DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 August 4, 2026 has been entered.
Claims 1 and 101 are amended and claims 2-6, 11-15, and 20 are cancelled. Claims 1, 7-10, and 16-19 are pending.
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 § 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.
Claims 1, 7-10, and 16-19 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claims 1 and 10, claims 1 and 10 each recite “wherein during the forming step, acid generation is reduced by 90% relative to a dry blend not comprising the additive.” This limitation is indefinite for at least three reasons. First, it is unclear what quantity is being measured and by what method because the specification does not measure acid generation during a forming step at all; rather, the reported values are obtained by cutting a previously formed film into strips, sealing the strips in a 20 mL headspace vial, heating the vial at 190 °C for 10 minutes, and quantifying propionic acid by headspace GC/MS (¶163-169 of instant PG-PUB). It cannot be determined whether the claim requires that measurement protocol, some other protocol, or a measurement performed contemporaneously with calendering. Second, the comparative baseline, “a dry blend not comprising the additive,” is not defined; it is unclear whether the baseline must be identical in every other respect to the claimed blend, whether it must itself be calendered, and what “dry” requires given that the claimed blend is a melt-mixed composition. Third, it is unclear whether “reduced by 90%” requires exactly 90 percent or at least 90 percent; paragraph 133 separately describes reductions of at least 95%, at least 97%, and at least 99%, which would fall outside a literal reading of “by 90%.” Clarification is required.
For purposes of further examination, this limitation will be interpreted as requiring an acid reduction of at least about 90 percent relative to an otherwise identical blend lacking the additive, measured by any reasonable method.
Regarding claims 7-9 and 16-19, these claims depend from a rejected claim and include all of the limitations thereof. Therefore, they are also rejected.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 7, and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Compton et al. (WO 2018/017652) in view of Toyama et al. (WO 2019/117316). For convenience, the citations below for Toyama et al. are taken from English language equivalent, EP 3725835.
Regarding claim 1, Compton et al. teaches a process for preparing a film or a sheet comprising steps of: (1) selecting a composition comprising (a) a cellulose ester component; (b) a plasticizer (modifier); (c) a roll release agent (metal alkanoate additive); and (d) a processing aid, wherein the plasticizer is present in the composition in the range of from about 0 wt % to about 40.0 wt % based on the total weight of the composition, wherein the roll release agent is present in the composition in the range of from about 0.1 wt % to about 2.0 wt %, wherein the processing aid is present in the composition in the range of from about 0 wt % to about 6.0 wt % based on the total weight of the composition, wherein the cellulose ester has a glass transition temperature from about 80 °C to about 200 °C, and (2) calendering the composition by introducing the composition in pellet, powder, flake or melt form between at least a first calendering roll and a second calendering roll that are adjacent and heated thereby to form the film or sheet, wherein the surface temperature of the first calendering roll is within the range of from the sum of the glass transition temperature of the cellulose ester minus 20 °C to the sum of the glass transition temperature of the cellulose ester plus 50 °C (Page 68, line 26 to Page 69, line 22). Based on the glass transition temperature range provided, the surface temperature of the first calendering roll is in a range of from 60 °C to 250 °C, a range which overlaps with that claimed.
Compton et al teaches that the roll release agent is an ester of a fatty acid, fatty acids, or fatty acid salts (Page 12, lines 5-8). Compton et al. does not teach that the fatty acid salt of this component is specifically calcium stearate. However, Toyama et al. teaches a cellulose resin composition that can be used to make a film by press molding (¶129), the composition comprising an acylated cellulose and from 0.1 to 10% by mass of a lubricant (¶14). The acylated cellulose is at least one of cellulose acetate, cellulose acetate propionate, cellulose acetate butyrate, or mixtures thereof (¶22-23). The lubricant is preferably calcium stearate (a fatty acid metal salt) (¶27). Additionally, the composition may also contain a plasticizer (¶29). Compton et al. and Toyama et al. are analogous art because they are from the same field of endeavor as that of the instant invention, namely melt-processed compositions of cellulose ester resins containing a plasticizing component and a lubricant/release additive. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to use calcium stearate, as taught by Toyama et al., as the roll release agent in the composition, as taught by Compton et al., and would have been motivated to do so because calcium stearate is preferred by Toyama et al. and provides superior friction resistance, bleed-out resistance, and appearance (¶149). The selection of a known material for its known and art-recognized purpose, from a genus expressly identified by the primary reference, is prima facie obvious. See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327 (1945); MPEP 2144.07.
