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 .
NOTICE
The instant Office Action replaces the previous Final Office Action, mailed on 26 November 2025, to correct the error regarding the Yoshioka et al. reference in the rejection of new claim 19 under 35 U.S.C. § 103. The reference “Lee et al. (J. Appl. Polymer Sci. 2001, 81 (1), 243.) has been replaced with “Yoshioka et al. (J. Wood Sci. 2000, 46, 22.) and the name “Lee” with the name “Yoshioka” - all other content remains unchanged.
Filing Receipt
Applicant’s request for an updated filing receipt message in the remarks filed on 4 September 2025, is acknowledged. A message has been sent to the proper team to address the issue.
Response to Amendments
Status of Claims
The amendment, filed on 4 September 2025, is acknowledged.
Claims 1, 3-4, and 12-16 have been amended.
New claims 17-20 have been added.
Claims 1-20 are pending and under consideration in the instant Office Action.
Objections Withdrawn
Objections to Claims
Applicant’s amendment to claim 3, submitted on 4 September 2025, has overcome the objection to the claim set forth in the Office Action mailed on 24 June 2025. Accordingly, the relevant objection is withdrawn.
Rejections Withdrawn
Rejections pursuant to 35 U.S.C. § 112
The rejections of claims 1 and 12-16 under 35 U.S.C. § 112b are withdrawn in view of Applicant’s amendment to the claims.
Maintained Rejections
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 1-4 and 7-10 are rejected under 35 U.S.C. 103 as being unpatentable over Daicel Corp. (Japanese Patent No. JPH11255959A, published on 21 September 1999, 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 of instant claims 1, 2, and 7 (Daicel 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 of instant claim 3 (claim 1). In one embodiment, the plasticizer taught by Daicel is a phthalic acid ester (English translation 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 the ranges recited in instant claims 1 and 8 (para. [0128] and claim 29). In another preferred 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 of 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]).
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 claims 1-4 and 7-10 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 <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. Further, 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. As a result, there is a reasonable expectation of success in arriving at the invention of claims 1-4 and 7-10 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. JPH11255959A, published on 21 September 1999) in view of Kaully (U.S. Patent Application Publication No. US 2009/0162447 A1, published on 25 June 2009) as applied to claims 1-4 and 7-10 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. JPH11255959A, published on 21 September 1999) in view of Kaully (U.S. Patent Application Publication No. US 2009/0162447 A1, published on 25 June 2009) as applied to claims 1-4 and 7-10 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. JPH11255959A, published on 21 September 1999) in view of Kaully (U.S. Patent Application Publication No. US 2009/0162447 A1, published on 25 June 2009) as applied to claims 1-4 and 7-10 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).
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.
Response to Arguments
The Applicant’s arguments, filed on 4 September 2025, have been fully considered but are not persuasive.
In response to Applicant's argument in para. 3 of pg. 6 of the remarks that the Daicel reference does not teach cellulose acetate particles containing a plasticizer, but instead “appears to disclose a resin composition which contains cellulose acetate and a plasticizer as raw materials”, Applicant is reminded that one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
The rejection of claim 1 is based upon the combination of the Daicel and Kaully references, which renders obvious a composition comprising cellulose acetate particles and a plasticizer. Further, given the teachings of Daicel regarding the combination of cellulose acetate and a plasticizer to produce plasticized cellulose acetate and the teachings of Kaully regarding the benefits of spherical, smooth particles during manufacturing and packaging, it would have been obvious to produce particles of cellulose acetate containing a plasticizer to gain the aforementioned benefits.
Applicant argues in para. 4 of pg. 6 that an ordinary artisan “would have had no reasonable expectation of success in achieving the claimed sphericity and smoothness” based on the Daicel and Kaully references because, by melt mixing cellulose acetate particles with a plasticizer, the particle shape prior to melting would not be maintained. The Office Action mailed on 24 June 2025, did not state that the combination of the Daicel and Kaully references applied only to the cellulose acetate particles prior to mixing, but instead that an ordinary artisan would be motivated to combine the teachings because Kaully “teach[es] the importance of these [sphericity and smoothness] characteristics during manufacturing and packaging and the artisan would desire the improved efficiency provided by smooth, spherical particles”, which applies to the particles achieved after mixing as well as before.
The Applicant further argues in para. 4 of pg. 6 that the sphericity and smoothness properties could not be achieved via modification of Daicel in view of Kaully. MPEP § 716.01(c) provides guidance on the probative value of objective evidence and states that “[o]bjective evidence which must be factually supported by an appropriate affidavit or declaration to be of probative value includes…inoperability of the prior art… See, for example, In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984)”. “Arguments presented by the Applicant cannot take the place of evidence in the record”, and the Applicant has not provided evidence that the prior art references Daicel and Kaully are inoperable, therefore the above argument is not found persuasive.
In para. 3 of pg. 7, Applicant argues that an ordinary artisan would have no motivation to modify the teachings of Daicel in view of the teachings of Ando because they “are completely different technologies”. In response, the Examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Daicel teaches a composition comprising cellulose acetate, an acetylated biopolymer, and methods of its manufacture, and Ando teaches composite particles made of polymers and methods of their production. Therefore, the references are considered to be in related fields and the manufacturing methods used during the production of a given particle comprising polymers would be viewed as relevant by a person of ordinary skill in the art to another manufacturing method producing polymeric particles.
Finally, in the penultimate para. of pg. 7, the Applicant argues that a person of ordinary skill would not be motivated to modify the invention of Daicel with the teachings of Ando because poly(vinyl alcohol) (PVA) and cellulose acetate “are not compatible with each other” and that Daicel aims “to provide a uniformly plasticized resin composition”.
