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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 7/22/2026 has been entered.
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, 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), in view of Compton et al. (WO-2018017652-A1).
Regarding claims 1 and 3
Mohanty discloses a composition comprising a biodegradable cellulose ester melt by compounding cellulose acetate, plasticizer, organoclay and a compatibilizer (paras 0004 and 0015).
Mohanty discloses compositions of 80:20 cellulose acetate and TEC (i.e., plasticizer) with 5 wt % clay (para 0037).
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.
Mohanty does not disclose the processing aid or the roll release agent. However, Compton discloses similar cellulose ester compositions and discloses the use of 0 to 6 wt % processing aid and 0.1 to 2 wt % roll release agent (claim 1). Therefore it would have been prima facie obvious at the time of the invention to add to the prior art by including a processing aid and roll release agent in the amounts taught by Compton with a reasonable expectation of success in forming a useful composition. As the amounts of these components overlap the claimed amounts 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.
Mohanty discloses that the cellulose ester is preferably the cellulose acetate or cellulose acetate propionate (para 0017). As such it would be obvious to substitute one for the other in the compositions of Mohanty.
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 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), in view of Compton et al. (WO-2018017652-A1), as applied to claims 1, 3, 7-10 and 16 above, and 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 prior art rejections.
Applicants argue that Mohanty does not teach or suggest cellulose acetate propionate. This is not persuasive as Mohanty explicitly describes cellulose acetate propionate as a preferred cellulose ester to be used in his composition. Further, it is noted that a reference is good for all that it teaches and is not limited to the specific examples or preferred embodiments.
Applicants argue against the reference of An as it does not contain all the components of the instant invention. These arguments are not persuasive as An was only used to show what were known plasticizers to use in cellulose compositions.
Applicants argue that the claimed processing aid and roll release agents are not taught. While this may be true it is not persuasive as anew reference has been applied to show why these additives are obvious.
Applicants argue is not analogous art. This argument is not persuasive as Lam was used to show what were known bulk densities and particle sizes of clay.
Applicants argue that the properties are not inherent. This is not persuasive and it is noted that examiner did not claim these properties were inherent, but only that it could not be determined if the properties were inherent, and properly shifted the burden to the applicants. Further Mohanty discloses the use of cellulose acetate propionate.
Applicants argue unexpected results. This is not persuasive as it cannot be determined what is causing the results nor has it been shown any comparison to the closest prior art. Further, applicants data shows that even using clays within the claimed language the superior results are not always achieved.
The remaining arguments have been fully considered but are not persuasive for the same reasons given above.
Conclusion
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan Johnson can be reached at 5712721177. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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JAMES E. MCDONOUGH
Examiner
Art Unit 1734
/JAMES E MCDONOUGH/Primary Examiner, Art Unit 1734
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