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 .
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 November 14, 2025 has been entered.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-4, 6-12, and 14-19 are rejected under 35 U.S.C. 103 as being unpatentable over Longdon (US Patent No. 9,062,186 B2) in view of Bonnaud (GB 2489491 A), Tindall (US 20060267243 A1), and Stern (US 2,280,863).
Regarding claim 1, Longdon teaches a bio-resin composition (Abstract), comprising:
Cellulose acetate (col. 1, lines 54-56)
A biodegradable secondary polymer (col. 1, lines 54-56), which reads on the “biodegradable polymer” from the list of the claimed “additional components”
A plasticizer (col. 4, lines 22-26)
Longdon teaches that the composition is both melt processable (col. 4, lines 2-5) and biodegradable according to ASTM D6400 (col. 5, lines 27-29). Additionally, Longdon teaches that the plasticizer is included in amounts preferably ranging from 5% to 25% by weight (col. 4, lines 22-26), which encompasses the claimed range of “10 to 25 wt%,” establishing a prima facie case of obviousness. Finally, Longdon teaches that the ratio of cellulose acetate to the biodegradable secondary polymer is at least 10:1 (Abstract). A 10:1 ratio of the two materials comprises 9.1% of the biodegradable secondary polymer (1 part out of 11 total parts of the two materials) and 90.9% of the cellulose acetate (10 parts out of 11 total parts of the two material) with respect to the total combined amounts of only those two components, which falls within the claimed range of “0 to less than 50 wt%,” establishing a prima facie case of obviousness.
Longdon teaches that the cellulose acetate may have a degree of substitution (DS) in the range of 2.0 to 3.0 (col. 2, lines 40-41), which overlaps the claimed range of “1.0 to 2.5,” establishing a prima facie case of obviousness.
Longdon elaborates that the molecular weight of the cellulose acetate can have an impact on the temperature performance of the composition (col. 4, lines 45-49), but differs from claim 1 because it is silent with regard to the number average molecular weight of the cellulose acetate being between 10,000 and 90,000.
In the same field of endeavor, Bonnaud teaches compositions containing cellulose acetate with a degree of substitution of greater than 2.1 and triacetin plasticizer (Abstract). Bonnaud teaches that compositions containing cellulose acetate whose molecular weight ranges from 10,000 to 500,000 is useful because, when applied in combination with a plasticizer, the resulting product is easy to process and mold (page 3, lines 24-28). Therefore, it would have been obvious to one of ordinary skill in the art to select cellulose acetate polymers with molecular weights between 10,000 and 500,000 for the purpose of crafting a plasticized formulation with favorable processability. This range encompasses the claimed range of “10,000 to less than 55,000,” establishing a prima facie case of obviousness.
Longdon teaches the incorporation of a non-limiting variety of additives including stabilizers (col. 3, lines 62-67), but further differs from claim 1 because it is silent with regard to the incorporation of the claimed amount of stabilizer, and because it is silent with regard to the particularly claimed stabilizer components and their claimed amounts.
In the same field of endeavor, Tindall teaches methods of compounding cellulose esters (including cellulose acetate) with functional additives (Abstract), and specifically teaches the use of stabilizers ([0033]). Tindall additionally teaches that more than one functional additive may be incorporated ([0033]), and teaches the use of a secondary antioxidant (phosphite, Example 6, [0077]). Further, Tindall teaches the incorporation of antioxidants such as Irganox-brand materials ([0036]), which read on the claimed “primary antioxidants” because the instant specification states a listing of Irganox compounds which are defined as primary antioxidants ([0027]). It is prima facie obvious to select materials based on their art recognized suitability for an intended use (see MPEP 2144.07). Therefore, it would have been obvious to one having ordinary skill in the art at the time of filing to incorporate a combination of stabilizers including Irganox-based materials into the formulation of Longdon, as Tindall recognizes a combination of stabilizers and Irganox-based materials as suitable stabilizers for cellulose acetate compositions. Tindall exemplifies the use of 2g of phosphite stabilizer per 400g of cellulose acetate ([0077]), equivalent to 0.5 wt% of phosphate stabilizer based on the weight of cellulose acetate. Longdon teaches the incorporation of up to 85 wt% of cellulose acetate within the composition (abstract), and thus the above-identified combination would comprise an addition of between 0 and 0.425 wt% of Irganox stabilizer, which encompasses the claimed range of “0.05 to 0.3 wt%,” establishing a prima facie case of obviousness.
Longdon as modified by Tindall teaches the incorporation of a combination of functional additives including stabilizers, as described above, but further differs from claim 1 because it is silent with regard to the additional additive comprising citric acid in the claimed amounts.
