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 .
This Office Action is in response to Applicant’s response to a Nonfinal rejection filed December 12, 2025.
The previous objection of claims 1, 2, 3, 4, 8, and 10 and 112(d) rejection of claim 6 are withdrawn due to Applicant’s amendments.
The previous objection to the Drawings is withdrawn due to Applicant’s replacement drawings.
The previous double patenting rejection is withdrawn due to Applicant’s amendments.
Claims 2-4, 6-9, 11-12, and 16-20 are cancelled due to Applicant’s amendments.
Claims 1, 5, 10, 13, and 15 are currently pending.
Claim Analysis
Summary of Claim 1:
A plasticized cellulose ester composition, said composition comprising
a plasticized cellulose ester and
an effective amount of an inorganic rheological modifier having a refractive index that differs from the refractive index of said plasticized cellulose ester an amount no more than 0.03 refractive index units.
wherein said plasticized cellulose ester composition includes at least one cellulose ester and at least one plasticizer,wherein said at least one plasticizer is selected from the qroup consistinq of triethylene qlycol 2-ethyl hexanoate, dioctyl adipate, di-n-hexyl azelate,epoxidized soybean oil, acetyl triethyl citrate and combinations thereof,
wherein said plasticized cellulose ester composition comprises from 5% to 30% by weiqht of said at least one plasticizer based on the total weiqht of said composition,
wherein said at least one cellulose ester is selected from the qroup consistinq of cellulose acetate propionate, cellulose acetate butyrate and combinations thereof,
wherein said plasticized cellulose ester composition exhibits a melt strength enhancement ("MSE") of at least 12%, wherein the MSE is calculated accordinq to the followinq equation: MSE (%) = [(V1 - V2)/V21 x 100, wherein V1 is the complex viscosity in Poise measured at a shear rate of 1 sec-1 for the plasticized cellulose ester composition as measured according to ASTM D-1440 at a temperature of 185°C, and V2 is the complex viscosity in Poise measured at a shear rate of 1 sec-1 for a plasticized cellulose ester composition without a rheoloqy modifier as measured according to ASTM D-1440 at a temperature of 185°C.
wherein said plasticized cellulose ester composition exhibits a haze as measured according to ASTM E1348 of no more than 20%,wherein said plasticized cellulose ester composition exhibits total liqht transmission as measured under ASTM E1348 of at least 86%,
wherein said inorqanic rheoloqical modifier is selected from the qroup consistinq of qlass beads, qlass fibers, amorphous silica, precipitated silica, fumed silica, cristobalite, lithium hydroxide, kuzelite, and combinations thereof,
wherein said inorganic rheoloqical modifier is present at from 0.5 to 8% by weight based on the total weiqht of said plasticized cellulose ester composition,
wherein the plasticized cellulose ester composition comprises 0.1 to 2.0% by weight of a roll release agent by on the total weight of the plasticized cellulose ester composition,
wherein the roll release agent is an amide wax, a fatty acid, a fatty acid ester, a fatty acid salt, a saponified fatty acid salt, or combinations thereof.
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, 5, 7, 10, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Ishiguro et al. (US 20130321723) in view of Feng et al. (WO 2018089573), Yao et al. (US 20160090471), and Compton et al. (WO 2018017652 A1).
Regarding claim 1, Ishiguro et al. disclose a composition comprising cellulose acetate, plasticizer, and fumed silica Aerosil 972 [0281-0283].
Ishiguro et al. is silent on the silica microparticles is used as a rheological modifier and has a refractive index units as recited in the instant claim.
However, in view of the instant specification, Aerosil 972 is listed as a suitable rheological modifier (see instant specification [0024]). Therefore, the properties of the rheological modifier is inherent.
Ishiguro et al. teach the amount of plasticizers within the composition comprises 11.7 parts by weight of plasticizers, equivalent to 2.3% by weight of the total composition and thereby lying outside the claimed range.
Feng et al. teach cellulose ester compositions comprising cellulose ester and 0 to 15 wt% plasticizer (claim 1), thereby overlapping the claimed range of 5 to 30% by weight. Feng et al. offer the motivation that the plasticizer is present in an amount that does not substantially reduce the glass transition temperature (Tg) and heat distortion temperature (HDT) of the cellulose ester composition while maintaining good toughness, flow, and melt processability [0075]. Ishiguro et al. is also concerned with maintaining the glass transition temperature and melt processing [0173, 0194]. Therefore, it would have been obvious to one of ordinary skill in the art to use the amount as taught by Feng et al. with the composition of Ishiguro et al. with reasonable expectation that the processability would improve while maintaining the toughness of the cellulose ester.
