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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 May 18, 2026 has been entered.
Claims 1-8 and 10-21 are pending.
Claim Analysis
Summary of Claim 1:
A cellulose ester composition comprising at least one low hydroxyl content (LHC) cellulose ester, at least one polymeric aliphatic polyester (PAP), and optionally at least one impact modifier and/or at least one monomeric plasticizer,
wherein said at least one LHC cellulose ester has a hydroxyl degree of substitution (DSOH) of 0.15 or less, an acetyl degree of substitution (DSac) of 0.75 to 1.25, and is chosen from cellulose acetate propionate (CAP),
wherein the PAP is an aliphatic polyester that comprises resides of a C2 to C4 alkane diol and residues of C4 to Cs alkyl dicarboxylic acid, or residues of a ring-opened lactone;
wherein said cellulose ester composition has a Tg of at least 100°C and a notched Izod impact strength of at least 80 J/m, measured according to ASTM Method D256 at 230C using a 3.2 mm bar, after conditioning the bar at 230C and 50% RH for 48 hours.
Claim Interpretation
The term “low hydroxyl content cellulose ester” is interpreted as a cellulose ester having a hydroxyl degree of substitution of 0.15 or less (see instant specification [0039]).
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.
Claim(s) 1-4, 6, 10-12, 14-15 and 17-21 are rejected under 35 U.S.C. 103 as being unpatentable over Kawashima et al. (US 20130030084) in view of Tanaka (US 20190023887 A1).
Regarding claim 1, 2, 3, 4, and 14, Kawashima et al. disclose a composition comprising a cellulose acetate propionate and a polyester based plasticizer selected from polybutylene succinate among others (claim 4), thereby reading on the low hydroxyl content cellulose ester and at least one polymeric aliphatic polyester (PAP) of claim 1, 3 and 4. The at least one impact modifier and at least one monomeric plasticizer are considered optional and therefore are considered obvious.
Kawashima et al. is silent on the Tg and notched Izod impact strength as recited in the instant claims 1, 2 and 14. In view of the substantially identical composition of Kawashima et al., the composition of Kawashima et al. will possess the claimed properties because stress and elongation at break are expected 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).)
Kawashima et al. is silent on whether the cellulose ester is low hydroxyl content and has an acetyl degree of substitution (DSac) as recited in the instant claim.
Tanaka teaches a resin composition comprising a cellulose ester. Tanaka teaches the cellulose ester has a substitution degree of 2.1 or greater and 2.9 or less, equivalent to a hydroxyl degree of substitution of 0.1 to 0.9 and thereby overlapping the claimed range. Tanaka also teaches the acetyl degree of substitution is 0.05 or greater and 2.85 or less [0033-0037], thereby overlapping the claimed range. Tanaka teaches the resin composition is used to form a molded article [0114-0116]. Kawashima et al. is also interested in using the resin composition to form a molding articles [0084]. Therefore, it would have been obvious to one of ordinary skill in the art to use the cellulose ester taught by Tanaka with the composition of Kawashima et al. since both are related to cellulose ester resin compositions used to form molding articles.
Regarding claim 6, Kawashima et al. disclose at least one plasticizer includes bis(2-ethylhexyl)adipate, thereby reading on monomeric plasticizer [0053].
Regarding claims 10-12, Kawashima et al. is silent on the melt flow rate, elongation at break, and number average molecular weight of the PAP as recited in the instant claims. However, the physical properties of the polymer are dependent on the structure and method to make the polymer. Kawashima et al. disclose a substantially identical polymer as disclosed in the instant claim. Therefore, one of ordinary skill in the art would have found the melt flow rate, elongation at break, and number average molecular weight to be expected.
Regarding claim 15, Kawashima et al. disclose in Table 1 a flame retardant was added to the composition, thereby reading on the instant claim.
Regarding claim 17-20, Kawashima et al. disclose the composition is molded by injection molding among other methods and can be used to form products such as interior parts for automobiles and home appliances among others [0084-0086], thereby reading on the instant claim.
Regarding claim 21, Kawashima et al. disclose the composition may be used to form drug packaging materials [0086], thereby reading of film or sheet.
Claim(s) 5, 7, 8 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Kawashima et al. (US 20130030084) in view of Tanaka (US 20190023887 A1) and further in view of An et al. (WO 2018089575).
The cellulose ester composition disclosed in claim 1 is incorporated herein by reference.
Regarding claim 5 and 7, Kawashima et al. disclose at least one plasticizer includes bis(2-ethylhexyl)adipate, thereby reading on monomeric plasticizer [0053]. Kawashima et al. is silent on the impact modifier as recited in the claim.