In the same field of endeavor, Stern teaches a colored cellulose acetate molding composition containing (p. 1, left column, lines 1-3 and p. 1, right column, lines 11-13), containing an acid which combines with impurities in the cellulose acetate to increase color stability and improve reproducibility. (p. 1, right column, lines 13-29). Stern teaches that the acid is added in amounts ranging from 0.002 to 0.1 % by weight based on the cellulose acetate (p. 1, right column, lines 30-32). Meanwhile, Longdon teaches a molding composition which may optionally contain a colorant (col. 4, lines 6-9 and col. 3, lines 62-67). It would therefore have been obvious to one of ordinary skill in the art at the time of filing to incorporate between 0.002 and 0.1 wt% of citric acid (with respect to the weight of cellulose acetate) for the purpose of color-stabilizing the formulation.
Longdon teaches the incorporation of up to 85 wt% of cellulose acetate within the composition (abstract), and thus the above-identified combination would comprise an addition of between 0 and 0.085 wt% of citric acid with respect to the total weight of the composition, which overlaps the claimed range of “from 0.05 to 0.2 wt%,” establishing a prima facie case of obviousness.
Together, the amounts of Irganox (between 0 and 0.425 wt%) and citric acid (between 0 and 0.085 wt%) constitute between about 0 and about 0.51 wt% of the modified composition, which overlaps the claimed range of “from 0.01 to 5 wt%,” establishing a prima facie case of obviousness.
Longdon teaches that the formulation may be used to produce a film (col. 4, lines 6-10), but does not teach the disintegration of the composition according to the bespoke Disintegration Test Protocol referenced in the claim and found in the instant specification at [0259]. Nevertheless, the formulation of Longdon as modified and as applied above results in a film product that is structurally identical to the claimed composition, produced using all of the same components and the required amounts, which shares an identical physical property in biodegradability. Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed art and prior art products are identical or substantially identical in structure or composition, a prima facie case of anticipation has been established. See MPEP 2112.01. The claimed disintegration performance will therefore necessarily be present in Longdon as modified and as applied to claim 1 above.
Regarding claim 2, Longdon teaches that the cellulose acetate may have a degree of substitution (DS) in the range of 2.0 to 3.0 (col. 2, lines 40-41), which overlaps the claimed range of “1.5 to 2.5,” establishing a prima facie case of obviousness.
Regarding claim 3, as described above, Longdon as modified by Bonnaud teaches cellulose acetates having molecular weights ranging from 10,000 to 500,000 which encompasses the claimed range, establishing a prima facie case of obviousness.
Regarding claim 4, Longdon teaches that the plasticizer is included in amounts preferably ranging from 5% to 25% by weight (col. 4, lines 22-26), which encompasses the claimed range of “15 to 25 wt%,” establishing a prima facie case of obviousness. Longdon also exemplifies the use of triacetin as a plasticizer within the formulation (col. 4, lines 16-17), which reads on the claimed “food-compliant plasticizer” because the instant Specification states that triacetin is a food-compliant plasticizer (see instant Specification at [0021]).
Regarding claim 6, Longdon teaches that the plasticizer is included in amounts preferably ranging from 5% to 25% by weight (col. 4, lines 22-26), which encompasses the claimed range of “15 to 25 wt%,” establishing a prima facie case of obviousness. Longdon further teaches the incorporation of a filler (col. 3, lines 62-67), and teaches that the filler may be added in amounts preferably ranging from 5% to 40% (col. 4, lines 28-32), which overlaps the claimed range of “1 to 60 wt%,” establishing a prima facie case of obviousness.
Regarding claim 7, Longdon teaches the use of triacetin (col. 4, lines 17-18).
Regarding claim 8, Longdon teaches the use of calcium carbonate as a filler (col. 4, lines 27-28), which reads on the claimed “mineral and inorganic fillers.”
Regarding claim 9, Longdon teaches the use of calcium carbonate as a filler (col. 4, lines 27-28).
Regarding claim 10, Longdon teaches that the ratio of cellulose acetate to the biodegradable secondary polymer is at least 10:1 (Abstract). A 10:1 ratio of the two materials comprises 9.1% of the biodegradable secondary polymer (1 part out of 11 total parts of the two materials) and 90.9% of the cellulose acetate (10 parts out of 11 total parts of the two material) with respect to the total combined amounts of only those two components, which anticipates the claimed range of “less than 50 wt%.”
Regarding claim 11, Longdon teaches that the biodegradable polymer may be Polyhydroxybutyric acid (PHA) and/or Poly(hydroxybutyrate-co-hydroxyvalerate) (PHBV), which are polyhydroxyalkanoates (PHAs), and poly(caprolactone) (PCL) (col. 2, lines 15-18).