Ishiguro et al. does not teach the plasticizers as recited in the instant claim.
Feng et al. teach cellulose ester compositions comprising cellulose ester and a plasticizer (claim 1). Feng et al. teach plasticizers include biphenyl diphenyl phosphate and di-octyl adipate among others [0075-0093], thereby reading on the instant claim. Therefore, biphenyl diphenyl phosphate and dioctyl adipate are considered to be equivalents and the examiner notes that the substitution of equivalents (i.e., biphenyl diphenyl phosphate and di-octyl adipate) requires no express motivation as long as the prior art recognizes the equivalency. In re Fount USPQ 532 (CCPA 1982); In re Siebentritt, 152 USPQ 618 (CCPA 1967); Graver Tank & Mfg. Co. Inc. v Linde Air Products Co., 85 USPQ 328 (USSC). Therefore it is prima facie obvious that biphenyl diphenyl phosphate and di-octyl adipate are considered to be equivalent (exchangeable), it is held that substitution of art recognized equivalents is within the level of ordinary skill in the art. (MPEP § 2144.06).
Ishiguro et al. do not disclose the example comprises cellulose acetate propinoate or cellulose acetate butyrate.
However, Ishiguro et al. do teach preferred examples of cellulose ester include cellulose acetate propinoate and cellulose acetate butyrate [0131]. Therefore, Ishiguro et al. teach the composition comprises cellulose acetate propinoate or cellulose acetate butyrate with “sufficient specificity” that one of ordinary skill in the art would arrive at the claimed combination. Moreover, one of ordinary skill in the art at the time of the claimed invention would have found it “obvious to try” cellulose acetate propinoate or cellulose acetate butyrate in the composition as the teaching represents a finite number of identified, predictable combinations. KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398 (2007).
Ishiguro et al. is silent on the melt strength enhancement (MSE), haze, and total light transmission.
In view of the substantially identical composition of Ishiguro et al., the composition of Ishiguro et al. will possess the claimed properties because MSE, haze, and total light transmission are inherent 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).)
Ishiguro et al. disclose the amount of silica microparticles is 0.8 parts by mass [0281-0283], equivalent to 0.159 wt% and thereby lying outside the claimed range.
Yao et al. teach a cellulose ester resin composition comprising glass flake, glass beads, and silica in an amount of 0% by mass to 5% by mass per the entire mass of the composition [0131], thereby overlapping the claimed range. Ishiguro et al. also teach a cellulose ester composition [0281]. Therefore, it would have been obvious to one of ordinary skill in the art to add the silica in the amount as taught by Yao et al. with the cellulose ester composition of Ishiguro et al. because both are concerned with cellulose ester compositions.
Ishiguro et al. is silent on the plasticized cellulose ester composition comprising a roll release agent as recited in the instant claim.
Compton et al. teach a cellulose ester composition comprising a roll release agent present in amount of about 0.1 wt% to about 2.0 wt% based on the total composition (claim 1). Compton et al. further teach the roll release agent is an ester fatty acid or an amide wax among others (page 12). Ishiguro et al. is also concerned with cellulose ester compositions [0281]. Therefore, it would have been obvious to one of ordinary skill in the art to add the roll release agent of Compton et al. with the cellulose ester composition of Ishiguro et al. because both are concerned with cellulose ester compositions.
Regarding claim 5 , Ishiguro et al. disclose Aerosil 972 is used, which is a fumed silica.
Regarding claim 7, Ishiguro et al. disclose Aerosil 972 is used, which has a specific surface area of 110 m2/g and therefore lying within the claimed range of 100 to 600 m2/g.
Regarding claim 10, Ishiguro et al. do not disclose in the example further additional additives were present in the composition.
However, Ishiguro et al. do teach additional additives such as stabilizers and UV absorbers can also be added [0207-0226]. Therefore, Ishiguro et al. teach the composition comprises UV absorbers with “sufficient specificity” that one of ordinary skill in the art would arrive at the claimed combination. Moreover, one of ordinary skill in the art at the time of the claimed invention would have found it “obvious to try” UV absorbers as the additives in the composition as the teaching represents a finite number of identified, predictable combinations. KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398 (2007).
