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
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 1, 7, and 12 – 22 are rejected under 35 U.S.C. 103 as being unpatentable over WO 9965977 to Loercks et al. (hereinafter Loercks) in view of “Extrusion Foaming of thermoplastic Cellulose Acetate from Renewable Resources using a Two-Component Physical Blowing Agent System” to Hopmann et al. (hereinafter Hopmann), JP 200302998 to Daicel Chemical Industry Ltd. (hereinafter Daicel), and US 2008/0146686 to Handa. For the purposes of examination, citations for Loercks are taken from a machine translation of the document obtained from Clarivate Analytics in March 2025. Citations for Daicel are taken from a machine translation of the document filed by applicant with the United States Patent and Trademark Office on April 24, 2025.
Regarding Claims 1 and 7. Loercks teaches a foamable composition comprising:
cellulose acetate;
19.65 weight percent triacetin, wherein triacetin is set forth as a plasticizer in instant Claim 7; and
0.3 weight percent of a nucleating agent. The nucleating agent, Hydrocerol® CF 20 E, is based on sodium bicarbonate and citric acid as part of a polyethylene (PE) masterbatch (see “Recipe 3” on Page 5 and “3.3 Trials with recipe 3” on Pages 6 – 7 of the machine translation of Loercks). Sodium bicarbonate and citric acid correspond to chemical blowing agents. Thus, the 0.3 weight percent of Hydrocerol® CF 20 E provided also corresponds to a chemical blowing agent composition comprising sodium bicarbonate and citric acid as chemical blowing agents and polyethylene as a carrier polymer.
Loercks is also silent regarding the degree of substitution of acetyl (DSAc) of the cellulose acetate. However, Hopmann teaches the concept of providing cellulose acetate with a DS of about 2.4 to 2.5 (see first Paragraph of Introduction section on Page 116). Loercks and Hopmann are analogous art as they are from the same field of endeavor, namely foamable compositions based upon cellulose acetate. Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to provide the cellulose acetate in Recipe 3 of Loercks with a DS of about 2.4 to 2.5, as suggested by Hopmann. The motivation would have been that Hopmann teaches providing cellulose acetate with a DS in this range provides the polymer with thermoplastic characteristics (see, again, first Paragraph of Introduction section on Page 116). This would be desirable in Loercks, as the reference specifically envisions its foamed material to have thermoplastic properties (Abstract).
Loercks thus teaches polyethylene, rather than polybutylene succinate and/or polycaprolactone, as the carrier polymer. Loercks is further silent with respect to the ratio of chemical blowing agent and carrier polymer. However, Daicell teaches the concept of using a chemical blowing agent masterbatch for the purposes of foaming a biodegradable resin into which it is incorporated [0001], wherein suitable biodegradable resins in which the masterbatch is incorporated include cellulose acetate [0020]. The chemical foaming agent masterbatch itself comprises 100 parts by weight of a biodegradable resin and 1 to 100 parts by weight of chemical blowing agent [0005], corresponding to chemical blowing agent which is 1 – 50 weight percent blowing agent and 50 – 99 weight percent carrier polymer. The preferred biodegradable resin/carrier polymers in the masterbatch is polycaprolactone having a melting point of 60°C [0007]. Suitable chemical blowing agents include sodium bicarbonate and citric acid [0010].
Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to substitute polycaprolactone in an amount in the range taught by Daicell for the polyethylene carrier originally used in the chemical blowing agent composition of Loercks. The motivation would have been that the objective of Loercks is to make biodegradable materials and articles (Abstract). It would then be desirable to substitute the polyethylene carrier in Loercks with polycaprolactone, as Daicell teaches the biodegradability of such articles is improved by substituting polyethylene carriers with biodegradable resins like polycaprolactone [0002] – [0004].
Loercks teaches its nucleating agent is a combination of sodium bicarbonate and citric acid (“Recipe 3” on Page 5 and “3.3 Trials with recipe 3” on Pages 6 – 7 of the machine translation of Loercks), rather than comprising a particulate composition and/or a magnesium silicate, magnesium oxide, or silicon dioxide. However, Handa also teaches a method of making a biodegradable foam in which suitable nucleating agents include sodium bicarbonate and talc/hydrated magnesium silicate having a particle size in the nanometer range [0054]. Talc having a particle size in the nanometer range would be reasonably expected to have a median particle size less than 2 microns. Loercks and Handa are analogous art as they are from the same field of endeavor, namely biodegradable foamable compositions. Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to substitute nanometer talc as suggested by Handa for some of the sodium bicarbonate/citric acid nucleating agent in Recipe 3 of Loercks with a DS of about 2.4 to 2.5. The motivation would have been that it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose. In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (MPEP 2144.06) In light of In re Kerkhoven, combining nanometer talc, sodium bicarbonate, and citric acid would have been obvious given their known and shared intended use as nucleating agents in biodegradable foam compositions.
Regarding Claim 12. Loercks teaches the foamable composition of Claim 1 is biodegradable (Abstract).
Regarding Claim 13. Loercks teaches the foamable composition of Claim 1 wherein a mixture of polymers, e.g. cellulose based polymers, may be provided (Page 3). Two different cellulose acetate polymers would be expected to have different degrees of substitution of acetyl.
Regarding Claim 14. Loercks teaches the foamable composition of Claim 1 further comprises polycaprolactone (see “Recipe 3” on Page 5), i.e. a biodegradable polymer different than cellulose acetate.
