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 .
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on January 8, 2025 has been entered.
Claims 1-11 and 19 are withdrawn due to previous rejection requirement.
The previous objection of claim 12 is withdrawn due to Applicant’s amendments
Claims 12, 14-15, and 17 are pending.
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.
Claims 12, 14, 15, and 17 are 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 12 recites “a plasticized cellulose ester composition comprising between 45% and 95% of at least one cellulose ester” which causes confusion. What is the basis for the percentage? The examiner will interpret the percentage as weight percent.
Claims 14, 15, and 17 are rejected for depending on claim 12.
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% and 95% at least one cellulose ester;
10 to 30 weight % ("wt%") of a plasticizer system comprising one or more aliphatic plasticizers;
0.25 to 1.0 wt% of and a benzotriazole ultraviolet absorber.
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 the amount of benzotriazole light stabilizer is 0.1 to 20 parts by weight based on 100 parts by weight of the first acrylic polyol resin (claim 5), equivalent to 0.07 wt% to 16.2 wt% 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. as a wear layer as taught by Odum et al. since both are related to cellulose acetate 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. disclose a substantially identical layer. In view of the substantially identical flooring article of Compton et al., the flooring article of Compton 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. disclose a substantially identical layer. In view of the substantially identical flooring article of Compton et al., the flooring article of Compton 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, see page 5-7, filed January 8, 2026, with respect to the rejection(s) of claims 12 and 17 under 35 USC 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made under 35 U.S.C. 103 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).
As noted above, the Examiner has withdrawn the rejections of claims 12 and 17 as obvious over Compton et al. (WO 2018/017652 as listed on IDS dated August 4, 2022) in view of Zannucci (US 4269629 as listed on IDS dated August 4,2022) in further view of Witman (US 4983466). Although the Examiner believes that these rejections were proper and could be maintained, an additional search has produced a more relevant prior art reference. Because prior art rejections should ordinarily be confined strictly to the best available prior art (see MPEP 706.02), the Examiner has withdrawn the previous rejections (though still believed to be proper) in favor of rejections based on the newly-discovered best available prior art.
Applicant states “Zinnucci teaches away from using a benzotriazole as a single component, but teaches a three component combination of resorcinol, monobenzoate, Tinuvin 326, and Good-rite 3114.”
In response, the examiner directs attention to instant claim 12 which recites “a plasticized cellulose ester composition comprising…. A benzotriazole ultraviolet absorber.” There is no recitation in the instant claim where benzotriazole must be used alone. Furthermore, Oh et al. teach the benzotriazole ultraviolet absorber may be used alone [0087], thereby reading on the instant claim.
Applicant states “Witman does not provide the teaching to use a cellulose ester as a wear layer.”
In response, the examiner directs attention to the rejection for instant claim 12, wherein Odum et al. teach a wear layer comprising cellulose acetate, thereby reading on the instant claim. Furthermore, the examiner directs attention to instant claim 12, which does not recite the cellulose ester may not be crosslinked.
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