Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Interpretation
Instant claims are directed to cellulose acetate composition comprising odor control agent, which is a mineral filler in form of a particles. Odor in cellulose esters is produced when acetic acid is generated. This is due to cellulose acetate degrading due to heat, moisture (hydrolysis), age and depending on the reaction mechanism also may include crosslinking of cellulose ester (generation of water). As such any inorganic component capable of absorbing the acetic acid will meet the definition of odor control agent required by independent claims.
There are two independent claims. Claim 1 for cellulose ester and claim 16 calls for polysaccharide ester. Polysaccharide is a broad category of complex carbohydrates made of long chains of monosaccharide units. Examples include cellulose, starch and chitin. As such cellulose ester is a specific type of polysaccharide ester, where the original polysaccharide used as a based material is cellulose. Consequently, cellulose ester of claim 1 will also meet the definition of independent claim 16.
With respect to ASTM D1003 standard, Japanese equivalents are JIS K 7361, JIS K 7375 and JIS K 7375. As such listed JIS methods (especially 7375) will meet the requirement of ASTM D1003.
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Claim Rejections - 35 USC § 102/103
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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 1-9, 11-18 and 20 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by or in alternative as obvious over Tanaka (US 2019/0092928) in view of evidence in Michihata (CN 1740867 translation provided).
With respect to claims 1, 2, 6, 16 and 18, Tanaka discloses composition comprises cellulose ester (A), core-shell impact modifier (B) encompassed by term “comprising” (Abstract), plasticizers in an amount of up to 15 parts to suppress decrease in transparency [0101-0104, 0137, 0138], and acid acceptors (odor control agent) that scavenges of accepts acetic acid and therefore controls the odor. The acceptors are utilized in amount of up to 5% [[0098-0099]. Consistent with claim interpretation, cellulose ester is a polysaccharide ester and presence of acid acceptor according to Tanaka eliminates presence of acetic acid. As it is evidenced in the Michihata the content of the additives such as acid scavengers has to be low around 1% or 10-1000 ppm. This amount is kept low to avoid negative effects on material’s performance and potential over neutralization (side effect) and increase in haze.
The haze of the entire composition is 10% of lower. While this property is not disclosed as being measured using ASTM D1003, it is an inherent property.
In the alternative, assuming that the claimed haze property is not inherent in Tanaka’s composition, one of ordinary skill in the art would at least expect the same properties to be present based on the similarities discussed above.
In addition, Tanaka discloses use of cellulose esters from Eastman Chemical company, which are US product and which have values are measured using ASTM D1003 (see company website) generic brochure included for convenience.:
[0121] CAP-482-20 Cellulose propionate by itself has haze value of less than 0.5%
[0122] CAB-171-15 Cellulose acetate butyrate by itself has haze value of less than 10%
[0123] CAB-381-20 Cellulose acetate butyrate by itself has haze value of 0.0035%
[0124] CAB-500-5 Cellulose acetate butyrate by itself has haze value of less than 8.5%.
The haze values of composition disclosed in Tanaka have haze values of less than 10% as shown in Table 2, wherein one of ordinary skill in the art would readily understand that the major component being cellulose ester is what dictates the initial haze value. The additives disclosed in Tanaka to not adversely affect the haze value of the inventive composition compared to haze value of the cellulose acetate itself.
Tanaka teaches all of the claimed ingredients in the amounts that fall within claimed amounts made by a substantially similar process. The original specification does not identify a specific feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount.
Therefore, the claimed effects and physical properties, including haze and transparency would naturally arise and be achieved by a composition with all the claimed ingredients.
If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients. "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." See MPEP 2112 and 2112.01.