Regarding claim 13, Ishiguro et al. is silent on the CIELAB b* value of the composition as recited in the instant claims. In view of the substantially identical composition of Ishiguro et al., the composition of Ishiguro et al. will possess the claimed properties because CIELAB b* value is an inherent property. 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).)
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Ishiguro et al. (US 20130321723) in view of Feng et al. (WO 2018089573), Yao et al. (US 20160090471), and Compton et al. (WO 2018017652 A1) and in further view of Odum et al. (WO 2018057602).
The composition of claim 1 is incorporated herein by reference.
Regarding claim 15, Ishiguro et al. is silent on the composition is used as a multilayer resilient flooring article.
Odum et al. teach flooring article comprising a laminated wear layer comprising a cellulose
acetate (abstract, [0078-0087]). Ishiguro et al. is also concerned with cellulose acetate films [0281].
Therefore, it would have been obvious to use the calendered film of Ishiguro et al. as a wear layer as
taught by Odum et al. since both are related to cellulose acetate ester films.
Response to Arguments
Applicant’s arguments, see page 7, filed December 12, 2025, with respect to the rejection(s) of claim(s) 1-3, 5-7, 12-14, and 16-17 under 35 U.S.C. 102(a)(1) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made under 35 U.S.C. 103 in view of Ishiguro et al. (US 20130321723) in view of Feng et al. (WO 2018089573), Yao et al. (US 20160090471), and Compton et al. (WO 2018017652 A1).
Applicant states “Ishiguro teaches a rheology modifier that is a lower concentration than is taught by the current claims.”
The examiner agrees and directs attention to the new grounds of rejection of claim 1, wherein Yao et al. teach a cellulose ester resin composition comprising glass flake, glass beads, and silica in an amount of 0% by mass to 5% by mass per the entire mass of the composition [0131], thereby overlapping the claimed range. Ishiguro et al. also teach a cellulose ester composition [0281]. Therefore, it would have been obvious to one of ordinary skill in the art to add the silica in the amount as taught by Yao et al. with the cellulose ester composition of Ishiguro et al. because both are concerned with cellulose ester compositions.
Applicant states “Feng must include an impact modifier, but none of the inventive examples include a plasticizer. Applicants submit that the only example in Feng with dioctyl adipate as a plasticizer was a comparative example. On the other hand, the examples in Ishiguro only use phosphate based plasticizers. Therefore, Feng teaches away from using dioctyl adipate in favor of a phosphate based plasticizer.”
The examiner respectfully disagrees that such a disclosure constitutes a teaching away. "The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain." (In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)).) Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. (MPEP 2123 (II) (citing In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). "A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use." (In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994).) Thus, although Ishiguro and Feng may disclose a preferred embodiment of the recited compound, such a disclosure does not teach away from the broader disclosure and the teachings of the nonpreferred embodiments.
Applicant states “With regards to diphenyl biphenyl phosphate and dioctyl adipate as being
equivalent… Applicants submit that those two chemicals are so different chemically, that they would not be equivalent.”
The examiner disagrees. Feng et al. teach plasticizers that can be used with cellulose ester compositions include biphenyl diphenyl phosphate and di-octyl adipate among others [0075-0093]. Therefore, biphenyl diphenyl phosphate and dioctyl adipate are considered to be equivalents. Without providing data to demonstrate criticality, the 103 obviousness rejection is maintained.
Applicant states “Applicants have demonstrated that the melt-strength enhancement is improved within the rheology modifier range”.
The examiner disagrees. Applicant has not provided sufficient data showing the upper limit is critical. The highest amount of rheology modifier in Table 2 is 8%, which is the upper limit. The Applicant has provided no examples above the upper limit to show the MSE is reduced or otherwise changed above the upper limit. Thus, the Applicant has not shown criticality of the upper limit.
Applicant states “Ishiguro is directed to barrier element for optical displays, and Feng does not mention flooring. Applicants submit that a multilayer resilient flooring article is far different than a multiwall film.”
The examiner agrees and directs attention to the new rejection of claim 15, wherein Odum et al. teach flooring article comprising a laminated wear layer comprising a cellulose
acetate (abstract, [0078-0087]). Ishiguro et al. is also concerned with cellulose acetate films [0281].
Therefore, it would have been obvious to use the calendered film of Ishiguro et al. as a wear layer as
taught by Odum et al. since both are related to cellulose acetate ester films.
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 ANDREA WU whose telephone number is (571)272-0342. The examiner can normally be reached M F 8 - 5.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached at (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