Regarding claim 12, as described above, Tindall teaches methods of compounding cellulose esters (including cellulose acetate) with functional additives (Abstract). Tindall further teaches that fragrances are suitable functional additives which may have a range of functions including odor masking, odor neutralization, and repellency ([0033]). Therefore, it would have been obvious to one of ordinary skill in the art to incorporate a fragrance into the formulation of Longdon for the purpose of masking or reducing odors, or for imparting a repellency characteristic to the formulation.
Tindall further teaches an example formulation which contains vanillin as a fragrance (Example 12, [0084]). Vanillin is incorporated at 2.0g with respect to 200g of cellulose triacetate, which equates to a 0.1% loading, and which therefore falls within the claimed range of “0.001 to 1 wt%,” establishing a prima facie case of obviousness. The example also includes 200g of acetone, however this acetone is removed in a subsequent drying step, leaving behind the as-described vanilla-smelling dry product. Further, while the example includes cellulose triacetate, Tindall specifies that cellulose triacetate is not required, and that the inventive products may include cellulose acetate with a lower degree of substitution consistent with the claimed formulation ([0010]).
Regarding claim 14, Longdon teaches all of the limitations of claim 1 as described above. Longdon teaches that the formulation may be used to produce a film (col. 4, lines 6-10), but does not teach the disintegration of the composition according to the bespoke Disintegration Test Protocol referenced in the claim and found in the instant specification at [0259]. Nevertheless, the formulation of Longdon as applied to claim 1 results in a film product that is structurally identical to the claimed composition, produced using all of the same components and the required amounts, which shares an identical physical property in biodegradability. Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed art and prior art products are identical or substantially identical in structure or composition, a prima facie case of anticipation has been established. See MPEP 2112.01. The claimed disintegration performance will therefore necessarily be present in Longdon as applied to claim 1 above.
Regarding claim 15, Longdon teaches molded articles of the inventive composition (col. 2, line 29).
Regarding claim 16, Longdon teaches the use of the formula for making food trays and cup lids for hot and cold beverages (col. 6, lines 5-7), as well as biodegradable cutlery and tableware (col. 5, lines 60-64), all of which read on the claimed “single-use food contact article.”
Regarding claim 17, Longdon teaches that the formula may be used to make films (col. 4, line 9), and teaches that the formulation is biodegradable (col. 5, lines 27-29). The films of Longdon therefore read on the claimed “horticultural article” because the instant specification clarifies that mulch films are horticultural items ([0089]). The films of Longdon may be used as horticultural films because they are films that can biodegrade. Furthermore, Longdon teaches that the formulation may be used to form biodegradable bottles and tubes (col. 6, line 8), which would be capable of behaving as seed pots (as listed as a horticultural item in the instant specification ([0089]).
Regarding claims 18-19, Longdon teaches all of the limitations of claim 15 as described above. Longdon teaches that the composition is compostable according to ASTM D6400 (which contains home compostability standards), but differs from claims 18-19 because it is silent with regard to the specifically claimed compostability and non-persistence requirements. Nevertheless, the formulation of Longdon as applied to claim 15 results in a molded product that is structurally identical to the claimed composition, produced using all of the same components and the required amounts, which shares an identical physical property in biodegradability. Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed art and prior art products are identical or substantially identical in structure or composition, a prima facie case of anticipation has been established. See MPEP 2112.01. The claimed compostability and non-persistence will therefore necessarily be present in Longdon as applied to claim 15 above.
Claims 5, 13, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Longdon (US Patent No. 9,062,186 B2) in view Bonnaud (GB 2489491 A), Tindall (US 20060267243 A1), and Stern (US 2,280,863), and further in view of Aranishi (US 2004/0030043 A1).
Regarding claim 5, Longdon teaches that the plasticizer is included in amounts preferably ranging from 5% to 25% by weight (col. 4, lines 22-26), which encompasses the claimed range of “17 to 23 wt%,” establishing a prima facie case of obviousness. Longdon further teaches that the plasticizer may be polyethylene glycol (col. 4, line 20).
Longdon differs from claim 5 because it is silent with regard to the polyethylene glycol having the claimed molecular weight range, and is silent with regard to the claimed additional component/additive chosen from the claimed list.
In the same field of endeavor, Aranishi teaches a thermoplastic cellulose derivative (Abstract), preferably formed from cellulose acetate ([0036]), including a plasticizer which is specified as any plasticizer known for use for cellulose esters with a heating loss of less than 5 wt% at 200°C ([0046]), preferably including polyethylene glycol with a weight average molecular weight ranging from 350 to 20,000 ([0096]) and particularly exemplified by a polyethylene glycol with a molecular weight of 400 ([0154]), which falls within the claimed range of “300 to 550,” establishing a prima facie case of obviousness. It is prima facie obvious to substitute equivalents known in the art as suitable for the same purpose. See MPEP 2144.06. Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to incorporate the cellulose acetate with a molecular weight of 400 daltons into the formulation of Longdon as taught by Aranishi, as Aranishi recognizes it as a suitable plasticizer for cellulose esters.
