DETAILED ACTION
Applicant’s response of January 2, 2026 has been fully considered. Claims 1, 5, 6, 10, 151, and 17 are amended and claims 2-4 and 11-13 are cancelled. Claims, 1, 5-10, and 14-20 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 § 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, 5-9, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Takeda et al. (US 2009/0081388) in view of Pecorini et al. (WO 2018/089594) and Everett et al. (US 2020/0063353).
Regarding claims 1, 5, 6, and 9, Takeda et al. teaches an optical cellulose film comprising a cellulose ester (A); at least one ester-based plasticizer (B); at least one stabilizer (C); and a hydrogen bonding solvent (D) (¶12). Specifically, Examples 10-14 in Table 1 teach a composition comprising cellulose ester, a plasticizer, a primary antioxidant, and a secondary antioxidant.
Takeda et al. does not teach that the composition comprises calcium stearate as the metal (C6-25)alkanoate in an amount of no more than 3% by weight. However, Pecorini et al. teaches a cellulose ester composition used for making films (Page 4, lines 1-2; Page 50, line 27) comprising from about 0.2 to about 2% by weight of an acid scavenger such as calcium stearate (Page 3, lines 11-16; Page 24, lines 1-3). Takeda 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 cellulose ester containing 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 calcium stearate, as taught by Pecorini et al., to the composition, as taught by Takeda et al., and would have been motivated to do so because acid scavengers neutralize acids that form during the processing of polymers (Page 3, lines 11-16).
Takeda et al. does not teach that the film is formed at a temperature of from 150 to 250° C using a calendar. However, Everett et al. teaches a film containing cellulose ester fibers and a plasticizer (Abstract) wherein the film is made using a calendar at a temperature of from 75 to 210° C (¶703, 709). Takeda et al. and Everett et al. are analogous art because they are from the same field of endeavor as that of the instant invention, namely films containing cellulose ester. 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 the composition, as taught by Takeda et al., to form a film using a calendar at a temperature of from 75 to 210° C, as taught by Everett et al., and would have been motivated to do so because a calendar can be run at high rates, accurately controls the gauge and quickly controls the thickness (¶706).
Regarding claim 7, Takeda et al. does not teach that the composition comprises triethylene glycol bis(2-ethylhexanoate) as the plasticizer. However, Pecorini et al. teaches a cellulose ester composition used for making films (Page 4, lines 1-2; Page 50, line 27) comprising a plasticizer that is di-2-ethylhexyl polyethylene glycol ester (Page 49, line 9). 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 di-2-ethylhexyl polyethylene glycol ester, as taught by Pecorini et al., as the plasticizer in the composition, as taught by Takeda et al., and would have been motivated to do so because Pecorini et al. teaches that this is a suitable plasticizer for cellulose ester films.
Regarding claim 8, Takeda et al. does not teach that the composition comprises an impact modifier. However, Pecorini et al. teaches a cellulose ester composition used for making films (Page 4, lines 1-2; Page 50, line 27) comprising an impact modifier (Page 37, lines 4-7). 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 an impact modifier, as taught by Pecorini et al., to the composition, as taught by Takeda et al., and would have been motivated to do so in order to increase the impact strength of the cellulose ester composition (Page 37, lines 4-7).
Regarding claim 20, the combination of Takeda et al., Pecorini et al., and Everett et al. do not teach that during the forming step, acid generation is reduced by 90% relative to a dry blend 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., reduced acid generation by 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.
Claims 10 and 14-19 are rejected under 35 U.S.C. 103 as being unpatentable over Takeda et al. (US 2009/0081388) in view of Pecorini et al. (WO 2018/089594) and Everett et al. (US 2020/0063353).
Regarding claims 10, 14, 15, 18, and 19, Takeda et al. teaches an optical cellulose film comprising a cellulose ester (A); at least one ester-based plasticizer (B); at least one stabilizer (C); and a hydrogen bonding solvent (D) (¶12). Specifically, Examples 10-14 in Table 1 teach a composition comprising cellulose ester, a plasticizer, a primary antioxidant, and a secondary antioxidant. Takeda et al. additionally teaches using an extruder to melt mix the ingredients in the blend before the film is made (¶162). This process of melt mixing forms the blend.
