DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after 16 March 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 1 April 2026, has been entered.
Status of Claims
Claims 1 and 6-7 are amended.
Claim 2 is cancelled.
Claims 1 and 3-20 are pending and under consideration in the instant Office Action.
Rejections Withdrawn
Rejections pursuant to 35 U.S.C. § 103
The rejections of claims 1 and 3-20 under 35 U.S.C. § 103 are withdrawn in view of Applicant’s amendment to claim 1 and in favor of the new grounds of rejection below. The rejection of claim 2 under 35 U.S.C. § 103 has been rendered moot by Applicant’s rejection of the claim.
Double Patenting Rejections
The nonstatutory double patenting rejection of claims 1-16 is withdrawn in view of Applicant’s amendment to claims 1 and 6-7 and in favor of the new grounds of rejection below.
New Grounds of Rejection
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.
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, 3-4, 7-10, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Daicel Corp. (Japanese Patent No. JPH 11255959 A, published on 21 September 1999, references to English translation, hereafter referred to as Daicel) in view of Kaully et al. (U.S. Patent Application Publication No. US 2009/0162447 A1, published on 25 June 2009, hereafter referred to as Kaully).
Daicel teaches a cellulose acetate-based resin composition that is uniformly plasticized (Abstract). The cellulose acetate particles are taught to have a diameter of greater than 100 nm and less than 150 mm, encompassing the ranges recited in instant claims 1 and 7 (claims 1-2). The plasticizer mixed with the cellulose acetate particles is taught to be 20-100 parts to 100 parts cellulose acetate, resulting in 20-100% by weight and encompassing the range recited in instant claim 3 (claim 1). In one embodiment, the plasticizer taught by Daicel is a phthalic acid ester (pg. 2, para. [0004], line 32).
Daicel does not teach the sphericity or surface smoothness of cellulose acetate particles nor their use in a cosmetic composition. These deficiencies are offset by the teachings of Kaully.
Kaully teaches the characteristics of round particles in the areas of food, pharmaceutics, and cosmetics (para. [0001-0002]). Many formulations comprise or are prepared from dry powders and the physical characteristics of the powder can impact the difficulty of processing by adhering to surfaces, consolidating during transportation and storage, and exhibiting poor flow (para. [0004-0005]). One approach to avoiding these drawbacks is the use of spherical non-agglomerated particles, such as microcrystalline cellulose, because the shape permits better packing, increasing efficient use of space (para. [0015-0016]). In addition, Kaully teaches that powder flowability is “sensitive to the shape and smoothness of the particles of the powder, with better flowability to particles having low roughness and minimal or no sharp edges” and “the velocity field of flowing particles which are round and smooth is substantially laminar with minimal or no turbulences” (para. [0096]).
One method of assessing the rounded shape of the particles taught by Kaully is the sphericity, which “generally quantifies the deviation of a particular geometrical shape from a perfect sphere” (para. [0123]). In preferred embodiments taught by Kaully, the sphericity of particles is “at least 80% more preferably at least 85%”, which is determined to fall within and/or significantly overlap with the ranges recited in instant claims 1 and 8 (para. [0128] and claim 29). In another embodiment, Kaully teaches that the particles are “characterized by a substantially smooth surface. Smooth surfaces can be characterized by low rugosity or conversely by high smoothness, which is commonly defined as the reciprocal to the rugosity of the surface” (para. 0132]). Kaully teaches the preferred roughness of particles to be lower than 1%, which would be equivalent to a smoothness of >99%, which falls within the ranges recited in instant claims 1 and 9 (para. [0136]). Finally, Kaully teaches that the particles of their invention can be “a carrier or base for cosmetic compositions, including, without limitation, a makeup composition” (para. [0085]).
Guidelines on the obviousness of similar and overlapping ranges, amounts, and proportions are provided in MPEP § 2144.05. With respect to claimed ranges which “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). These guidelines apply to the diameter of cellulose acetate particles taught by Daicel, the sphericity and surface smoothness taught by Kaully, and the quantity of particles used in a cosmetic composition taught by Kaully.
