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 .
Claim Objections
Claims 15-17 are objected to because of the following informalities:
Claim 15 recites “the cellulose ester product”. The claim should instead read “the reaction product”.
Claim 16 recites “the cellulose ester product”. The claim should instead read “the reaction product”.
Claim 17 recites “the cellulose ester product”. The claim should instead read “the reaction product”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 3, 4, 5, 9, and 12-14 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The term “about” in claim 3, 4, 5, 9, 12, and 13 is a relative term which renders the claims indefinite. The term “about” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The number average molecular weight of the polyester oligomer of claim 3, the pKa value of claim 4 and 5, the amount of cellulose ester, reactive flow aid, and catalyst of claim 9, the increase in melt flow rate of claim 12, and the amount of cellulose ester and plasticizer of claim 13 are rendered indefinite.
Claim 14 recites the limitation "the plasticizer" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim Analysis
Summary of Claim 1:
A polymer composition comprising:
a reaction product comprising:
(a) a cellulose ester polymer;
(b) a catalyst; and
(c) a reactive flow aid comprising a lactone or a polyester oligomer.
Claim Rejections - 35 USC § 102
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.
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 2, 9, 16, 20-22 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yoshioka (WO 2006048946 A1).
The examiner refers to the English translation of Yoshioka provided in this Office Action.
Regarding claim 1, Yoshioka discloses in Example 1 a polymer composition comprising cellulose acetate and ε-caprolactone and tin (ii) octylate as a catalyst to form an ε-caprolactone grafted cellulose acetate [0043], thereby reading on the reaction product of a cellulose ester, catalyst, and reactive flow aid.
Regarding claim 2, Yoshioka discloses the lactone is an ε-caprolactone [0043], thereby reading on the instant claim.
Regarding claim 9, Yoshioka discloses the polymer composition of Example 1 comprises 100 parts of cellulose acetate, 400 parts of purified ε-caprolactone, and 25 parts of Somasif ME (mica), and tin(ii) octoate was present in amount of 1% of the total amount of cellulose acetate and ε-caprolactone [0043], equivalent to 19.0 wt% of cellulose acetate, 76 wt% of ε-caprolactone, and 1% of catalyst and thereby lying within the claimed range.
Regarding claim 16, Yoshioka disclose polymer composition of Example 1 comprises Somasif ME, which is mica and thereby reading on the instant claim.
Regarding claim 20, Yoshioka disclose the caprolactone is grafted onto the cellulose acetate [0043], thereby reading on the instant claim.
Regarding claim 21, Yoshioka is silent on the melt flow rate as recited in the instant claim.
In view of the substantially identical polymer composition of Yoshioka, the polymer composition of Yoshioka will possess the claimed properties because melt flow rate is an inherent property. Because the PTO does not have proper means to conduct experiments, the burden of proof is now shifted to Applicant to show otherwise. (See In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977); In re Fitzgerald, 205 USPQ 594 (CCPA 1980).)
Regarding claim 22, Yoshioka disclose a cellulose acetate and a polycaprolactone in the presence of a tin(II) octoate catalyst is heated and mixed together to form a caprolactone grafted cellulose acetate [0043].
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.
Claims 10, 11, 12, 15, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Yoshioka (WO 2006048946 A1).
The polymer composition of claim 1 is incorporated by reference.
Regarding claim 10, Yoshioka does not teach the polymer composition of Example 1 further comprises a plasticizer.
However, Yoshioka does teach plasticizers may be added to the composition [0033], thereby reading on the instant claim. Therefore, it would have been obvious to one of ordinary skill in the art to add a plasticizer to the composition as taught by Yoshioka.
Regarding claim 11, Yoshioka is silent on if the cellulose ester of Example 1 is a cellulose diacetate.
However, Yoshioka teaches in Example 5 cellulose diacetate was used [0052]. Therefore, it would have been obvious to one of ordinary skill in the art to use cellulose diacetate instead of cellulose acetate since Yoshioka teaches both are suitable cellulose esters.