Takeda et al. does not teach that the composition comprises calcium stearate as the metal (C6-25)alkanoate in an amount of no more than 3% by weight. However, Pecorini et al. teaches a cellulose ester composition used for making films (Page 4, lines 1-2; Page 50, line 27) comprising from about 0.2 to about 2% by weight of an acid scavenger such as calcium stearate (Page 3, lines 11-16; Page 24, lines 1-3). Takeda 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 cellulose ester containing 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 calcium stearate, as taught by Pecorini et al., to the composition, as taught by Takeda et al., and would have been motivated to do so because acid scavengers neutralize acids that form during the processing of polymers (Page 3, lines 11-16).
Takeda et al. does not teach that the film is formed at a temperature of from 150 to 250° C using a calendar. However, Everett et al. teaches a film containing cellulose ester fibers and a plasticizer (Abstract) wherein the film is made using a calendar at a temperature of from 75 to 210° C (¶703, 709). Takeda et al. and Everett et al. are analogous art because they are from the same field of endeavor as that of the instant invention, namely films containing cellulose ester. 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 the composition, as taught by Takeda et al., to form a film using a calendar at a temperature of from 75 to 210° C, as taught by Everett et al., and would have been motivated to do so because a calendar can be run at high rates, accurately controls the gauge and quickly controls the thickness (¶706).
Regarding claim 16, Takeda et al. does not teach that the composition comprises triethylene glycol bis(2-ethylhexanoate) as the plasticizer. However, Pecorini et al. teaches a cellulose ester composition used for making films (Page 4, lines 1-2; Page 50, line 27) comprising a plasticizer that is di-2-ethylhexyl polyethylene glycol ester (Page 49, line 9). 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 di-2-ethylhexyl polyethylene glycol ester, as taught by Pecorini et al., as the plasticizer in the composition, as taught by Takeda et al., and would have been motivated to do so because Pecorini et al. teaches that this is a suitable plasticizer for cellulose ester films.
Regarding claim 17, Takeda et al. does not teach that the composition comprises an impact modifier. However, Pecorini et al. teaches a cellulose ester composition used for making films (Page 4, lines 1-2; Page 50, line 27) comprising an impact modifier (Page 37, lines 4-7). 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 an impact modifier, as taught by Pecorini et al., to the composition, as taught by Takeda et al., and would have been motivated to do so in order to increase the impact strength of the cellulose ester composition (Page 37, lines 4-7).
Response to Arguments
Applicant's arguments filed January 2, 2026 have been fully considered but they are not persuasive.
Applicant argues that Pecorini et al. does not motivate or teach one of ordinary skill in the art to use calcium stearate over other acid scavengers such as Drapex 4.4 or Vikoflex X 7170, which are the acid scavengers used in the examples of Pecorini et al. This argument is unpersuasive. A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). MPEP 2123. The teaching and suggestion of a reference is not limited to what is used in the examples, but is based on all that it would have reasonably suggested to one having ordinary skill in the art. In this case, Pecorini et al. specifically lists calcium stearate as an acceptable acid scavenger for use in the disclosed invention (Page 3, lines 11-23). Therefore, Pecorini et al. does teach one of ordinary skill in the art to use calcium stearate as an acid scavenger and this argument is unpersuasive.
Applicant argues that the instant invention has achieved unexpected results in using a metal stearate as the acid scavenger in the composition as compared to using Drapex 4.4 or Vikoflex X 7170. This argument is unpersuasive. In response to applicant’s argument that the instant invention has achieved unexpected results, the Office points out that enhancing and improving upon existing properties is not necessarily equated to the generation of unexpected results. Any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected. In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). See MPEP §716.02. Further, whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the “objective evidence of non-obviousness must be commensurate in scope with the claims which the evidence is offered to support.” In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). MPEP 716.02(d).
In this case, the examples are not commensurate in scope with the claims. Claim 1 is directed to the use of any metal C6-25 alkanoate. This recitation is much broader than calcium stearate and zinc stearate which are used in the instant examples. Further, no amount is provided in claim 1 for this component. Therefore, any amount of metal alkanoate can be used and the unexpected results would need to be shown to occur over an extremely broad range of values and not simply at 2% by weight as in the instant examples. Even considering the limitations of claims 5 and 6, which limit the acid scavenger to no more than 3% by weight of calcium stearate, the claimed range of 3% by weight or less cannot be represented by one value at 2% by weight. There is no way to determine if the alleged unexpected results would occur over the entire claimed range. Therefore, proper evidence of unexpected results has not been shown and this argument is unpersuasive.
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.
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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