It would have been prima facie obvious to a person of ordinary skill in the art, prior to the filing of the instant application, to modify the teachings of Daicel with the teachings of Kaully to arrive at the invention of instant claims 1, 3-4, 7-10, 17 because the use of a known technique to improve a similar product in a known manner yields predictable results. Daicel teaches the cellulose acetate of their invention to be “pulverized” into particles that are 100 nm to 150 mm in size (Daicel, para. [0002]), but does not teach the particles to be spherical nor the smoothness of the particle exterior. An artisan would be motivated to measure these attributes and select spherical particles with the sphericity and surface smoothness detailed above in view of the teachings of Kaully because they teach the importance of these characteristics during manufacturing and packaging and the artisan would desire the improved efficiency provided by smooth, spherical particles.
The diameter of the spherical particles is taught by Daicel to be between 100 nm and 150 mm, which is equivalent to a radius that is between 50 nm and 75 mm, and allowing the surface area to be calculated using the formula for a sphere: A = 4pr2. Using the radius above, and the teaching of Kaully that the preferred sphericity of the particles is at least 85%, this results in a surface area range of ~0.03-7.0x104 mm2. The instant specification defines the relative specific surface area as a ratio of the surface area measured by particle size distribution to the surface area measured by the “BET method” (pg. 29, lines 14-27). Finally, Kaully teaches that the particles can be used in a cosmetic composition, which would provide an artisan a field in which their invention could have utility.
The biodegradation rate of the cellulose acetate particles recited in instant claim 1 and the surface area of the particles recited in instant claim 17 are inherent properties resulting from the composition of the cellulose acetate particles and diameter and shape of the particles, respectively. The surface area measured by the particle size distribution and BET methods is dictated by the accuracy and precision of the respective methods. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP § 2112.01. "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. Id.
"[I]nherency may supply a missing claim limitation in an obviousness analysis." PAR, 773 F.3d at 1194-1195; see also Endo Pharms. Sols., Inc. v. Custopharm Inc., 894 F.3d 1374, 1381, 127 U.S.P.Q.2D (BNA) 1409 (Fed. Cir. 2018). It is long settled that in the context of obviousness, the "mere recitation of a newly discovered function or property, inherently possessed by things in the prior art, does not distinguish a claim drawn to those things from the prior art." In re Oelrich, 666 F.2d 578, 581 (C.C.P.A. 1981). The Supreme Court explained long ago that "[i]t is not invention to perceive that the product which others had discovered had qualities they failed to detect." Gen. Elec. Co. v. Jewel Incandescent Lamp Co., 326 U.S. 242, 249, 66 S. Ct. 81, 90 L. Ed. 43, 1946 Dec. Comm'r Pat. 611 (1945).
Inherency, however, is a "high standard," that is "carefully circumscribed in the context of obviousness." PAR, 773 F.3d at 1195. Inherency "may not be established by probabilities or possibilities," and "[t]he mere fact that a certain thing may result from a given set of circumstances is not sufficient." Oelrich, 666 F.2d at 581 (emphasis added) (quoting Hansgirg v. Kemmer, 102 F.2d 212, 214, 26 C.C.P.A. 937, 1939 Dec. Comm'r Pat. 327 (C.C.P.A. 1939); see also In re Rijckaert, 9 F.3d 1531, 1533-1534 (Fed. Cir. 1993). Rather, inherency renders a claimed limitation obvious only if the limitation is "necessarily present," or is "the natural result of the combination of elements explicitly disclosed by the prior art." PAR, 773 F.3d at 119511-96.
Because the teachings of Daicel and Kaully have rendered obvious cellulose acetate particles of the same composition as recited in instant claim 1 and with diameters that fall within the ranges recited in instant claims 1 and 7, they will necessarily have rendered obvious the biodegradation rate and relative specific surface area recited in instant claims 1 and 7. As a result, there is a reasonable expectation of success in arriving at the invention of claims 1, 3-4, 7-10, and 17 in view of the teachings of Daicel and Kaully.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Daicel (Japanese Patent No. JPH 11255959 A, published on 21 September 1999, references to English translation) in view of Kaully (U.S. Patent Application Publication No. US 2009/0162447 A1, published on 25 June 2009) as applied to claims 1, 3-4, 7-10, and 17 above, and further in view of Ando et al. (U.S. Patent Application Publication No. US 2017/0058116 A1, published on 2 March 2017, hereafter referred to as Ando).