An et al. teach impact modifier can improve the mechanical and physical properties of the cellulose ester compositions [0079]. Kawashima et al. is also interested in improving physical properties such as impact resistance [0022]. Therefore, it would have been obvious to one of ordinary skill in the art to add the impact modifier of An et al. with the composition of Kawashima et al. with reasonable expectation that the physical properties would improve.
Regarding claim 8, Kawashima et al. disclose the composition comprises cellulose acetate propionate and 5 phr to 30 phr of the polyester-based plasticizer, equivalent to 71.4 wt% to 95.2 wt% of cellulose acetate propionate and 4.76 wt% to 28.5 wt% of PAP, thereby overlapping with the claimed ranges. 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).) It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range taught by Kawashima et al.
Kawashima is silent on the amount of impact modifier as recited in instant claim 8. An et al. teach the amount of impact modifier is about 1 wt% to about 15 wt% [0089], thereby overlapping with the claimed range. An et al. offer the motivation that can improve the mechanical and physical properties of the cellulose ester compositions [0079]. Kawashima et al. is also interested in improving physical properties such as impact resistance [0022]. Therefore, it would have been obvious to one of ordinary skill in the art to add the impact modifier of An et al. with the composition of Kawashima et al. with reasonable expectation that the physical properties would improve.
Regarding claim 16, Kawashima et al. is silent on the polymeric component as recited in the instant claim. An et al. teach additional polymeric component such as nylon and polyesters among others may be added to cellulose ester compositions [0093]. Therefore, one of ordinary skill in the art would have found it obvious to add the polymeric component of An et al. with the composition of Kawashima et al. given both are concerned with cellulose ester compositions and is therefore considered to be known in the art. (MPEP 2143.ID).
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Kawashima et al. (US 20130030084) in view of Tanaka (US 20190023887 A1) and further in view of Landry et al. (US 5302637).
The cellulose ester composition disclosed in claim 1 is incorporated herein by reference.
Kawashima et al. teach the cellulose acetate propionate used is the trademark CAP 482 (Table 1). Kawashima et al. is silent on the amount of propionyl in the cellulose acetate propionate as recited in the instant claim. Landry et al. teach cellulose acetate blends comprising cellulose acetate propionates having an average propionyl content of about 10 to about 52 weight percent, thereby overlapping the claimed range [col 3, line 6-25]. Landry et al. offer the motivation that the blends are useful for molded parts and for plastics applications [col 2, line 1-15]. Kawashima et al. is also concerned with plastics compositions used for molding [0010]. Therefore, it would have been obvious to one of ordinary skill in the art to add the cellulose acetate propionate having the propionyl content taught by Landry et al. with the composition of Kawashima et al. since both are related to cellulose acetate propionates use for molding applications.
Response to Arguments
Applicant's arguments filed May 18, 2026 have been fully considered but they are not persuasive.
Applicant states “there is no reason to modify Kawashima based on Tanaka to arrive at the presently claimed invention.”.
The examiner respectfully disagrees. Kawashima et al. and Tanaka are both related to both are related to cellulose ester resin compositions used to form molding articles. Therefore, it would have been obvious to try to use a cellulose ester having an acetyl degree of substitution as taught by Tanaka with the cellulose ester composition of Kawashima et al. (MPEP 2143.1E).
Applicant states “the presently claimed invention shows unexpected results for the articles formed from the recited cellulose ester composition as presently claimed. In that regard, the examples show unexpectedly improved gloss retention and lower alcohol uptake.”
The examiner responds that the Applicant’s argument is not persuasive because the relied upon data do not support Applicant’s conclusion. Applicant relies on a single LHC CAP having a DSOH of 0.10 and a DSAC of 1.00 to support its assertion that the claimed ranges are critical. It is not clear from Examples 1-11 that either the upper limit or the lower limit of the acetyl degree of substitution are indeed critical. For example, CE1 comprises CAP 482-20 having a DSOH of 0.40. However, it is unclear whether or not CAP 482-20 has a DSAC of less than 0.75 or greater than 1.25. Without more data points, the examiner is unpersuaded that the lower limit of a hydroxyl degree of substitution of 0.15 or less and an acetyl degree of substitution of 0.75 to 1.25 is indeed critical.
Furthermore, the amount of LHC cellulose ester and polymeric aliphatic polyester (PAP) would have an effect on the properties of the cellulose ester composition as well. However, the data shown in Table 1 only comprises an amount of 79-81 wt% of CAP. There is no evidence that any amount of LHC cellulose ester and PAP would behave in the same matter.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached on (571) 272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREA WU/Examiner, Art Unit 1763
/CATHERINE S BRANCH/Primary Examiner, Art Unit 1763
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