Furthermore, Aranishi teaches the incorporation of reactive plasticizers, useful for the plasticization of the inventive polymer without the drawback of evaporation typical of non-reactive plasticizers ([0046]), and teaches the use of epoxidized soybean oil ([0052]). Therefore, it would have been obvious to one having ordinary skill in the art to incorporate the epoxidized soybean oil plasticizer taught by Aranishi into the formulation of Longdon for the purpose of plasticizing the polymer matrix while avoiding undesirable evaporation of the plasticizer.
Regarding claim 13, Aranishi teaches that the plasticizers within the inventive formulation (which includes epoxidized soybean oil, as described above), may be included in amounts ranging from 1 to 30 wt% ([0014]), which overlaps the claimed range of “0.1 to 1 wt%,” establishing a prima facie case of obviousness.
Regarding claim 20, as described in the rejection of claim 1, above, Stern teaches a colored cellulose acetate molding composition containing (p. 1, left column, lines 1-3 and p. 1, right column, lines 11-13), containing an acid which combines with impurities in the cellulose acetate to increase color stability and improve reproducibility. (p. 1, right column, lines 13-29). Stern teaches that the acid is added in amounts ranging from 0.002 to 0.1 % by weight based on the cellulose acetate (p. 1, right column, lines 30-32). Meanwhile, Longdon teaches a molding composition which may optionally contain a colorant (col. 4, lines 6-9 and col. 3, lines 62-67). It would therefore have been obvious to one of ordinary skill in the art at the time of filing to incorporate between 0.002 and 0.1 wt% of citric acid (with respect to the weight of cellulose acetate) for the purpose of color-stabilizing the formulation.
Longdon teaches the incorporation of up to 85 wt% of cellulose acetate within the composition (abstract), and thus the above-identified combination would comprise an addition of between 0 and 0.085 wt% of citric acid with respect to the total weight of the composition, which overlaps the claimed range of “from 0.05 to 0.1 wt%,” establishing a prima facie case of obviousness.
Response to Arguments
Applicant’s arguments, see Applicant’s Remarks, filed November 14, 2025, with respect to 35 USC 112(b) have been fully considered and are persuasive. The 35 USC 112(b) rejection of claim 5 has been withdrawn.
Applicant's arguments regarding 35 USC 103 have been fully considered but they are not persuasive.
Applicant argues that a person of ordinary skill in the art would have no reason based on the applied prior art to arrive at the claimed melt processable and biodegradable cellulose composition as claimed.
Applicant admits that Tindall teaches the use of thermal stabilizers including organic phosphites for cellulose esters (see p. 7, last paragraph), and admits that Tindall discloses methods for forming cellulose ester compositions that may be biodegradable (see p. 8, bridging paragraph), but states that Tindall does not contemplate the addition of organic phosphites specifically into biodegradable cellulose acetate compositions because a subsection of Tindall ascribes biodegradability as a useful characteristic of certain embodiments of the inventive composition which may be used as controlled delivery pharmaceutical devices.
However, the above-applied rejections do not rely on Tindall for its teaching of biodegradability; rather, the combination of prior art merely relies on Tindall for teaching the compatibility of organic phosphites (alongside other stabilizers) with cellulose acetates for compounding purposes. The motivation or reason to combine the prior art references need not be the same as that of the Applicant’s. The reason to or motivation to modify the reference may often suggest what is claimed, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by the Applicant. See MPEP 2144(IV).
Furthermore, patents are relevant as prior art for all of the information that they contain, and non-preferred and alternative embodiments nonetheless constitute prior art (see MPEP 2123.I and II). The incorporation of phosphite into cellulose acetate combinations is therefore valid within the teachings of Tindall, even assuming arguendo that Tindall does not prefer said combination.
Finally, in response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant argues that Tindall does not provide a reason to include anti-oxidants; however, Tindall is not being relied upon for the motivation to include an anti-oxidant. Instead, that motivation is provided by the primary reference Longdon, which specifically teaches the use of stabilizers within the inventive composition (col. 3, lines 62-67). Tindall is relied upon for the teaching of the suitability of the combination of more than one stabilizer as well as the useful incorporation of a phosphite anti-oxidant (Irganox) within cellulose acetate compositions.
Applicant argues that Stern is directed towards durable, non-degradable compositions. However, Stern is merely directed towards cellulose acetate compositions and provides no teaching away from the utilization of its inventive components within particular types of cellulose acetate. One having ordinary skill in the art would therefore recognize that the teachings of stern are generalizable towards virtually any cellulose acetate composition, irrespective of biodegradability.
Conclusion
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/JOSHUA CALEB BLEDSOE/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762