Daicel and Kaully teach the above, and particularly relevant to instant claim 5, the cellulose acetate particles are taught to be 100 nm to 150 mm in size.
Daicel and Kaully do not teach the particle size variation coefficient of the cellulose acetate particles. This deficiency is offset by the teachings of Ando.
Ando teaches composite particles, which comprise large and small polymer particles, a method of their production, and their use in products such as external preparations, which includes cosmetics (Abstract and para. [0001-0002]). Ando teaches that traditional production methods produce particles with size distributions that are “undesirably wide” (para. [0005]). Ando teaches a method of calculating the size distribution of particles, described as the “coefficient of variation (CV)”, and calculated as follows: (standard deviation of the volume of particles / average volume of particles) x 100 (para. [0196]). By modifying manufacturing conditions, Ando teaches that an acceptable CV can be reached between 10-50% (para. [0006] and Examples 1-17), which significantly overlaps with the range recited in instant claim 5.
It would have been prima facie obvious to a person of ordinary skill in the art, prior to the filing of the instant application, to modify the invention rendered obvious by the teachings of Daicel and Kaully with the teachings of Ando to arrive at the invention of claim 5 because applying a known technique to a known product yields a predictable result. Daicel teaches the desired sizes of cellulose acetate particles in the invention described above, but neither Daicel nor Kaully teach an acceptable variation in size. Ando teaches that large CV values are undesirable and that values of 10-50% are acceptable for polymeric particles used in cosmetics. An artisan would be motivated to use these teachings to measure the CV of the particles in their invention and utilize only particles within the CV range of 10-50% because this range is known to be acceptable for cosmetic compositions. As a result, there is a reasonable expectation of success in arriving at the invention of claim 5 in view of the teachings of Daicel and Kaully and further in view of the teachings of Ando.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Daicel (Japanese Patent No. JPH 11255959 A, published on 21 September 1999, references to English translation) in view of Kaully (U.S. Patent Application Publication No. US 2009/0162447 A1, published on 25 June 2009) as applied to claims 1, 3-4, 7-10, and 17 above, and further in view of Capanema et al. (U.S. Patent Application Publication No. US 2017/0275385 A1, published on 28 September 2017, hereafter referred to as Capanema).
Daicel and Kaully teach the above.
Daicel and Kaully do not teach the bulk density of the cellulose acetate particles. This deficiency is offset by the teachings of Capanema.
Capanema teaches cellulose-containing compositions, methods of making the compositions, and their utilization in fields including cosmetics (para. [0002]). Cellulosic materials are taught to deserve special consideration as polymers due to being renewable, biodegradable, and the world’s most abundant natural polymer (para. [0003]). The loose bulk density (LBD) is taught to be a common property for dry goods and is a measure of “the weight of the cellulose product relative to the volume of the cellulose product, without any substantial compaction” (para. [0111]). Acceptable LBD values are taught to be 0.15-0.50 g/mL for cellulose products used in the field of cosmetics, which falls within the range recited in instant claim 6 (para. [0111] and [0130]).
It would have been prima facie obvious to a person of ordinary skill in the art, prior to the filing of the instant application, to modify the invention rendered obvious by the teachings of Daicel and Kaully with the teachings of Capanema to arrive at the invention of claim 6 because applying a known technique to a known product yields a predictable result. Daicel teaches the desired sizes of cellulose acetate particles in the invention described above, but neither Daicel nor Kaully teach an acceptable bulk density of the particles. Capanema teaches the property LBD and that values of 0.15-0.50 g/mL are acceptable for cellulosic particles used in cosmetics. An artisan would be motivated to use these teachings to measure the LBD of the particles in their invention and utilize particles within the LBD range of 0.15-0.50 g/mL because particles in this range are known to be acceptable for cosmetic compositions. As a result, there is a reasonable expectation of success in arriving at the invention of claim 6 in view of the teachings of Daicel and Kaully and further in view of the teachings of Capanema.