Compton et al. and Toyama et al. do not explicitly teach that acid generation is reduced by at least 90% relative to a dry blend of the same composition but not comprising the additive. The Office realizes that all of the claimed effects or physical properties are not positively stated by the references. However, the references teach all of the claimed ingredients in the claimed amounts made by a substantially similar process. Moreover, the original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amounts. Therefore, the claimed effects and physical properties, i.e., a reduction in acid generation by at least 90%, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the 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 there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Regarding claim 7, Compton et al. teaches that the plasticizer can be triethylene glycol bis-ethylhexanoate (Page 11, lines 19-21).
Regarding claim 8, Compton et al. teaches that the composition also includes an impact modifier (Page 14, lines 5-7).
Claims 10, 16, 17, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Compton et al. (WO 2018/017652) in view of Toyama et al. (WO 2019/117316). For convenience, the citations below for Toyama et al. are taken from English language equivalent, EP 3725835.
Regarding claims 10 and 19, Compton et al. teaches a process for preparing a film or a sheet comprising steps of: (1) selecting a composition comprising (a) a cellulose ester component; (b) a plasticizer (modifier); (c) a roll release agent (metal alkanoate additive); and (d) a processing aid, wherein the plasticizer is present in the composition in the range of from about 0 wt % to about 40.0 wt % based on the total weight of the composition, wherein the roll release agent is present in the composition in the range of from about 0.1 wt % to about 2.0 wt %, wherein the processing aid is present in the composition in the range of from about 0 wt % to about 6.0 wt % based on the total weight of the composition, wherein the cellulose ester has a glass transition temperature from about 80 °C to about 200 °C, and (2) calendering the composition by introducing the composition in pellet, powder, flake or melt form between at least a first calendering roll and a second calendering roll that are adjacent and heated thereby to form the film or sheet, wherein the surface temperature of the first calendering roll is within the range of from the sum of the glass transition temperature of the cellulose ester minus 20 °C to the sum of the glass transition temperature of the cellulose ester plus 50 °C (Page 68, line 26 to Page 69, line 22). Based on the glass transition temperature range provided, the surface temperature of the first calendering roll is in a range of from 60 °C to 250 °C, a range which overlaps with that claimed. Before calendering the composition, it is formed by melt mixing the polymer with appropriate plasticizers, processing aids, stabilizers, colorants, release agents, fillers, etc. using a mixing device such as a Banbury mixer, kneader, extruder, or Farrell continuous mixer. This molten mass can be applied to the calender (Page 3, lines 24-29).
Compton et al teaches that the roll release agent is an ester of a fatty acid, fatty acids, or fatty acid salts (Page 12, lines 5-8). Compton et al. does not teach that the fatty acid salt of this component is specifically calcium stearate. However, Toyama et al. teaches a cellulose resin composition that can be used to make a film by press molding (¶129), the composition comprising an acylated cellulose and from 0.1 to 10% by mass of a lubricant (¶14). The acylated cellulose is at least one of cellulose acetate, cellulose acetate propionate, cellulose acetate butyrate, or mixtures thereof (¶22-23). The lubricant is preferably calcium stearate (a fatty acid metal salt) (¶27). Additionally, the composition may also contain a plasticizer (¶29). Compton et al. and Toyama et al. are analogous art because they are from the same field of endeavor as that of the instant invention, namely melt-processed compositions of cellulose ester resins containing a plasticizing component and a lubricant/release additive. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to use calcium stearate, as taught by Toyama et al., as the roll release agent in the composition, as taught by Compton et al., and would have been motivated to do so because calcium stearate is preferred by Toyama et al. and provides superior friction resistance, bleed-out resistance, and appearance (¶149). The selection of a known material for its known and art-recognized purpose, from a genus expressly identified by the primary reference, is prima facie obvious. See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327 (1945); MPEP 2144.07.
Compton et al. and Toyama et al. do not explicitly teach that acid generation is reduced by at least 90% relative to a dry blend of the same composition but not comprising the additive. The Office realizes that all of the claimed effects or physical properties are not positively stated by the references. However, the references teach all of the claimed ingredients in the claimed amounts made by a substantially similar process. Moreover, the original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amounts. Therefore, the claimed effects and physical properties, i.e., a reduction in acid generation by at least 90%, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the 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 there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Regarding claim 16, Compton et al. teaches that the plasticizer can be triethylene glycol bis-ethylhexanoate (Page 11, lines 19-21).
