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 .
Claims 1-11 and 19 are withdrawn due to previous rejection requirement.
The previous 112(b) rejection of claims 12, 14, 15, and 17 are withdrawn due to Applicant’s amendments
Claims 12, 14-15, and 17 are pending.
This Office Action is a SECOND Nonfinal.
Claim Analysis
Summary of Claim 12:
A flooring article comprising at least one layer,
said at least one layer comprising a plasticized cellulose ester composition comprising between 45 weight % ("wt%") and 95 wt% at least one cellulose ester;
10 to 30 wt% of a plasticizer system comprising one or more aliphatic plasticizers;
0.25 to 1.0 wt% of and a benzotriazole ultraviolet absorber,
wherein the proportions of each component is based on the total weight of the plasticized cellulose ester composition,
wherein said at least one layer is substantially free of an aromatic plasticizer,
wherein said at least one layer is a calendered film or a calendered sheet,
wherein said at least one layer is a top or wear layer of a multilayer flooring article,
wherein when said at least one layer is formed at a thickness of 20 mils the at least one layer exhibits an ultraviolet transmission of no more than 0.1%, wherein the multilayer article is prepared by lamination.
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 12, 14-15, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Compton et al. (WO 2018/017652 as listed on IDS dated August 4, 2022) in view of Oh et al. (US 20170165864) in further view of Odum et al. (WO 2018057602 as listed on IDS dated January 8, 2026).
Regarding claim 12, Compton et al. disclose a calendered article where a film or sheet comprises a composition comprising 52 wt% to 99.9 wt% of cellulose ester and 0 wt% to 40 wt% of a plasticizer, wherein the film is applied to flooring (claim 1 and 10, page 66), thereby overlapping the claimed range of between 45 and 95% of at least one cellulose ester and 10 to 30 weight% of plasticizer. Furthermore, Compton et al. disclose in the examples with cellulose acetate propionate (CAP) comprise TEG-EH (triethylene glycol bis-ethylhexanoate, see page 11), and triacetin as the plasticizer, thereby reading on aliphatic plasticizer and free of aromatic plasticizers (page 83). Compton et al. does disclose ultraviolet absorbers can be added to the composition (page 66).
However, Compton et al. is silent on the composition comprising a benzotriazole ultraviolet absorber.
Oh et al. teach a transparent coating comprising a cellulose ester and a benzotriazole light stabilizer (claim 5, [0086-0091]). Oh et al. further teach further teaches a composition comprising the amounts 100 parts by weight of the first acrylic polyol resin, about 3 parts by weight to about 20 parts by weight of the cellulose ester, about 0.1 parts by weight to about 20 parts by weight of the light stabilizer, and about 0.1 parts by weight to about 15 parts by weight of the isocyanate-based curing agent (claim 5), equivalent to 0.07 wt% to 16.2 wt% of light stabilizer based on the total composition, thereby overlapping the claimed range. Oh et al. offer the motivation that the light stabilizer prevents surface defects such as discoloration and improves the weather resistance of the coating layer [0087]. Compton et al. is also concerned with weathering resistance and UV resistance (page 66). Therefore, it would have been obvious to one of ordinary skill in the art to add benzotriazole of Oh et al. with the article of Compton et al. with reasonable expectation that the weathering resistance and UV resistance would improve and since benzotriazole is well known in the industry as an ultraviolet absorber.
Compton et al. et al. is silent on if the one layer is a top or wear layer of a multilayer flooring article and if the article is laminated.
Odum et al. teach flooring article comprising a laminated wear layer comprising a cellulose acetate (abstract, [0078-0087]). Compton et al. is also concerned with protective films (page 66). Therefore, it would have been obvious to use the calendered film of Compton et al. in view of Oh et al. as a wear layer as taught by Odum et al. since both are related to cellulose ester films.
Compton et al. is also silent on the ultraviolet transmission of the flooring article as recited in the instant claims.
However, Compton et al. in view of Oh et al. and Odum et al. teach a substantially identical layer. In view of the substantially identical flooring article of Compton et al. in view of Oh et al. and Odum et al., the flooring article of Compton et al. in view of Oh et al. and Odum et al. will possess the claimed properties because color measurement change, total color change, yellowness index change, haze change, and ultraviolet transmission are inherent properties. Because the PTO does not have proper means to conduct experiments, the burden of proof is now shifted to Applicant to show otherwise. (See In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977); In re Fitzgerald, 205 USPQ 594 (CCPA 1980).)