Claims 11-16 are rejected under 35 U.S.C. 103 as being unpatentable over Daicel (Japanese Patent No. JPH 11255959 A, published on 21 September 1999, references to English translation) in view of Kaully (U.S. Patent Application Publication No. US 2009/0162447 A1, published on 25 June 2009) as applied to claims 1, 3-4, 7-10, and 17 above, and further in view of Erdmann et al. (Materials 2014, 7, 7752., hereafter referred to as Erdmann), Moraes et al. (Mater. Sci. Eng., C 2017, 78, 932., hereafter referred to as Moraes), and Ando (U.S. Patent Application Publication No. US 2017/0058116 A1, published on 2 March 2017).
Daicel and Kaully teach the above, and particularly relevant to claims 11-16, Daicel teaches the creation of thermoplastic cellulose acetate using phthalic acid ester as a plasticizer and molding the plasticized cellulose acetate composition at a temperature of 150-250 °C, as higher temperatures cause thermal decomposition (English translation pg. 2, final 2 lines).
Daicel and Kaully do not teach the temperature at which cellulose acetate and the plasticizer are mixed prior to melt-kneading nor adding and then removing a water-soluble polymer. These deficiencies are offset by the teachings of Erdmann, Moraes, and Ando.
Erdmann teaches the properties of plasticized cellulose acetate as a function of different additives (Abstract). Cellulose acetate, taught to be one of the oldest bio-based polymers in the world, is a desirable polymer because it is “non-toxic, antiallergenic, and has excellent optical and dielectrical properties” (pg. 7753, 1. Introduction, para. 1). Cellulose acetate is taught to have issues during melt processing due to its narrow temperature window between melting and decomposing, which led to the predominant modification of plasticizer addition (pg. 7753, 1. Introduction, para. 1). However, many commonly used plasticizers evaporate during melt processing or leach out of the thermoplastic during use (pg. 7753, 1. Introduction, para. 1).
To overcome the above difficulties, Erdmann teaches a reactive melt processing technique which utilizes the plasticizers glycerol triacetate and triethyl citrate (pg. 7753, 1. Introduction, para. 2 and pg. 7753, 2. Experimental Section, 2.1. Materials). Cellulose acetate, the chosen plasticizer, and 4,4’-methylene diphenyl diisocyanate (MDI) are dry blended at room temperature, then heated to 210 °C and melt-mixed until homogenous - approximately 180 s after mixing began (pg. 7753-7754, 2. Experimental Section, 2.2. Reactive Melt Processing Conditions and Online Measurements). Erdmann concludes by teaching that the plasticized cellulose acetate does not dissolve in typical solvents for the biopolymer, exhibits improved viscoelastic properties, and exhibits improved thermal stability (pg. 7765-7766, 4. Conclusions).
Guidelines on the obviousness of similar and overlapping ranges, amounts, and proportions are provided in MPEP § 2144.05. With respect to claimed ranges which “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). These guidelines apply to the temperatures taught by Erdmann, which each fall within the temperature ranges recited in instant claims 11-12.
Moraes teaches methods of manufacturing commercially feasible and biodegradable plastic materials using a blend of thermoplastic starch and plasticized cellulose acetate (Abstract). Thermoplastic starch is taught to be an inexpensive and abundant biomaterial that is biodegradable, a desirable attribute in plastics, but has drawbacks including poor processibility and mechanical properties, particularly at high relative humidity (pg. 932, 1. Introduction, para. 1-2). Cellulose acetate is taught, when incorporated with a plasticizer, to become a thermoplastic material which may exhibit “a hard surface, high heat resistance and tensile strength, a great rigidity, and a good dimensional stability” with lower plasticizer content or increased impact strength with higher plasticizer content (pg. 932, right column, final para. – pg. 933, left column, para. 1). A blend of thermoplastic starch and plasticized cellulose acetate (TPS/PCA) is hypothesized to possess properties similar to commercial polystyrene and Moraes devotes their study to investigating the properties of the material (pg. 933, left column, para. 1 and 4).
The TPS/PCA blend was analyzed by SEM and DSC and found to have better plasticization that other blends (pg. 935, right column, para. 1), as well as good compatibility of components leading to compact and homogenous structures (pg. 936, right column, para. 2). Plastic sheets made from the TPS/PCA blend were also taught to have more elastic and resistant sheets following mechanical stress tests (pg. 938, 3.4. Mechanical properties). Moraes concludes that TPS and PCA have great compatibility and the TPS/PCA blend possessed “better mechanical properties, especially at higher processing temperatures, which allow them to be considered as a novel eco-friendly, economic feasible alternative to non-biodegradable plastic materials” (pg. 940, 4. Conclusion).
