DETAILED ACTION
Claim Status
Claim(s) 1-2, 4, 6-7, 9-10, 12, 15-16, 20 is/are pending.
Claim(s) 1-2, 4, 6-7, 9-10, 12, 15-16, 20 is/are rejected.
Claim(s) 3, 5, 8, 11, 13-14, 17-19 is/are cancelled by Applicant.
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 .
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 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.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/26/2025 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
The rejections under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, (with respect to new matter) has been withdrawn in view of the Claim Amendments filed 12/26/2025.
Claim(s) 1-2, 4, 6-7, 9-10, 12, 15-16, 20 is/are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for:
(A) limited ranges of core layer compositions;
(B) limited ranges of first plasticized cellulose ester-based compositions;
(C) limited ranges of top layer compositions;
(D) limited ranges of second plasticized cellulose ester-based compositions;
(E) limited ranges of multilayer article structures;
does not reasonably provide enablement for the entire recited compositional range of first plasticized cellulose ester-based compositions as a whole and second plasticized cellulose ester-based compositions as a whole and the entire encompassed range of multilayer article structures. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with these claims.
The propriety of a rejection based upon the scope of a claim relative to the scope of the enablement concerns (1) how broad the claim is with respect to the disclosure and (2) whether one skilled in the art could make and use the entire scope of the claimed invention without undue experimentation. See MPEP 2164.08. The disclosure as originally filed does not enable one of ordinary skill in the art to which it pertains, or with which it is most nearly connected, to make:
the recited multilayer articles exhibiting the recited properties (claims 1, 7):
(x) non-flaming smoke density; and
(y) flame spread class rating; and
(z) flexural modulus of the first cellulose-based composition and/or second cellulose-based composition;
over the entire scope of the present claims.
MPEP 2164.01(a) Undue Experimentation Factors [R-08.2012]
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There are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is "undue." These factors include, but are not limited to:
(A) The breadth of the claims;
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(B) The nature of the invention;
(C) The state of the prior art;
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(D) The level of one of ordinary skill;
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(E) The level of predictability in the art;
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(F) The amount of direction provided by the inventor;
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(G) The existence of working examples; and
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(H) The quantity of experimentation needed to make or use the invention based on the
content of the disclosure.
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In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988) (reversing the PTO’s determination that claims directed to methods for detection of hepatitis B surface antigens did not satisfy the enablement requirement). In Wands, the court noted that there was no disagreement as to the facts, but merely a disagreement as to the interpretation of the data and the conclusion to be made from the facts. In re Wands, 858 F.2d at 736-40, 8 USPQ2d at 1403-07. The Court held that the specification was enabling with respect to the claims at issue and found that "there was considerable direction and guidance" in the specification; there was "a high level of skill in the art at the time the application was filed;" and "all of the methods needed to practice the invention were well known." 858 F.2d at 740, 8 USPQ2d at 1406. After considering all the factors related to the enablement issue, the court concluded that "it would not require undue experimentation to obtain antibodies needed to practice the claimed invention." Id., 8 USPQ2d at 1407.
In particular, with respect to Wand factor (A), the claims are relatively broad -- for example, but not limited to:
• the claims do not contain any limitations on the composition of the core layer as a whole, as long as the first cellulose-based composition is present in any non-zero amount;
• the claims do not any limitations on the minimum amount of the first cellulose-based composition in the core layer as a whole;
• the claims contain only broad limitations on the composition of the first cellulose-based composition as a whole,
• the claims do not contain any limitations on the composition of the top layer as a whole, as long as the second cellulose-based composition is present in any non-zero amount;
• the claims do not any limitations on the minimum amount of the second cellulose-based composition in the top layer as a whole;
• the claims contain only minimal limitations on the composition of the second cellulose-based composition as a whole;
• the majority of the claims do not any limitations on the minimum amounts of plasticizer in the first cellulose-based composition as a whole and second cellulose-based composition as a whole;
• the claims allow for substantial amounts (up to about 50 wt% in the first cellulose-based composition of claims 1-2, 4, 6, 12, 15, 20; up to about 44 wt% in the second cellulose-based composition of claims 7, 9-10, 16) of other components in the cellulose-based compositions and do not contain any limitations on the type(s) and amount(s) of these other components (e.g., other polymeric components; non-polymeric components such as various organic or inorganic compounds, such as fillers, pigments, and/or other additives; etc.) as long as the specified components are present in the cellulose-based compositions in the recited minimal amounts;
• the claims contain only minimal limitations on the structure of the multilayer article.
With respect to Wand factor (B), the specification that prior art materials cannot meet the requirements of utilizing environmentally-friendly materials for flooring articles which exhibit flammability, smoke suppression, and other performance characteristics comparable to conventional polyvinyl chloride (PVC) flooring.
With respect to Wand factors (C)-(E), the prior art does not specifically disclose or teach the production of multilayer articles which exhibit the recited above physical properties (x)-(y) utilizing the recited core layer compositions, top layer compositions, wherein the first cellulose-based composition and/or second cellulose-based composition exhibits physical property (z).