Regarding claim 12, Yoshioka is silent on if the melt flow rate of the polymer composition is increased in the amount as recited.
In view of the substantially identical polymer composition of Yoshioka, the polymer composition of Yoshioka will possess the claimed properties because melt flow rate is an inherent property. Because the PTO does not have proper means to conduct experiments, the burden of proof is now shifted to Applicant to show otherwise. (See In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977); In re Fitzgerald, 205 USPQ 594 (CCPA 1980).)
Regarding claim 15, Yoshioka does not teach the polymer composition of Example 1 further comprises filler particles among others as recited as the instant claim.
However, Yoshioka does teach fillers, lubricants, and antistatic agents may be added to the composition [0033]. Therefore, it would have been obvious to one of ordinary skill in the art to add a filler to the composition as taught by Yoshioka.
Regarding claim 18, Yoshioka do not teach a melt extruded article made from polymer composition of Example 1.
Yoshioka teach the composition may be used to form molded articles from molding methods such as extrusion molding [0030-0031], thereby reading on the instant claim. Therefore, it would have been obvious to one of ordinary skill in the art to form a melt extruded article from polymer composition of Example 1 as taught by Yoshioka.
Claims 3-6, and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Yoshioka (WO 2006048946 A1) in view of Mulhaupt et al. (US 5480922 as listed on IDS dated October 20, 2023).
The polymer composition of claim 1 is incorporated by reference.
Regarding claim 3, Yoshioka is silent on a polyester oligomer having a number average molecular weight as recited in the instant claim.
Mulhaupt et al. teach a plasticized cellulose acetate comprising a modified cellulose acetate grafted with lactone (claim 1). Mulhaupt et al. teach the oligocaprolactone has a mean molecular weight of 5100 to 8000 [col 6, line 57-67], thereby lying within the claimed range. Mulhaupt et al. offer the motivation that the ε-caprolactone oligomer reduces problems of compatibility and reduces reaction time [col 6, line 26-56]. Yoshioka is also concerned with the compatibility of ε-caprolactone and cellulose esters [0009]. Therefore, it would have been obvious to one of ordinary skill in the art to use the oligomer of Mulhaupt et al. with the polymer composition of Yoshioka with reasonable expectation that compatibility will be improved.
Regarding claim 4, 5, 6, and 8, Yoshioka does not teach the catalyst has a pKa as recited in instant claim 4 and 5 and comprises an organic acid as recited in claims 6 and 8.
Mulhaupt et al. teach a plasticized cellulose acetate comprising a modified cellulose acetate grafted with lactone (claim 1). Mulhaupt et al. teach ester bond formation can also be created so that one or several hydroxyl groups are esterified by acetic acid [col 3, line 29-46], thereby reading on an organic acid of instant claim 6 and acetic acid of instant claim 8. Acetic acid has a pKa of 4.756, thereby lying within the claimed range of instant claim 4 and 5. Mulhaupt et al. offer the motivation that the plasticized cellulose acetate formed has a lower melting point which allows for low processing temperature while maintaining good mechanical strength [col 2, line 35-61]. Yoshioka is also concerned with melt properties and processing (page 3, paragraph 4). Therefore, it would have been obvious to one of ordinary skill in the art to use the catalyst of Mulhaupt et al. with the polymer composition of Yoshioka with reasonable expectation that the melt processing and properties would improve.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Yoshioka (WO 2006048946 A1) in view of Labet et al. (“Citric acid as a benign alternative to metal catalysts for the production of cellulose-grafted-polycaprolactone copolymers”)
The polymer composition of claim 1 is incorporated by reference.
Regarding claim 7, Yoshioka is silent on if the catalyst comprises citric acid.