Ando teaches composite particles, which comprise large and small polymer particles, a method of their production, and their use in products such as external preparations, which includes cosmetics (Abstract and para. [0001-0002]). Ando teaches a method of producing polymer particles comprising monomers, water, and the water-soluble polymer polyvinyl alcohol (PVA) as a dispersant (Comparative Example 6). Following polymerization at an elevated temperature, the reaction mixture was cooled and the liquid, including PVA, was removed to yield spherical polymer particles (para. [0293]).
It would have been prima facie obvious to one of ordinary skill in the art, prior to the filing of the instant application, to use the methods taught by Erdmann and Moraes to modify the invention rendered obvious by the teachings of Daicel and Kaully to arrive at the invention of claims 11-16 because applying a known technique to a known product yields a predictable result. An artisan would be motivated to use the teachings of Erdmann to modify the invention rendered obvious by Daicel and Kaully because the latter two do not teach the temperature at which cellulose acetate and plasticizers should be mixed. Erdmann teaches that it is acceptable to mix components at room temperature, which is within the range 20-200 °C of instant claim 12, prior to heating the mixture and further teaches that melt-mixing, which is determined to be equivalent to the kneading of instant claim 11, at 210 °C will produce a thermoplastic that exhibits improved viscoelastic properties and thermal stability, which an artisan would desire their method to produce. In addition, a person of ordinary skill would be motivated to utilize the teachings of Moraes to add thermoplastic starch to the plasticized cellulose acetate because Moraes teaches the mixture to be compatible, biodegradable, and to produce a thermoplastic with improved mechanical properties. Finally, an artisan would be motivated to try removing unwanted water-soluble polymer, such as PVA, in view of the teachings of Ando because they teach that, following cooling of the reaction mixture, it is unnecessary to keep the water-soluble polymer to produce spherical polymeric particles. As a result, there is a reasonable expectation of success in arriving at the method of claims 11-16 in view of the teachings of Daicel and Kaully and further in view of the teachings of Erdmann, Moraes, and Ando.
Claims 18 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Daicel (Japanese Patent No. JPH 11255959 A, published on 21 September 1999, references to English translation) in view of Kaully (U.S. Patent Application Publication No. US 2009/0162447 A1, published on 25 June 2009) as applied to claims 1, 3-4, 7-10, and 17 above, and further in view of Moraes (Mater. Sci. Eng., C 2017, 78, 932.).
Daicel and Kaully have been described above, and particularly relevant to claim 17, Daicel teaches that polyethylene glycol (PEG) may be in the composition (para. [0008] and Examples 1-4).
Daicel and Kaully do not teach their compositions to comprise thermoplastic starch. These deficiencies are offset by the teachings of Moraes.
Moraes teaches the above, and particularly relevant to claim 20, teaches that the blend of thermoplastic starch and plasticized cellulose acetate (TPS/PCA) may have 33-600 parts by weight of TPS relative to 100 parts by weight of PCA (Table 1), which significantly overlaps with the range of 200-800 parts by weight of water-soluble polymer (in this instance, TPS) relative to 100 parts by weight of PCA recited in instant claim 20.
It would have been prima facie obvious to a person of ordinary skill in the art, prior to the filing of the instant application, to use the methods taught by Moraes to modify the invention rendered obvious by the teachings of Daicel and Kaully to arrive at the invention of claims 18 and 20 because applying a known technique to a known product yields a predictable result. A person of ordinary skill would be motivated to utilize the teachings of Moraes to add thermoplastic starch to the plasticized cellulose acetate because Moraes teaches the mixture to possess “better mechanical properties, especially at higher processing temperatures, which allow them to be considered as a novel eco-friendly, economic feasible alternative to non-biodegradable plastic materials”. Moraes teaches a range of ratios of TPS:PCA which overlap with the range recited in instant claim 20 and an artisan would be motivated to use this range to find an optimal product. As a result, there is a reasonable expectation of success in arriving at the method of claims 18 and 20 in view of the teachings of Daicel and Kaully and further in view of the teachings of Moraes.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Daicel (Japanese Patent No. JPH 11255959 A, published on 21 September 1999, references to English translation) in view of Kaully (U.S. Patent Application Publication No. US 2009/0162447 A1, published on 25 June 2009) as applied to claims 1, 3-4, 7-10, and 17 above, and further in view of Yoshioka et al. (J. Wood Sci. 2000, 46, 22., hereafter referred to as Yoshioka), Moraes (Mater. Sci. Eng., C 2017, 78, 932.), and Ando (U.S. Patent Application Publication No. US 2017/0058116 A1, published on 2 March 2017).