With respect to Wand factors (F)-(G), the disclosure as originally filed only discloses very limited ranges of: (A) core layer compositions as a whole; (B) first cellulose-based compositions as a whole; (C) top layer compositions as a whole; (D) second cellulose-based compositions as a whole; and (C) multilayer structures; which exhibit the recited properties (x)-(z).
With respect to Wand factor (H), the Specification only provides two working Examples of multilayer articles (i.e., laminate constructures 7-8 utilizing top layer composition 1 and core layer compositions 8-9) which fully satisfy properties (x)-(z). In particular, the Specification fails to provide to contain any objective data for: (i) flexural properties of the core layer composition (i.e., the first cellulose-based composition) for laminate constructions 1-6, 12; and (ii) (y) flame spread class for laminate constructions 9-18; so it is unclear whether laminate constructions 1-6, 9-18 fully satisfy recited properties (x)-(z). Additionally, laminate constructions 3, 5, 9-12 provide evidence that even relatively minor changes in core layer and top layer compositions can cause a laminate to fail the (x) smoke density requirement.
Since the Examples in the Specification provides objective evidence that even relatively minor variations in core layer compositions and/or top layer compositions can materially affect the recited (x) smoke density property in a laminate, it is the Examiner’s position that undue experimentation would be required to produce multilayer articles which exhibit recited properties (x)-(z) using BMC compositions different from the working Examples in the Specification -- for example, but not limited to:
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• the core layer composition as a whole;
-- the amount of first cellulose-based composition; etc.;
• the top layer composition as a whole;
-- the amount of second cellulose-based composition; etc.;
• the first cellulose-based composition as a whole;
-- the type of cellulose ester;
-- the type and amount of plasticizer;
-- the type and amount of mineral-based water releasing agent (claims 1-2, 4, 6, 9, 12, 15, 20);
-- the type and amount of phosphorus flame retardant (claims 2, 7, 9-10, 16); etc.;
• the second cellulose-based composition as a whole;
-- the type of cellulose ester;
-- the type and amount of plasticizer;
-- the type and amount of phosphorus flame retardant (claim 6); etc.;
• the physical structure of the multilayer article;
The present claims use the open term “comprising” with respect to:
• the core layer composition as a whole;
• the top layer composition as a whole;
which allows for unrestricted type(s) and amount(s) of other components in the core layer and top layer, as long as the first and second cellulose-based compositions are present in their respective layers in any, non-zero amount.
Additionally, the present claims use the open term “comprising” with respect to:
• the first cellulose-based composition as a whole;
• the second cellulose-based composition as a whole;
which allows for substantial amounts (up to about 50 wt% in the first cellulose-based composition of claims 1-2, 4, 6, 12, 15, 20; up to about 44 wt% in the second cellulose-based composition of claims 7, 9-10, 16) of other components in the first and second cellulose-based compositions, as long as the specified components are present in the first and second cellulose-based compositions in the recited minimal amounts.
However, the Specification only provides two working Examples of multilayer articles which fully satisfy properties (x)-(z) -- i.e., laminate constructures 7-8 utilizing top layer composition 1 and core layer compositions 8-9, wherein:
• the first cellulose-based composition constitutes the effective entirety of the core layer;
• the second cellulose-based composition constitutes the effective entirety of the top layer;
• the laminate has a core / top / core structure).
In particular, the Specification fails to provide to contain any objective data for: (i) flexural properties of the core layer composition (i.e., the first cellulose-based composition) for laminate constructions 1-6, 12; and (ii) (y) flame spread class for laminate constructions 9-18; so it is unclear whether laminate constructions 1-6, 9-18 fully satisfy recited properties (x)-(z) -- for example:
• it is unclear whether the mere presence of a mineral-based water-releasing agent in the core layer composition alone or the first cellulose-based composition alone (claim 1) would enable a multilayer article to satisfy the (z) flexural modulus requirement.
Additionally, laminate constructions 3, 5, 9-12 provide objective evidence that even relatively minor changes in core layer and top layer compositions can cause a laminate to fail the (x) smoke density requirement -- for example, but not limited to:
• laminate constructions 9-10 (utilizing core compositions 10-11, respectively, which contain lower amounts of RDP and higher amounts of TEGEH, compared to core composition 9) explicitly fail to meet the (x) smoke density requirement, and it is unclear (due to the absence of objective data) whether laminate constructions 9-10 satisfy the (y) flame spread class requirement;
• laminate constructions 3, 5 (utilizing core composition 5) which does not contain RDP and contains higher amounts of TEGEH also explicitly fail to meet the (x) smoke density requirement, even though core composition 5 contains significant amounts of MICRAL 932 (alumina trihydrate) and the top layers (utilizing top composition 2-3) contain significant amounts of RDP;
• laminate constructions 1-18 appear to indicate that larger amounts of TEGEH (e.g., 3.2% or more) in the core layer can cause issues with satisfying the (x) smoke density requirement, unless supplemented with significant amounts of aluminum trihydrate.