Regarding Claims 15 and 18. Loercks teaches an article prepared from the foamable composition of Claim 1 which is biodegradable and corresponds to a foamed, cellular material (Abstract).
Regarding Claim 16. Loercks teaches the article of Claim 15 has a thickness of 2.1 mm (“3.3 Trials with recipe 3” on Pages 6 – 7 of the machine translation of Loercks).
Regarding Claim 19. Loercks teaches the article of Claim 15 has a density of 291 kg/m3 (0.291 g/cm3) (“3.3 Trials with recipe 3” on Pages 6 – 7 of the machine translation of Loercks).
Regarding Claims 17, 20, and 22. Loercks teaches the article of Claim 15 is compostable (Abstract) but does not specify if it industrial or home compostable. Loercks also does not expressly teach the article has one or more skin layers and is silent regarding its percentage of disintegration according to ISO 16929 (2013). Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Loercks, when modified in the manner proposed above, teaches a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. Therefore, the claimed effects and physical properties, i.e. an industrial or home compostable article having one or more skin layers and a percentage of disintegration according to ISO 16929 (2013) in the instantly claimed range, would implicitly be achieved in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. See In Re Spada, 911, F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process.
Regarding Claim 21. Loercks teaches the article of Claim 20 has a thickness of 2.1 mm (“3.3 Trials with recipe 3” on Pages 6 – 7 of the machine translation of Loercks).
Claims 10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over WO 9965977 to Loercks et al. (hereinafter Loercks) in view of “Extrusion Foaming of thermoplastic Cellulose Acetate from Renewable Resources using a Two-Component Physical Blowing Agent System” to Hopmann et al. (hereinafter Hopmann) and JP 200302998 to Daicel Chemical Industry Ltd. (hereinafter Daicel) – as applied to Claim 1 above – and further in view of JP 2001011220 to Kawakami. For the purposes of examination, citations for Kawakami are taken from a machine translation of the document obtained from Clarivate Analytics in March 2025.
Regarding Claims 10 and 11. Loercks teaches the foamable composition of Claim 1 wherein the nucleating agent is a combination of sodium bicarbonate and citric acid (“Recipe 3” on Page 5 and “3.3 Trials with recipe 3” on Pages 6 – 7 of the machine translation of Loercks), rather than a particulate composition and/or a magnesium silicate, magnesium oxide, or silicon dioxide. However, Kawakami also teaches a method of making a biodegradable foam in which fibrous bamboo may be provided [0014]. Loercks and Kawakami are analogous art as they are from the same field of endeavor, namely foamable compositions based upon cellulose acetate. Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to include fibrous bamboo as suggested by Kawakami in Recipe 3 of Loercks. The motivation would have been that Kawakami teaches fibrous bamboo functions as a reinforcing material which improves the strength of the foam product [0014].
Terminal Disclaimer
The terminal disclaimer filed on November 20, 2025 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of any patent granted on U.S. Application No. 18/580,352 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Response to Arguments
Applicant's arguments filed November 20, 2025 have been fully considered. The Office responds as follows:
Double Patenting Rejection
The Office agrees that the terminal disclaimer filed November 20, 2025 obviates the outstanding double patenting rejection over U.S. Application No. 18/580,352. Accordingly, this rejection has been withdrawn.
Claim Rejections – 35 U.S.C. 112
The Office agrees that the amendment to Claim 1 filed November 20, 2025 obviates the outstanding rejection under 35 U.S.C. 112(b). Accordingly, this rejection has been withdrawn.
Claim Rejections – 35 U.S.C. 103
Firstly and secondly, applicant argues that Loercks does not teach the use of a chemical blowing agent alone and further requires utilizes additional polymeric resins, plasticizers, triacetin and glycerol. However, the Office respectfully submits that the instant claims are open claims, setting forth a foamable composition “comprising” the recited ingredients. The transitional term "comprising", which is synonymous with "including," "containing," or "characterized by," is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. See, e.g., Mars Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376, 71 USPQ2d 1837, 1843 (Fed. Cir. 2004) Thus, the instant claims do not exclude the use of additional, unrecited ingredients, such as the physical blowing agents, additional polymeric resins, plasticizers, triacetin and glycerol taught by Loercks.
Thirdly, applicant additionally argues that the reference illustrates the difficulty obtaining satisfactory foams based on a physical blowing agent in Recipe Three. Fourthly, applicant argues that Loercks teaches away from using Hydrocerol® CF 20 E by pointing out that only a modest improvement in foam quality or no improvement was observed. However, Loercks does teach that the use of Hydrocerol® CF did improve the both the density and foam structure of Recipe 3 (see second to last paragraph on Page 8 of the machine translation). Moreover, disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). See also Upsher-Smith Labs. v. Pamlab, LLC, 412 F.3d 1319, 1323, 75 USPQ2d 1213, 1215 (Fed. Cir. 2005) (MPEP 2123)
Applicant further argues that the applied secondary references do not remedy the deficiencies of Loercks. However, these arguments are not found persuasive as the alleged deficiencies have been addressed above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 MELISSA RIOJA whose telephone number is (571)270-3305. The examiner can normally be reached Monday - Friday 10:00 am - 6:30 pm EST.
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/MELISSA A RIOJA/Primary Examiner, Art Unit 1764