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 Objections
Claim 4 is objected to because of the following informalities: it is suggested the claimed be amended to recite “the plasticizer is chosen from….or a combination thereof.
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.
Claim 20 is 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. New Claim 20 sets forth the presence of a first stabilizer component and a second stabilizer component in ranges of amounts. However, the claim does not specify to what these amounts are relative. For the purposes of further examination, Claim 20 will be interpreted as setting forth the recited amounts of first stabilizer and second stabilizer components are relative to the total weight of the foamable composition.
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 – 4, 6, and 9 – 20 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 2007056080 to Kusono et al. (hereinafter Kusono). For the purposes of examination, citations for Loercks are taken from a machine translation of the document obtained from Clarivate Analytics in March 2025, except where expressly noted. Citations for Loercks are taken from a machine translation of the document obtained from European Patent Office Website in December 2025.
Regarding Claims 1, 3, 4, 6, and 20. Loercks teaches a foamable composition comprising:
cellulose acetate;
20.34 weight percent triacetin, wherein triacetin is set forth as a plasticizer in instant Claim 4;
4.43 weight percent talc (see “Recipe 1” on Page 5 of the machine translation), i.e. hydrated magnesium silicate. Magnesium silicate is set forth as a nucleating agent in instant Claim 6; and
0.8 weight percent carbon dioxide (see Page 6 of the machine translation and Column 1 on Page 20 of the original document). Carbon dioxide is set forth as a physical blowing agent instant Claim 3.
Loercks is 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 1 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 teaches the foamable composition may contain additives such as stabilizers (see #14 of last page of machine translation) but does not expressly teach it contains the instantly claimed combination of first and second stabilizer components. However, Kusuno also teaches a foamable composition in which a combination of heat stabilizers may be provided, including BHT and sulfur-based antioxidants such as dilauryl thiodipropionate and distearyl thiodipropionate [0111]. BHT is set forth as a suitable primary antioxidant in the instant specification, while sulfur-based antioxidants are set forth as suitable secondary antioxidants (see [0042] – [0043] of the PG-PUB of the instant application). Based on the resin, the heat stabilizers are provided in an amount of preferably 200 pm or more preferably 0.5 parts by weight or less [0112]. Thus, when a combination of BHT and sulfur-based antioxidants is used, the amount of primary and second antioxidants will each correspond to greater than 0 and less than 0.5 parts by weight, based on the resin. Loercks and Kusuno are analogous art as they are from the same field of endeavor, namely biodegradable foamable compositions which may be 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 a combination of BHT and sulfur-based antioxidant in the amount suggested by Kusuno in Recipe 1 of Loercks. Using the amounts of all ingredients reported by Loercks in Recipe 1, amounts of BHT and sulfur-based antioxidant each of greater than 0 to less than 0.5 parts by weight relative to the biodegradable resins in this recipe can be calculated to correspond to greater than 0 to less than roughly 0.7 parts by weight of the foamable composition. The motivation would have been that Kusuno teaches BHT and sulfur-based antioxidants in the disclosed amounts function as heat stabilizers in foamable compositions comprising biodegradable resins [0111] – [0112], suppressing oxidation and degradation of the resins during processing and thereby enhancing the durability of products prepared from these resins.
Regarding Claim 2. Loercks teaches the foamable composition of Claim 1 comprises 0.8 weight percent carbon dioxide (see Page 6 of the machine translation and Column 1 on Page 20 of the original document). When rounded to the nearest integer as in the instant claims, this corresponds to 1 weight percent carbon dioxide.
Regarding Claim 9. Loercks teaches the foamable composition of Claim 1 is biodegradable (Abstract).
Regarding Claim 10. Loercks teaches the foamable composition of Claim 1 wherein a mixture of polymers, e.g. cellulose based polymers, may be provided as the cellulose acetate component (Page 3). Two different cellulose acetate polymers would be expected to have different degrees of substitution of acetyl.
Regarding Claim 11. Loercks teaches the foamable composition of Claim 1 further comprises a commercially available ecoflex® biodegradable polyester in addition to the cellulose acetate (Recipe 1 on Page 5).