Daicel and Kaully teach the above, and particularly relevant to claim 19, Daicel teaches kneading at 150-250 °C and that cellulose acetate can undergo thermal decomposition at temperatures of 250 °C or higher (pg. 2, para. [0012]).
Daicel and Kaully do not teach the temperature at which cellulose acetate and the plasticizer are mixed prior to melt-kneading nor adding and then removing a water-soluble polymer. These deficiencies are offset by the teachings of Yoshioka, Moraes, and Ando.
Yoshioka teaches a method of plasticizing cellulose acetate during the melting process to achieve biodegradable cellulosic plastics using “practical process conditions” (Abstract). A common issue with plasticizing cellulose acetate is “bleeding” of the plasticizer, resulting in a loss of integrated plasticizer and an unstable product (pg. 22, right column, para. 3). To overcome this issue, Yoshioka teaches grafting of oligomers onto the cellulose acetate backbone via chemical modification of side chains, which resulted in a lower rate of plasticizer bleeding (pg. 22, right column, para. 2-5 and pg. 30, Conclusions). The plasticizing of cellulose acetate is taught to be performed in a preheated chamber of a kneader at 80-120 °C (pg. 23, Reaction of Cas with plasticizers during melt-processing).
Moraes and Ando have been described above.
It would have been prima facie obvious to one of ordinary skill in the art, prior to the filing of the instant application, to use the methods taught by Yoshioka, Moraes, and Ando to modify the invention rendered obvious by the teachings of Daicel and Kaully to arrive at the method of claim 19 because applying a known technique to a known product yields a predictable result. An artisan would be motivated to use the teachings of Yoshioka to modify the invention rendered obvious by Daicel and Kaully because the latter two do not teach the temperature at which cellulose acetate and plasticizers should be mixed. Yoshioka teaches that mixing a cellulose acetate polymer and a plasticizer at 80-120 °C will produce a stable thermoplastic, which an artisan would desire their method to produce, and the ordinary artisan would further recognize that this temperature is below the decomposition temperature taught by Daicel. In addition, a person of ordinary skill would be motivated to utilize the teachings of Moraes to add thermoplastic starch to the plasticized cellulose acetate because Moraes teaches the mixture to be compatible, biodegradable, and to produce a thermoplastic with improved mechanical properties. Finally, an artisan would be motivated to try removing unwanted water-soluble polymer, such as PVA, in view of the teachings of Ando because they teach that, following cooling of the reaction mixture, it is unnecessary to keep the water-soluble polymer to produce spherical polymeric particles. As a result, there is a reasonable expectation of success in arriving at the method of claim 19 in view of the teachings of Daicel and Kaully and further in view of the teachings of Yoshioka, Moraes, and Ando.
Response to Arguments
The Applicant’s arguments, filed on 1 April 2026, have been fully considered but are not persuasive.
Applicant argues from para. 3 of pg. 6 to para. 1 of pg. 7 that the Daicel reference does not teach a particle size greater than 100 nm because “it is clear that the ‘0.1 mm (100 nm)’ disclosed by Daicel refers to the size of foreign matter during film formation, not the particle size of the cellulose acetate particles” and therefore does not render obvious the amended range of 80 nm to 14 mm. The translation of the Daicel reference presented in the remarks filed on 1 April 2026, is different than the translation used in the previous Office Action – the translation included in the Office Action mailed on 24 June 2025, shows that Daicel teaches in claim 1 that the composition, which was interpreted as referring to the cellulose acetate-plasticizer mixture, has “a diameter of 0.1 mm” and in claim 2 teaches the composition to have “a particle size of 150 mm or less”. Both of the ranges >0.1 mm and <150 mm encompass the ranges recited in instant claims 1 and 7, rendering them obvious.