In view of the Examples in the Specification, the Examiner has reason to believe that the compositions of: (i) the core layer as a whole; (ii) the top layer as a whole, (iii) the first cellulose-based composition as a whole; and/or (iv) the second cellulose-based composition as a whole; in a multilayer article would materially affect the fire-related properties (x)-(y) of the multilayer article -- in particular:
• the Examiner has reason to believe that the core layer and top layer each need to contain a minimum amount of the first cellulose-based composition and second cellulose-based composition, respectively,
• in contrast, the present claims permit any non-zero amount (e.g., 80 wt% or 50 wt% or 20 wt% or 10 wt% or 1 wt%; etc.) of the respective cellulose-based composition in the core layer as a whole and the top layer as a whole;
Similarly, since the number and arrangement of core layer(s) and top layer(s) in a laminate materially affects the overall content and location of various flame retarding agents and other additives, the Examiner has reason to believe that the structure of laminates (e.g., the number and arrangement of core layer(s) and top layer(s)) would materially affect the fire-related properties (x)-(y) of the multilayer article.
Applicant has not provided adequate guidance to one of ordinary skill in the art as to how to produce multilayer articles which fully satisfy properties (x)-(z), without undue experimentation using BMC compositions which are materially different (e.g., in core layer and/or top layer compositions; laminate structure; etc.) from those used in the working Examples (specifically laminate constructions 8-9).
For example, but not limited to:
• layers and/or compositions containing different types of plasticizer other than the TEGEH used in the Examples in the Specification;
• layers and/or compositions containing different types of mineral-based water releasing agent (e.g., magnesium hydroxide; calcium hydroxide; boron trihydrate; other metal-based hydrates; etc.) other than the alumina trihydrate used in the Examples in the Specification;
• layers and/or compositions containing different types of phosphorus flame retardant (e.g., DOPO, RXP, TCP, TAP, etc.) other than the RDP used in the Examples in the Specification;
• layers and/or compositions containing non-trivial amounts (unrestricted in the core layer and top layer compositions; up to about 50 wt% in the first cellulose-based composition of claims 1-2, 4, 6, 12, 15, 20; up to about 44 wt% in the second cellulose-based composition of claims 7, 9-10, 16) of other components (e.g., other polymeric components; non-polymeric components such as various organic or inorganic compounds, such as fillers, pigments, and/or other additives; etc.) especially other components which can affect the (x) smoke density and/or (y) flame spread class of a multilayer laminate;
• multilayer articles with different layer structures (e.g., top/core/top; top/core; etc.) other than the core/top/core structure used in the Examples in the Specification;
.
• etc.
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In view of the above, it is the Examiner’s position that the disclosure as originally filed does not enable one of ordinary skill in the art to make multilayer articles which fully satisfy properties (x)-(z), over the entire scope of the present claims without undue experimentation, particularly in view of the very limited number of working Examples (i.e., only laminate constructions 7-8) in the Specification which provide objective evidence of fully satisfying the recited physical properties (x)-(z) -- i.e., the Specification fails to provide clear objective evidence that the laminate constructions 1-6, 9-18 in the Specification fully satisfy the recited physical properties (x)-(z).
Claim(s) 15 is/are 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 pre-AIA the applicant regards as the invention.
Claim 15 is vague and indefinite because it is unclear whether the phrase “further includes” in the limitation “further includes at least 1% based on total plasticizer content in said composition of one or more non-phosphorus plasticizers” means that: (i) the previously recited “plasticizer” is the “one or more non-phosphorus plasticizers” in the first and/or second plasticized cellulose ester-based compositions; or (ii) the “one or more non-phosphorus plasticizers” is separate and distinct from (i.e., in addition to) the previously recited “plasticizer”.
Claim Rejections - 35 USC § 103 (AIA )
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 rejections under 35 U.S.C. 103 based on BASTIN ET AL (US 2022/0195739), in view of ODUM ET AL (US 2018/0163413), and in view of BONSIGNORE (US 4,283,316), and in view of BERGER (US 4,105,465) in the previous Office Action mailed 03/13/2025 have been withdrawn in view of the new grounds of rejection necessitated by the Claim Amendments filed 12/26/2025.
Response to Arguments
Applicant’s arguments filed 06/11/2025 and 12/26/2025 have been considered but are moot in view of the new ground(s) of rejection under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, (regarding scope of enablement) in the present Office Action necessitated by the Claim Amendments filed 12/26/2025.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Vivian Chen (Vivian.chen@uspto.gov) whose telephone number is (571) 272-1506. The examiner can normally be reached on Monday through Thursday from 8:30 AM to 6 PM. The examiner can also be reached on alternate Fridays.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Callie Shosho, can be reached on (571) 272-1123. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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February 21, 2026
/Vivian Chen/
Primary Examiner, Art Unit 1787