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
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-3, 5, 7-10 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Mohanty et al. (WO-2005/111184-A2), in view of An et al. (WO-2018089591-A1).
Regarding claim 1
Mohanty discloses a composition comprising a biodegradable cellulose ester melt by compounding cellulose acetate, plasticizer, organoclay and a compatibilizer (paras 0004 and 0015).
Although Mohanty does not disclose the use of the claimed plasticizer, Mohanty does disclose the use of a plasticizer such as epoxidized vegetable oil (para 0049). However, An discloses that in cellulose compositions that as the plasticizer that triethylene glycol 2-ethyl hexanoate is functionally equivalent with an epoxidized vegetable oil (page 8, lines 8-23). Therefore it would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to add to the teachings of Mohanty by using triethylene glycol 2-ethyl hexanoate as the plasticizer, with a reasonable expectation of success, as suggested by An.
Regarding claims 2-3
Mohanty discloses compositions of 80:20 cellulose acetate and TEC (i.e., plasticizer) with 5 wt % clay (para 0037).
Regarding claim 5
Mohanty discloses the use of 5 wt % clay (para 0037).
Regarding claim 7
Mohanty discloses a compatibilizer (i.e., processing aid) (para 0030).
Regarding claims 8-9
Mohanty discloses that preferably the cellulose ester is cellulose acetate proprionate (para 0017).
Regarding claims 10 and 16
The melt strength enhancement and the total complex viscosity reduction are properties of the composition, and when the reference discloses all the limitations of a claim except a property or function, and the examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention but has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP § § 2112- 2112.02.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Mohanty et al. (WO-2005/111184-A2), in view of An et al. (WO-2018089591-A1), as applied to claims 1-3, 5, 7-10 and 16 above, in view of Lam et al. (US 2016/0347891 A1).
Regarding claim 6
Although Mohanty does not disclose the limitations of the clay, Mohanty does disclose the inclusion of clay. However, Lam discloses clay that can have a bulk density of 0.15 to 1 g/ml and a particle size of from about 8 to 100 microns (para 0093). Therefore it would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to add to the teachings of Mohanty by using a clay having a bulk density of 0.15 to 1 g/ml (i.e., less than 500 g/ml) and a particle size of 8 to 100 microns, with a reasonable expectation of success, as suggested by Lam.
As the particle size range of the reference overlaps the claimed amount, the subject matter as a whole would have been obvious to one having ordinary skill in the art at the time the invention was made to have selected the overlapping portion of the range disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness. In re Malagari, 182 U.S.P.Q. 549.
With respect to the limitations on density this is a property of the clay itself, and when the reference discloses all the limitations of a claim except a property or function, and the examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention but has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP § § 2112- 2112.02.
Response to Arguments
Applicants argue against the 102 rejection.
Applicants amendment to the claims is sufficient to overcome the 102 rejections, and it has been withdrawn. However, a new 103 rejection has been made in its place.
Applicants argue against the 103 rejections.
Applicants have cancelled claim 4 making their arguments to its rejection persuasive and this rejection has been withdrawn.
Applicants argue that Mohanty and Lam do not disclose the claimed plasticizer. While this is true it is not persuasive as a new reference has been applied that discloses the claimed plasticizer.
The remaining arguments have been fully considered but are not persuasive for the same reasons given 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES E MCDONOUGH whose telephone number is (571)272-6398. The examiner can normally be reached Mon-Fri 10-10.
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JAMES E. MCDONOUGH
Examiner
Art Unit 1734
/JAMES E MCDONOUGH/Primary Examiner, Art Unit 1734