Regardless of the differences in translations, the recited diameter range would still be obvious at least in view of the teachings of Kaully (para. [0129], diameter is “sub-millimeter”, i.e., <1 mm, which encompasses the recited ranges), Ando ([para. [0118-0119], composite particles should have a diameter of 1-100 mm, including 14.4 mm in Example 12, 8.2 mm in Example 14, and 5.5 mm in Example 17), and Capanema (para. [0105], cellulose products should have an average diameter of 10-500 nm). As a result, Applicant’s arguments are found unpersuasive.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
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Claims 1 and 3-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 and 6-9 of copending Application No. 18/010,591 in view of Ando (U.S. Patent Application Publication No. US 2017/0058116 A1, published on 2 March 2017), Erdmann (Materials 2014, 7, 7752.), Moraes (Mater. Sci. Eng., C 2017, 78, 932.), and Yoshioka (J. Wood Sci. 2000, 46, 22.).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Although claims 1 and 3-20 are not identical to the claims of copending application ‘591, they are obvious variants because ‘591 recites cellulose acetate particles with an average size of 80 nm to 100 mm, a sphericity of 0.7-1.0, a surface area of 3.0-20, and a surface smoothness of 10-95% (claims 1-2 and 6). The cellulose acetate particles are also recited as having a bulk specific gravity of 0.2-0.7 (claim 3).
The cellulose acetate particles are recited as being mixed with a plasticizer, which is present in an amount of 2-67 parts by weight relative to 100 parts by weight of cellulose acetate (claim 7). The plasticizer is selected from “the group consisting of a citrate-based plasticizer, a glycerin ester-based plasticizer, and a phthalate-based plasticizer” (claim 8). Finally, the cellulose particles are recited to be used in a composition (claim 9).
The only patentable difference between instant claims 1 and 3-20 and claims 1-3 and 6-9 of copending Application ‘591 is that ‘591 does not recite a particle size variation coefficient (claim 5), a method of manufacturing the particles (claims 11-16, 19-20), nor the composition to comprise PVA and/or PEG (claim 18). These differences are obvious in view of the teachings of Ando, Erdmann, Moraes, and Yoshioka.
Ando, Erdmann, Moraes, and Yoshioka have been described above.
The particle size variation coefficient recited in instant claim 5 would be obvious to a person of ordinary skill in the art in view of the teachings of Ando because Ando teaches that large coefficient of variation (CV) values are undesirable and that values of 10-50% are acceptable for polymeric particles used in cosmetics. An ordinary artisan would be motivated to use these teachings to measure the CV of the particles in their invention and utilize only particles within the CV range of 10-50% because this range is known to be acceptable for cosmetic compositions.
The manufacturing method recited in instant claims 11-16 and 19-20 and thermoplastics recited in instant claim 18 would be obvious to an ordinary artisan in view of the teachings of Erdmann, Moraes, Ando, and Yoshioka because Application ‘591 does not recite a method of manufacturing their cellulose acetate-plasticizer particles and the teachings of the references above provide missing information that one of ordinary skill would require to produce the invention recited in ‘591.
Erdmann teaches that mixing components at room temperature will produce a thermoplastic that exhibits improved viscoelastic properties and thermal stability, which an artisan would desire their method to produce. In addition, a person of ordinary skill would be motivated to utilize the teachings of Moraes to add thermoplastic starch to the plasticized cellulose acetate because Moraes teaches the mixture to be compatible, biodegradable, and to produce a thermoplastic with improved mechanical properties. A person of ordinary skill would be motivated to try removing unwanted water-soluble polymer, such as PVA, in view of the teachings of Ando because they teach that, following cooling of the reaction mixture, it is unnecessary to keep the water-soluble polymer to produce spherical polymeric particles. Finally, Yoshioka teaches that mixing a cellulose acetate polymer and a plasticizer at 80-120 °C will produce a stable thermoplastic, which an ordinary artisan would desire their method to produce.
The biodegradation rate of the cellulose acetate particles recited in instant claim 1 is an inherent property resulting from the composition of the cellulose acetate particles. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP § 2112.01. "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. Id.