With respect to claims 3 and 17, light transmission in visible spectrum is inherent property of otherwise transparent cellulose acetate. Tanaka discloses two options for measuring haze. One is a film having thickness of 2mm and the second film has a thickness of 4 mm is in a shape of dumbbell test piece (examples). The haze values of less than 10% are attributed to 2 mm film [0116]. Tanaka teaches that the molded body (dumbbell test piece) has a haze value approximately 0.5% higher [0117]. As such, the transparent film composition of Tanaka will transmit light in the visible spectrum. With approximately 10% haze, 10% of transmitted light is scattered while 90% is transmitted in clear and parallel manner.
With respect to claims 4 and 5, the acid scavengers (odor control agents) of Tanaka include oxides of aluminum and magnesium, hydroxides of aluminum, magnesium and aluminum as well as hydrotalcite [0098].
With respect to claim 7, the amount of cellulose ester is more than 50% based on the entire composition (claim 9). Additionally Table 2 discloses working examples which disclose the amounts of cellulose esters with respect to entire composition.
With respect to claim 8, Tanaka discloses amount of less than 15% as mentioned above. Additionally examples show use of plasticizers in amount of 12 parts (example 18).
With respect to claim 9, cellulose acetate of Tanaka has degree of substitution in a range of 2.1-2.9 [0037]. CE1 in examples has degree of substitution of 2.49 (Table 1).
With respect to claim 11, in addition to cellulose acetates listed in the examples, Tanaka explicitly recites cellulose diacetate [0031].
With respect to claims 12-15 and 20, Tanaka’s composition is utilized to make articles formed by injection molding, extrusion molding, blow molding, cast molding, dip molding (film formation) and the like [0111-0116]. The articles formed include containers, interior automotive parts, tableware (utensils), food trays, films, sheets and wraps [0119]
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 10 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Tanaka (US 2019/0092928) in view of Pecorini (US 2019/0256613).
The discussion of the teachings of Tanaka from paragraph 1 of this office action is incorporated here by reference.
In summary Tanaka discloses composition comprising cellulose ester, impact modifier, plasticizer and acid scavengers which absorb acetic acid responsible for bad odor of the article. Tanaka in his disclosure teaches plasticizer based on genus and does not go into deeper discussion of which plasticizers are effective in compositions comprising cellulose acetate such that the composition maintains low haze value. The generic disclosures of plasticizers include glycols, citric acid esters, polyol polyalkylene oxide.
Pecorini discloses a composition comprising cellulose ester and a plasticizer, and the composition has haze of less than 8% and light transmittance of at least 95%, which properties are also within the same range in Tanaka.
With respect to claims 10 and 19, Pecorini discloses plasticizers that still provide composition having haze and transmittance in the same range as Tanaka. These include triethyl citrate and acetyl triethyl citrate that species in the citric ester genus recited by Tanaka [0117]. Polyethylene glycol which is species that meets Tanaka’s polyalkylene oxide genus [0122] as well as diacetin [0130]. In [0130] Pecorini also disclosed adipate ester based plasticizers which are utilized in examples of Tanaka along with mentioned above glycol and citrate based plasticizer setting forth functional equivalency of these plasticizers with respect to making low haze cellulose ester composition.
The plasticizers of Pecorini are also utilized in low amounts of less than 20% [0115] such that the glass transition of the composition is not adversely affected [0114]. The composition of Pecorini is also utilized to articles using injection molding [0009] extrusion molding, blow molding, sheet or film extrusion [0135]. Formed articles include containers (packaging) cutlery (fork, knife, spoon) [0137], interior automotive parts [0139].
In the light of the above disclosure it would have been obvious to one having ordinary skill in the art at the time instant invention was filed to utilize plasticizers of Pecorini in the composition of Tanaka. Such modification would not adversely affect haze and light transmission properties required by Tanaka. This is evidenced by the fact that the composition of Pecorini also has haze value below 8%. One of ordinary skill in the art would still be able to make the same articles and utilize the same methods of obtaining the same articles.
Conclusion
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/KATARZYNA I KOLB/Primary Examiner, Art Unit 1767 October 15, 2025