Regarding claim 17, Compton et al. teaches that the composition also includes an impact modifier (Page 14, lines 5-7).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Compton et al. (WO 2018/017652) in view of Toyama et al. (WO 2019/117316) as applied to claim 1 above, and further in view of Pecorini et al. (WO 2018/089594). For convenience, the citations below for Toyama et al. are taken from English language equivalent, EP 3725835.
Regarding claim 9, Compton et al. and Toyama et al. teach the process of claim 1 as set forth above. Compton et al. does not teach that the composition further comprises a secondary antioxidant. However, Pecorini et al. teaches a composition comprising a cellulose ester, a plasticizer (Page 1, lines 25-30), a salt stabilizer (Page 21, lines 10-11), a primary antioxidant (Page 22, lines 23-25), a secondary antioxidant (Page 23, lines 20-22), an acid scavenger (Page 24, lines 1-3), and an impact modifier (Page 37, lines 4-6) that is used to make articles through sheet or film extrusion (Page 50, lines 22-28). Compton et al. and Pecorini et al. are analogous art because they are from the same field of endeavor as that of the instant invention, namely that of melt-processed cellulose ester compositions used for making sheets and films. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to add a secondary antioxidant, as taught by Pecorini et al., to the composition, as taught by Compton et al., and would have been motivated to do so in order to decompose hydroperoxides formed during melt processing and thereby further stabilize the composition against thermal and oxidative degradation (Page 2, lines 25-28).
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Compton et al. (WO 2018/017652) in view of Toyama et al. (WO 2019/117316) as applied to claim 10 above, and further in view of Pecorini et al. (WO 2018/089594). For convenience, the citations below for Toyama et al. are taken from English language equivalent, EP 3725835.
Regarding claim 18, Compton et al. and Toyama et al. teach the process of claim 10 as set forth above. Compton et al. does not teach that the composition further comprises a secondary antioxidant. However, Pecorini et al. teaches a composition comprising a cellulose ester, a plasticizer (Page 1, lines 25-30), a salt stabilizer (Page 21, lines 10-11), a primary antioxidant (Page 22, lines 23-25), a secondary antioxidant (Page 23, lines 20-22), an acid scavenger (Page 24, lines 1-3), and an impact modifier (Page 37, lines 4-6) that is used to make articles through sheet or film extrusion (Page 50, lines 22-28). Compton et al. and Pecorini et al. are analogous art because they are from the same field of endeavor as that of the instant invention, namely that of melt-processed cellulose ester compositions used for making sheets and films. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to add a secondary antioxidant, as taught by Pecorini et al., to the composition, as taught by Compton et al., and would have been motivated to do so in order to decompose hydroperoxides formed during melt processing and thereby further stabilize the composition against thermal and oxidative degradation (Page 2, lines 25-28).
Response to Arguments
Applicant’s arguments with respect to claims 1, 7-10, and 16-19 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant also argued that the instant invention has achieved unexpected results and that, with the new claim amendments, the examples provided in the instant specification are commensurate in scope. This argument is unpersuasive. While applicant has narrowed the instant claims to 0.05 to 2% by weight of calcium stearate as the metal alkanoate additive, the examples still do not show an unexpected result occurring over the entire claimed range. The only example containing calcium stearate is Example 12 and the calcium stearate is present at 2% by weight. There is no example to show that the same result occurs at 0.05% of calcium stearate. Additionally, if applicant proceeds to argue that the range is critical, then amounts outside of the claimed range would also need to be provided. Therefore, applicant has not shown evidence of unexpected results and this argument is unpersuasive.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
US 6,846,440 discloses, for calendering, additives that prevent sticking to the calendering rolls including metal salts of organic acids such as calcium stearate and zinc stearate at 0.01 to 10% by weight, with nip temperatures of about 130 °C to about 250 °C.
WO 2020/028633 discloses calendered films of cellulose ester and plasticizer, including a cellulose-ester-only example milled at 330–360 °F, with calcium-zinc heat stabilizers.
WO 2018/089575 discloses cellulose ester compositions comprising a secondary antioxidant and an acid scavenger in the range from about 0.2 to about 2.0% by weight.
US 4,345,046 discloses calcium stearate as a calendering lubricant and as an acid acceptor.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANGELA C SCOTT whose telephone number is (571)270-3303. The examiner can normally be reached Monday-Friday, 8:30-5:00, EST.
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/ANGELA C SCOTT/Primary Examiner, Art Unit 1767
1 The claim modifier of this claim should be “currently amended.” Please ensure proper claim modifiers are used in further submissions.
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