"[I]nherency may supply a missing claim limitation in an obviousness analysis." PAR, 773 F.3d at 1194-1195; see also Endo Pharms. Sols., Inc. v. Custopharm Inc., 894 F.3d 1374, 1381, 127 U.S.P.Q.2D (BNA) 1409 (Fed. Cir. 2018). It is long settled that in the context of obviousness, the "mere recitation of a newly discovered function or property, inherently possessed by things in the prior art, does not distinguish a claim drawn to those things from the prior art." In re Oelrich, 666 F.2d 578, 581 (C.C.P.A. 1981). The Supreme Court explained long ago that "[i]t is not invention to perceive that the product which others had discovered had qualities they failed to detect." Gen. Elec. Co. v. Jewel Incandescent Lamp Co., 326 U.S. 242, 249, 66 S. Ct. 81, 90 L. Ed. 43, 1946 Dec. Comm'r Pat. 611 (1945).
Inherency, however, is a "high standard," that is "carefully circumscribed in the context of obviousness." PAR, 773 F.3d at 1195. Inherency "may not be established by probabilities or possibilities," and "[t]he mere fact that a certain thing may result from a given set of circumstances is not sufficient." Oelrich, 666 F.2d at 581 (emphasis added) (quoting Hansgirg v. Kemmer, 102 F.2d 212, 214, 26 C.C.P.A. 937, 1939 Dec. Comm'r Pat. 327 (C.C.P.A. 1939); see also In re Rijckaert, 9 F.3d 1531, 1533-1534 (Fed. Cir. 1993). Rather, inherency renders a claimed limitation obvious only if the limitation is "necessarily present," or is "the natural result of the combination of elements explicitly disclosed by the prior art." PAR, 773 F.3d at 119511-96.
Because the invention recited in copending Application No. 18/010.591 in view of the teachings of Ando, Erdmann, Moraes, and Yoshioka have rendered obvious cellulose acetate particles of the same composition as recited in instant claim 1, the biodegradation rate recited in instant claim 1 will necessarily be present.
Claims 1 and 3-20 are directed to an invention not patentably distinct from claims 1-3 and 7-12 of commonly assigned copending Application No. 18/010,591 in view of the teachings of Ando, Erdmann, Moraes, and Yoshioka. Specifically, see above.
The U.S. Patent and Trademark Office may not institute a derivation proceeding in the absence of a timely filed petition. The USPTO normally will not institute a derivation proceeding between applications or a patent and an application having common ownership (see 37 CFR 42.411). Commonly assigned Application No. 18/010,591, discussed above, may form the basis for a rejection of the noted claims under 35 U.S.C. 102 or 103 if the commonly assigned case qualifies as prior art under 35 U.S.C. 102(a)(2) and the patentably indistinct inventions were not commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention.
In order for the examiner to resolve this issue the applicant or patent owner can provide a statement under 35 U.S.C. 102(b)(2)(C) and 37 CFR 1.104(c)(4)(i) to the effect that the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. Alternatively, the applicant or patent owner can provide a statement under 35 U.S.C. 102(c) and 37 CFR 1.104(c)(4)(ii) to the effect that the subject matter was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention, and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; the application must also be amended to disclose the names of the parties to the joint research agreement.
A showing that the inventions were commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention will preclude a rejection under 35 U.S.C. 102 or 103 based upon the commonly assigned case. Alternatively, applicant may take action to amend or cancel claims such that the applications, or the patent and the application, no longer contain claims directed to patentably indistinct inventions.
Response to Arguments
The Applicant’s arguments, filed on 4 September 2025, have been fully considered but are not persuasive.
In para. 2 of the section titled “Double Patenting” on pg. 7, Applicant states that because ”the rejection is provisional in nature”, they “will address the obviousness-type double patenting rejection upon indication that the claims are otherwise allowable”. A complete response to a nonstatutory double patenting (NSDP) rejection is either a reply by the Applicant showing that the claims subject to the rejection are patentably distinct from the reference claims, or the filing of a terminal disclaimer in accordance with 37 CFR 1.321 in the pending application(s) with a reply to the Office action (see MPEP § 1490 for a discussion of terminal disclaimers). Such a response is required even when the nonstatutory double patenting rejection is provisional.
Conclusion
No claims are allowed.
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/S.J.S./
Examiner, Art Unit 1619
/DAVID J BLANCHARD/Supervisory Patent Examiner, Art Unit 1619
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