Regarding the first argument, this assertion is not supported by the referenced specification paragraph (pg. 19, lines 18-22), in which PVA and cellulose acetate are in the same composition and in pg. 12, lines 4-28, where PVA is described as a preferable thermoplastic polymer to be used. See also Example A-1. Regarding the second argument, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). The rejection in the Office Action mailed on 24 June 2025, was based upon the combination of Daicel, Kaully, Erdmann, Moraes, and Ando. While Daicel was silent on the impact of PVA on the cellulose acetate in their composition, the teachings used above motivated mixing components at room temperature prior to heating, melt-mixing at 210 °C to produce a thermoplastic that exhibits improved viscoelastic properties and thermal stability, adding thermoplastic starch to the plasticized cellulose acetate to achieve a biodegradable thermoplastic with improved mechanical properties, and using PVA in the manufacturing process, followed by removing the unwanted water-soluble polymer after manufacture.
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.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 and 7-12 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) and Erdmann (Materials 2014, 7, 7752.). Although claims 1-4, 6-11, and 13-16 are not identical to the claims of copending application ‘591, they are obvious variants because, while ‘591 recites cellulose acetate particles and the instant application recites a composition comprising cellulose acetate particles, the applications both recite cellulose acetate particles with identical characteristics. Specifically, claims 1-2 of ‘591 teach cellulose acetate particles with an average size of 80 nm - 100 mm, a sphericity of 0.7-1.0, and a surface smoothness of 10-95%. This is either identical to or encompasses the limitations of instant claims 1-2 and 7-9. Further, the cellulose acetate particles are recited as having a bulk specific gravity of 0.2-0.7 in claim 3 of ‘591, which falls within the range recited in instant claim 6.
Claim 7 of ‘591 recites cellulose acetate particles 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, and encompasses the limitations of instant claim 3. 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 of ‘591), which is nearly identical to the limitations of instant claim 4. The cellulose particles of application ‘591 are used in a cosmetic composition in claim 9, as are the cellulose particles in instant claim 10, which renders obvious the use of cellulose acetate particles in a composition, cosmetic or otherwise.
Claim 10 of ‘591 recites a method of producing the cellulose acetate particles comprising mixing cellulose acetate, a plasticizer, and two thermoplastic polymers, melt-kneading the mixture at 200-280 °C, and then removing the thermoplastic polymers. Claim 11 of ‘591 recites the plasticizer to be acetyl triethyl citrate and/or triacetin and claim 12 recites the first thermoplastic polymer to be polyvinyl alcohol and/or thermoplastic starch. Together, these claims are not patentably distinct from instant claims 11 and 13-16.
The only patentable difference between instant claims 1-4, 6-11, and 13-16 and claims 1-3 and 7-12 of ‘591 is the removal of the water-soluble polymer following production of the plasticized cellulose acetate. The removal is obvious in view of the teachings of Ando because, as described above, the reference teaches a method of producing polymer particles comprising monomers, water, and the water-soluble polymer polyvinyl alcohol (PVA) as a dispersant (Ando, 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]).
Instant claim 5 is also obvious 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 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.
Finally, instant claim 12 is obvious in view of the teachings of Erdmann because Erdmann teaches that it is acceptable to mix components at room temperature, which is within the range 20-200 °C of instant claim 12. The room temperature mixing occurs prior to heating the mixture for melt-mixing, which is determined to be equivalent to the kneading of instant claim 11, at 210 °C to produce a thermoplastic that exhibits improved viscoelastic properties and thermal stability, which an artisan would desire their method to produce.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-4, 6-11, and 13-16 are directed to an invention not patentably distinct from claims 1-3 and 7-12 of commonly assigned Application No. 18/010,591. 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. 4 of pg. 8, Applicant states that the rejection is provisional in nature and will address the obviousness-type double patenting rejection upon indication that the claims are otherwise allowable. Applicant’s reply is acknowledged, Applicant is reminded that a complete response to a nonstatutory double patenting (NSDP) rejection is either a reply by 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 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.
Applicant argues that because base claim 1 has been amended, the double patenting rejections are moot. This is not found persuasive because, as detailed above and presented here in brief, changing the sequence of adding ingredients would have been prima facie obvious at the time of filing. The order of adding the plasticizer to the composition comprising cellulose acetate is considered to not produce new or unexpected results and therefore the invention recited by Application No. 18/010,591 and the teachings of Ando and Erdmann are still determined to render obvious the composition comprising cellulose acetate and a plasticizer recited in amended instant claim 1.
New Grounds of Rejection
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this rejection can be found above.
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.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Daicel (Japanese Patent No. JPH11255959A, 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).
Daicel has been described above.
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 has been described above.
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 claims 1 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 <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).
"[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.
The surface area of the particles is an inherent property resulting from the diameter and shape of the particles. The surface area measured by the particle size distribution and BET methods is dictated by the accuracy and precision of the respective methods. Therefore, if a given particle has the same shape and diameter as the particles recited in instant claim 1, they will necessarily have the same relative specific surface area as determined by particle size distribution and BET measurements. As a result, there is a reasonable expectation of success in arriving at the invention of claim 17 in view of the teachings of Daicel and Kaully.
Claims 18 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Daicel (Japanese Patent No. JPH11255959A, 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 claim 1 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 recited range of 200-800 parts by weight of water-soluble polymer (in this instance, TPS) relative to 100 parts by weight of PCA.
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. JPH11255959A, 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 1-4 and 7-10 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.
Conclusion
No claims are allowed.
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 Sean J. Steinke, whose telephone number is (571) 272-3396. The examiner can normally be reached Monday - Friday, 09:00 - 17:00 ET.
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