Regarding claim 14-15, Compton et al. are silent on the color measurement change, total color change, yellowness index change, and haze change of the flooring article as recited in the instant claims.
However, Compton et al. in view of Oh et al. and Odum et al. teach a substantially identical layer. In view of the substantially identical flooring article of Compton et al. in view of Oh et al. and Odum et al., the flooring article of Compton et al. in view of Oh et al. and Odum et al. will possess the claimed properties because color measurement change, total color change, yellowness index change, and haze change are inherent properties. Because the PTO does not have proper means to conduct experiments, the burden of proof is now shifted to Applicant to show otherwise. (See In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977); In re Fitzgerald, 205 USPQ 594 (CCPA 1980).)
Regarding claim 17, Compton et al. disclose in the examples with cellulose acetate propionate (CAP) comprise TEG-EH (triethylene glycol bis-ethylhexanoate, see page 11), and triacetin as the plasticizer, thereby reading on aliphatic plasticizer. (page 83)
Response to Arguments
Applicant's arguments filed May 8, 2026 have been fully considered but they are not persuasive. Applicant states “Oh’s system is fundamentally different from the claimed invention as follow: First, Oh’s system is a thermoset solvent-borne coating that crosslinks via urethane bonds formed between the acrylic polyol resin and polyisocyanate resin. Secondly the cellulose ester in Oh is a minor additive present at only 3-20 parts per 100 parts per acrylic polyol resin.”
The examiner acknowledges that Oh et al. teach a thermoset coating which is different than a cellulose ester composition of Compton et al. However, Oh et al. is relied on to teach the benzotriazole UV absorber as an additive for a coating composition. Oh et al. offer the motivation that the light stabilizer prevents surface defects such as discoloration and improves the weather resistance of the coating layer [0087]. Compton et al. is also concerned with weathering resistance and UV resistance (page 66). Therefore, it would have been obvious to one of ordinary skill in the art to add benzotriazole of Oh et al. with the article of Compton et al. with reasonable expectation that the weathering resistance and UV resistance would improve and since benzotriazole is well known in the industry as an ultraviolet absorber.
Applicant states “Oh's working example (Example 1) uses a hindered amine light stabilizer (HALS)-not a benzotriazole-as the light stabilizer. Oh lists HALS, triazine, and benzotriazole generically as alternative light stabilizer types without expressing any preference for benzotriazole or teaching its particular efficacy in any system, much less in a cellulose ester thermoplastic matrix.”
The examiner respectfully disagrees. The Office respectfully disagrees that such a disclosure constitutes a teaching away. "The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain." (In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)).) Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. (MPEP 2123 (II) (citing In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). "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).) Thus, although Oh et al. may disclose a preferred embodiment of the recited compound, such a disclosure does not teach away from the broader disclosure and the teachings of the nonpreferred embodiments.
Applicant states “The "parts per hundred resin" (phr) convention as used in Oh is different than the currently claimed thermoplastic melt system where composition is expressed on a total- weight basis. Oh's Example 1 formulation illustrates this disconnect…”
The examiner is unconvinced. The examiner directs attention to rejection of claim 12 above wherein Oh et al. further teaches a composition comprising the amounts 100 parts by weight of the first acrylic polyol resin, about 3 parts by weight to about 20 parts by weight of the cellulose ester, about 0.1 parts by weight to about 20 parts by weight of the light stabilizer, and about 0.1 parts by weight to about 15 parts by weight of the isocyanate-based curing agent (claim 5). It would have been obvious to one of ordinary skill in the art to convert the concentrations from a parts per resin basis to a total weight basis.
Furthermore, the Office respectfully disagrees that such a disclosure constitutes a teaching away. "The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain." (In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)).) Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. (MPEP 2123 (II) (citing In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). "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).) Thus, although Oh et al. may disclose a preferred embodiment of the recited compound, such a disclosure does not teach away from the broader disclosure and the teachings of the nonpreferred embodiments.