Labet et al. teach poly caprolactone reacted with cotton in the presence of citric acid to form a polycaprolactone grafted cellulose shown in the reaction scheme below
PNG
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326
714
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Greyscale
Labet et al. offer the motivation that metal catalysts such as tin(ii) 2-ethylhexanoate often remain attached to the polymer and require further purification steps for some applications (p. 680). Metals are well known to be toxic at certain amounts. Yoshioka also teaches the cellulose ester undergoes ring-opening polymerization and uses tin(ii) octoate (another name for tin 2-ethylhexanoate) (abstract, Example 1). Therefore, it would have been obvious to one of ordinary skill in the art to use the citric acid catalyst of Labet et al. with the polymer composition of Yoshioka to reduce the need for purification steps and prevent metal catalyst to remain in the final product.
Claims 13, 14, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Yoshioka (WO 2006048946 A1) in view of Bisset et al. (US 20170158901 as listed on IDS dated October 20, 2023).
The polymer composition of claim 1 is incorporated by reference.
Regarding claim 13, Yoshioka discloses the polymer composition of Example 1 comprises 100 parts of cellulose acetate, 400 parts of purified ε-caprolactone, and 25 parts of Somasif ME (mica), and tin(ii) octoate was present in amount of 1% of the total amount of cellulose acetate and ε-caprolactone [0043], equivalent to 19.0 wt% of cellulose acetate, and thereby lying outside the claimed range of 55% by weight to 95% by weight.
However, Yoshioka broadly teaches the amount of cellulose ester is 1 to 85% by weight [0010], thereby overlapping the claimed range. Therefore, it would have been obvious to one of ordinary skill in the art to select the overlapping portion of the range taught by Yoshioka.
Yoshioka is silent on the amount of plasticizer present.
Bissett et al. teach a polymer composition comprising cellulose acetate and 1 to 20 wt% (claim 1), thereby overlapping the claimed range of instant claim 13. Bissett et al. offer the motivation that the plasticizer increases the plasticity or fluidity of a material [0035]. Yoshioka is also concerned with moldability of the polymer composition which is related to fluidity [0029]. Therefore, it would have been obvious to one of ordinary skill in the art to add the plasticizer in the amount taught by Bissett et al. with the polymer composition of Yoshioka with reasonable expectation that the fluidity of the polymer composition would improve.
Regarding claim 14, Yoshioka is silent on the plasticizer as recited in the instant claim.
Bissett et al. teach suitable plasticizers for cellulose esters include triacetin and polyethylene glycol [0033]. Therefore, it would have been obvious to one of ordinary skill in the art to use the plasticizers of Bissett et al. with the polymer composition of Yoshioka because triacetin and polyethylene glycol are well known plasticizers for cellulose ester compositions.
Regarding claim 17, Yoshioka is silent on the polymer composition further comprising a coloring agent as recited in the instant claim.
Bissett et al. teach dyes or pigments may be added to provide a visual effect [0015] [0058]. Therefore, it would have been obvious to one of ordinary skill in art to add a dye as taught by Bissett et al. with the polymer composition of Yoshioka since both are related to cellulose ester compositions.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Yoshioka (WO 2006048946 A1) in view of Budhavaram et al. (US 20160068665).
The polymer composition of claim 1 is incorporated by reference.
Regarding claim 19, Yoshioka is silent on the melt extruded article is an article as recited in the instant claim.
Budhavaram et al. teach a polymer composition comprising a plasticized cellulose ester and a plasticizer (claim 1). Budhavaram et al. teach the polymer composition may be used for vehicle interior parts [0107], thereby reading on the interior automotive part of the instant claim. Therefore, it would have been obvious to one of ordinary skill in the art to use the polymer composition of Yoshioka as an interior automotive part since both are related to cellulose ester compositions and it is well known in the art to do so.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREA WU whose telephone number is (571)272-0342. The examiner can normally be reached M F 8 - 5.
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/ANDREA WU/Examiner, Art Unit 1763
/CATHERINE S BRANCH/Primary Examiner, Art Unit 1763