Regarding Claims 12 and 15. 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 13. Loercks teaches the article of Claim 12 but is silent regarding the thickness thereof. However, in later examples, Loercks teaches preparing articles with a thickness of 2.1 mm (“3.3 Trials with recipe 3” on Pages 6 – 7 of the machine translation of Loercks). 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 article in Recipe 1 of Loercks with a thickness of 2.1 mm. The motivation would have been that Loercks shows this to be a suitable thickness for the foams disclosed.
Regarding Claim 16. Loercks teaches an article prepared from the foamable composition of Claim 1, wherein the disclosed articles have densities below 300 g/l (0.3 g/cm3) (Page 4).
Regarding Claims 14, 17, and 19. Loercks teaches the article of Claim 12 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 18. Loercks teaches the article of Claim 17 but is silent regarding the thickness thereof. However, in later examples, Loercks teaches preparing articles with a thickness of 2.1 mm (“3.3 Trials with recipe 3” on Pages 6 – 7 of the machine translation of Loercks). 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 article in Recipe 1 of Loercks with a thickness of 2.1 mm. The motivation would have been that Loercks shows this to be a suitable thickness for the foams disclosed.
Claim 5 is 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 2007056080 to Kusono et al. (hereinafter Kusono) – as applied to Claim 1 above – and further in view of 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.
Regarding Claim 5. Loercks teaches the foamable composition of Claim 1 wherein the nucleating agent used in Recipe 1 is talc (Page 5) but the reference is silent with respect to the particle size thereof. However, Handa also teaches a method of making a biodegradable foam in which suitable nucleating agents include talc having a particle size in the nanometer range [0054]. Talc with 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 provide nanometer talc as suggested by Handa as the talc in Recipe 1 of Loercks. The motivation would have been that Handa teaches this to be a suitable size for talc which is to be used as a nucleating agent in biodegradable foams.
Claims 7 and 8 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 2007056080 to Kusono et al. (hereinafter Kusono) – 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 7 and 8. Loercks teaches the foamable composition of Claim 1 but does not expressly teach the foamable composition further comprises a biodegradable fiber. 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].
Response to Arguments
Applicant's arguments filed August 28, 2025 have been fully considered but they are not persuasive because:
A) Applicant argues that the inclusion of the stabilizer system now claimed is not taught or suggested by Loercks. However, newly applied secondary reference JP 2007056080 to Kusono et al. (hereinafter Kusono) is relied upon to teach this limitation.
B) Applicant argues that Loercks has not taught how to foam a plasticized cellulose acetate composition without another non-starch polymer and a starch. However, the instant claims do not preclude the use of the such polymers in the claims, so long as the claimed ingredients are present in the claimed proportions. Independent Claim 1 is an open claim, directed to a foamable composition “comprising” the claimed ingredients. Moreover, dependent Claim 11 sets forth an embodiment in which the foamable composition further comprises a biodegradable polymer that is different than the cellulose acetate.
C) With regards to the rejection of Claim 2, applicant argues that Loercks does not teach the claimed amount of carbon dioxide of 1 to 15 weight percent. The Office recognizes Loercks expressly teaches 0.8 weight percent carbon dioxide. However, this is a higher level of precision than is used to measure the end points set forth in the instant claims. Moreover, it is the Office’s position that the values of 0.8 and 1 are close enough that one of ordinary skill in the art would have expected similar properties. A prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). See MPEP 2144.05.
D) With respect to Claim 4, applicant argues that Loercks uses glycerol as an additional plasticizer, which is not required by Claim 1. Again, the instant claims are open claims “comprising” the recited ingredients. There is no claim language which restricts the use any unrecited ingredient, e.g. glycerol, even in major amounts.
E) Applicant additionally argues that Handa does not disclosed a numerical limitation for the particle size of less than 2 microns. However, Handa discloses particles sizes in the micron to nanometer range. Nanometers are 1000 times smaller than a micrometer. Particles anywhere in the nanometer range (1 to 100 nm) must necessarily be less than 2 microns (0.001 to 0.1 microns).
F) Applicant’s arguments with respect to the obviousness-type double patent rejections over U.S. Application Nos. 18/570,186; 18/580,352; 18/688,507; and 19/113,075 are hereby moot, as the corresponding rejections have been withdrawn in light of the amendments to the claims.
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
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