas et al. (Composite Materials, Ullmann’s Encyclopedia of Industrial Chemistry, 2016).
Considering Claims 1, 2, 4, 5, 11, and 13: Feng et al. teaches a composition comprising a cellulose ester (¶0019-23); an impact modifier that is a that is a thermoplastic elastomer that is a core-shell impact modifier with an alkyl methacrylate on the surface of the core (¶0047-59); a glass fiber (¶0013) and a plasticizer (¶0019) that can be a vegetable oil/fatty acid ester compound (¶0097).
Feng et al. teaches the cellulose ester as being a cellulose acetate with a degree of substitution of about 2 (¶0024). Feng et al. teaches the amount of impact modifier as being 1 to 30 weight percent (¶0078) of the combined weight of the cellulose ester and impact modifier.
Feng et al. teaches the impact modifier as having a particle size of 10 to 2000 nm (Claim 13). This encompasses 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 selected a value within the claimed range from the range of Feng et al., and the motivation to do so would have been, as Feng et al. suggests, it would be expected to provide suitable impact resistance to the composition.
Feng et al. does not teach the length, diameter, or amount of glass fibers. However, Thomas et al. teaches that the tensile strength of a glass fiber composite is controlled by the length of the fiber, diameter, and volume of fiber in the composite (pg. 33). As such, the length and amount of glass fibers is a result effective variable affecting the tensile strength of the composite. It would have been obvious to a person having ordinary skill in the art to have optimized the length and amount of glass fibers, and by extension the tensile strength, through routine experimentation, and the motivation to do so would have been, to provide a composite with a tensile strength sufficient for automotive applications.
Feng et al. is silent towards the tensile elastic modulus of the article. However, as shown by Thomas et al., the tensile elastic modulus is a result effective variable controlled by the modulus of the matrix, the modulus of the fiber, the volume of fibers, and the fiber length and diameter (pg. 33). It would have been obvious to a person having ordinary skill in the art to have optimized the tensile elastic modulus through routine experimentation, and the motivation to do so would have been, to provide a composite for use in applications requiring high modulus.
Considering Claim 3: Feng et al. teaches the composition as comprising glass fibers, which contain hydroxyl groups on the surface (¶0013).
Considering Claims 9 and 10: Feng et al. teaches the composition as being used in injection molding (¶0066).
Considering Claim 12: Feng et al. teaches the article as being an electronic device housing, interior part for an automobile, dishware, beverage bottles, film or sheet (¶0121).
Claims 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Feng et al. (US 20190264007) in view of Thomas et al. (Composite Materials, Ullmann’s Encyclopedia of Industrial Chemistry, 2016) as applied to claim 1 above, and further in view of Bun et al. (JP 2012-219112).
Considering Claims 6 and 7: Feng et al. teaches the composition of claim 1 as shown above.
Feng et al. does not teach adding a cardanol compound to the composition. However, Bun et al. teaches adding a cardanol derivative (¶0016) to a cellulose ester composition (¶0016; 0031). Bun et al. teaches the cardanol derivatives as being small molecules having a molecular mass of less than 500 g/mol (¶0047). Feng et al. and Bun et al. are analogous art as they are concerned with the same field of endeavor, namely cellulose ester compositions. It would have been obvious to a person having ordinary skill in the art to have added the cardanol compound of Bun et al. to the composition of Feng et al., and the motivation to do so would have been, as Bun et al. suggests, to improve the strength and the water resistance of the resin (¶0021).
Considering Claim 8: Bun et al. teaches the ratio of cardanol to cellulose ester as being greater than 0.1 (¶0067). 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 having ordinary skill in the art to have chosen a ratio within the overlapping portion of the claimed range, and the motivation to do so would have been, as Bun et al. suggests, to provide an increase in strength and toughness (¶0068).
Response to Arguments
Applicant's arguments filed January 8, 2026 have been fully considered but they are not persuasive, because:
A) In response to applicant's argument that Thomas et al. does not teach injection molding, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
B) The applicant’s argument that Thomas et al. is only directed towards two phase systems rather than three phase systems is not persuasive. Thomas et al. teaches the general guidelines for altering the properties of the composite through controlling the properties by controlling the modulus of the matrix, the modulus of the fiber, the volume of fibers, and the fiber length and diameter (pg. 33). Therefore, there would be a reasonable expectation of success in optimizing the properties through controlling the properties of the components.
C) The applicant’s argument of unexpected results is not persuasive. A showing of unexpected results must compare the claimed subject matter with the closest prior art to be effective to rebut a prima facie case of obviousness. In re Burckel, 592 F.2d 1175, 201 USPQ 67 (CCPA 1979). "A comparison of the claimed invention with the disclosure of each cited reference to determine the number of claim limitations in common with each reference, bearing in mind the relative importance of particular limitations, will usually yield the closest single prior art reference." In re Merchant, 575 F.2d 865, 868, 197 USPQ 785, 787 (CCPA 1978) (emphasis in original). The closest prior art, Feng et al. teaches a composition comprising a cellulose ester (¶0019-23); an impact modifier that is a that is a thermoplastic elastomer that is a core-shell impact modifier with an alkyl methacrylate on the surface of the core (¶0047-59); a glass fiber (¶0013) and a plasticizer (¶0019) that can be a vegetable oil/fatty acid ester compound (¶0097). The comparative examples lack the core-shell imparct modifier used in Feng et al., and thus are not analogous to the closest prior art.
"[A]ppellants have the burden of explaining the data in any declaration they proffer as evidence of non-obviousness." Ex parte Ishizaka, 24 USPQ2d 1621, 1624 (Bd. Pat. App. & Inter. 1992). See MPEP 716.02(b). The applicant has not provided data analogous to the closest prior art, nor have they provided technical reasoning as to why a person having ordinary skill in the art would expect the result shown to apply across the claimed range.
D) The applicant’s argument that Thomas et al. would lead a person of ordinary skill in the art to ranges outside the claimed range is not persuasive. Thomas et al. teaches that the tensile strength and the tensile elastic modulus are affected by the modulus of the matrix, the modulus of the fiber, the volume of fibers, and the fiber length and diameter (pg. 33). "[W]here 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, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) (Claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions.).
The applicant has not established criticality of the claimed range, or provided any evidence to show that finding the claimed values is beyond routine experimentation. “A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use." In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994). See MPEP § 2123. Even if the claimed values are not the optimum value, the relationship between the variables is well known and obvious based on the teaching of Thomas et al.
Conclusion
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 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.
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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/LIAM J HEINCER/Primary Examiner, Art Unit 1767