Applicant states “Oh's formulation includes 78.5 parts MEK solvent, constituting approximately 35% of the total wet formulation. This solvent evaporates entirely during the coating and curing process. After solvent removal, approximately 145.4 parts of non-volatile solids remain. The light stabilizer concentration therefore jumps from approximately 5.7% (on a wet basis) to approximately 8.8% (on a dry basis)-representing a ~55% increase in effective concentration solely from solvent departure.”
The examiner respectfully disagrees that such a disclosure constitutes a teaching away. The calculations used by the Applicant appear to be based on Example 1. Furthermore, Oh et al. composition may comprise a solvent [0019], which implies the solvent is optional. "The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain." (In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)).) Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. (MPEP 2123 (II) (citing In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). "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).) Thus, although Oh et al. may disclose a preferred embodiment of the recited compound, such a disclosure does not teach away from the broader disclosure and the teachings of the nonpreferred embodiments.
Applicant states “A loading level that is effective (or ineffective) in Oh's crosslinked acrylic/urethane matrix has no predictive value for a plasticized cellulose ester thermoplastic film.”
The examiner is unconvinced. As rejected above in the rejection for claim 12, benzotriazole is a well known UV absorber and 0.25-1.0 wt% is a common range for most chemical types and applications (see also UV Stabilizers, Table 5, page 281 provided in this Office Action). Without further evidence, the examiner is unconvinced that the benzotriazole UV absorber in the amount claimed is critical.
Applicant states “the claimed invention requires that the cellulose ester layer, when formed at a thickness of 20 mils (approximately 500 µm), exhibits a transmission of no more than 0.1%. This is a dramatically greater path length than Oh’s thin coating layers.”
The examiner disagrees. Oh et al. teach the coating layer may have a thickness of 1 µm to 500 µm [0126], which overlaps with the claimed thickness of the claimed invention. Therefore, the Applicants argument that the claimed cellulose ester layer has a dramatically greater path length than Oh’s coating layer and would therefore exhibit a different transmission is unconvincing since Oh et al. teach a similar thickness.
Applicant states “Compton’s cellulose ester layer is NOT substantially identical to the claimed composition because Compton’s composition lacks benzotriazole.”
The examiner directs attention to the rejection above, wherein the cellulose ester layer of Compton in view of Oh et al. and Odum et al. teaches a substantially identical layer. Compton et al. does not teach the benzotriazole. However, Oh et al. does teach the benzotriazole. Therefore, the cellulose ester layer of Compton et al. in view of Oh et al. and Odum et al. teach a substantially identical layer and will possess the claimed properties because measurement change, total color change, yellowness index change, and haze change are inherent properties. Because the PTO does not have proper means to conduct experiments, the burden of proof is now shifted to Applicant to show otherwise. (See In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977); In re Fitzgerald, 205 USPQ 594 (CCPA 1980).)
Applicant states “Applicant’s experimental data affirmatively demonstrate that the claimed UV transmission and weathering properties do not arise without benzotriazole.”
The examiner is unconvinced. Applicant relies on data present in Tables 2 and 3 of the specification to support its argument that the claimed range is critical. It is not clear from Tables 2 and 3 that the upper range is critical. Applicant has provided no examples above the upper limit to show that the UV absorber is otherwise changed. Thus, the Applicant has not shown the criticality of the lower limit. Simply put, while the claimed ranges may indeed be critical, Applicant has not persuasively shown that is the case.
Furthermore, the data provided in Tables 1, 2, and 3 are not commensurate in scope with the claim. Claim 12 recites at least one cellulose ester, at least one aliphatic plasticizer, and a benzotriazole UV absorber. However, the compositions described in Table 1 only use cellulose acetate propionate, TEG2EH as the aliphatic plasticizer, and Cyasorb 5411 as the benzotriazole UV absorber. There is no evidence that all cellulose esters, aliphatic plasticizers, and benzotriazole UV absorbers would behave in the same manner.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREA WU whose telephone number is (571)272-0342. The examiner can normally be reached M F 8 - 5.
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/ANDREA WU/Examiner, Art Unit 1763
/CATHERINE S BRANCH/Primary Examiner, Art Unit 1763
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