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 .
This communication is responsive to the claim set filed 09/12/2023 and Response to Restriction filed 06/08/2026.
Claims 1, 3-21 are pending. The elected claims 1, 3-19 are under consideration in this Office Action. The non-elected claims 20-21 are withdrawn.
Claims 1 and 3-19 are rejected for the reasons set forth below.
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.
Election/Restrictions
Applicant's election with traverse of Group I, claims 1 and 3-19 in the reply filed on 06/08/2026 is acknowledged. The traversal is on the ground(s) that each cited references does not disclose all of the limitations of the instant Claim 1. This is not found persuasive because Itoh et al. (US5,478,386) teaches all the limitations of Claim 1 (see discussion below), thereby the limitations not considered a special technical feature. The withdrawn claims 20-21 would be eligible for rejoinder upon allowance of claim 1 if they include all of the allowable limitations of claim 1.
The requirement is still deemed proper and is therefore made FINAL.
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.
Claim 17 is 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.
Claim 17 recites the limitation "the dicarboxylic acid constituting the polyester.” The dependent claim – Claim 5, does not have the limitation of “dicarboxylic acid constituting the polyester” Thus, there is insufficient antecedent basis for this limitation in the claim. For purpose of compact prosecution, the claim is interpreted as being dependent on Claim 6.
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 - 8, 10 -19 are rejected under 35 U.S.C. 103 as being unpatentable over Itoh et al. (US5,478,386).
Regarding Claim 1, Itoh teaches a composition comprising a cellulose ester having an average degree of substitution from 1 to 2.15 (ab.), the average degree of substitution overlaps with the claimed 2.1 to 2.6. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists (See MPEP 2144.05 I). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range taught by Itoh, i. e., 2.1 to 2.15.
Itoh further teaches the composition comprising a plasticizer and an aliphatic polyester (ab), wherein the plasticizer is one or more small molecular weight plasticizers, such as dimethyl phthalate, dibutyl adipate, or glycerin triacetate (triacetin) (6: 21-39); and wherein the aliphatic polyester includes polyesters formed by dibasic acids with glycols, the dibasic acids include succinic acid and glycols include 1,3-butanediol and 1,4-butanediol (6: 40-55). Although Itoh is silent on the polyester obtained by dehydration condensation, dehydration condensation is the most common method of synthesizing a polyester from a dibasic acid and a glycol, therefore, one ordinary skilled artisan, before the effective filling date of the instant application, would reasonably infer that the polyester is obtained by a dehydration condensation reaction. Additionally, “obtained by dehydration condensation” recites a process of producing the polyester, “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." (MPEP § 2113 (quoting In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)).). In this case, Itoh discloses an aliphatic polyester formed by succinic acids with butanediols (synonym: butylene glycol), thereby Itoh disclosing an aliphatic polyester having repeating units derived from succinic acids, repeating units derived from butylene glycols and 0% of aromatic rings. Because the PTO does not have proper means to conduct experiments, the burden is now shifted to Applicant to show that the aliphatic polyester taught by Itoh does not meet or is not obvious over the limitations of instant claimed polyester.
Itoh furthermore teaches each of the plasticizer and the aliphatic polyester is in the amount of 5 to 100 parts by weight to 100 parts of cellulose ester (8: 23-26). The amount overlaps with the claimed 120 parts or less of polyester per 100 parts of cellulose ester; also overlaps with the claimed 15 to less than 100 parts of plasticizer per 100 parts of cellulose ester.
Regarding Claims 3 and 14, cellulose has the structure of:
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the OH groups at the 2-position and the 3-position bond directly to the glucopyranose ring while the OH group at the 6-position bonds to the ring through CH2 group, as such the 6-position hydroxyl group can move freely enough to connect with other molecules, therefore, keeping more OH groups at the 6-positions, i.e., less substitutions at the 6-position than the substitutions at either the 2-positions or the 3-positions, renders the cellulose acetate better water solubility and more compatible with other molecules. 9:30 to 10:30 of Itoh indicates that higher water solubility is beneficial to biodegradability of cellulose acetate composition. Therefore, one ordinary skilled artisan would have been motivated, before the effective filing date of the instant application, to use cellulose ester having the degrees of substitutions at the 2-position and the 3-position both greater than the degree of substitution at the 6-position for the composition. And Itoh teaches the cellulose acetate having substitutions 2.15 or less, therefore, the 6-posiiton substitution needs to be 0.717 or less to have a good biodegradability.
Regarding Claim 4, Ito teaches the plasticizer may be one or more of dibutyl adipate, dioctyl adipate glycerin triacetate and diglycerin tetraacetate (6: 21-39).
Regarding Claim 5, polycondensation product of succinic acid and butanediol do not contain an aromatic ring structural unit.
Regarding Claims 6-7, Ito teaches that the polyester is formed by dibasic acids with glycols, wherein the dibasic acids include succinic acid and adipic acid and wherein the glycols include ethylene glycol, 1,3-butanediol, 1,4-butanediol. Thus, Ito discloses that the polyester can be a copolymer of succinic acid, adipic acid, butylene glycol and ethylene glycol (6: 40-55). Polycondensation of succinic acid and 1,4-butanediol forms polybutylene succinate (PBS). ). Polycondensation of succinic acid, adipic acid, 1,3-butanediol and 1,4-butanediol forms poly(butylene succinate-co-butylene adipate) (PBSA).
Regarding Claim 8, Ito exemplifies that the cellulose ester is cellulose acetate (Example 1).
Regarding Claim 10, Ito exemplifies a composition consists 100 parts of cellulose ester, 40 parts of plasticizer, 15 parts of polyester and 0.02 parts citric acid, by weight (Example 5). The content of cellulose is about 65 wt. % with respect to the total of the resin composition.
Regarding Claims 11-12, Ito exemplifies that the cellulose ester has an acetyl group as a substitute (Example 1).
Regarding Claim 13, Ito exemplifies that the cellulose ester is cellulose acetate (Example 1).
Regarding Claim 15, Ito discloses that the cellulose ester has an average degree of polymerization from 50 to 250 (ab.). It would be reasonable to infer that the degree of polymerization falls within or overlaps with the claimed range of viscosity-average degree of polymerization.
Regarding Claim 16, Ito discloses that the aliphatic polyester may have a molecular weight of 200 to 200, 000 (7:3-6), overlapping with the claimed 100, 000 to 1,000,000.
Regarding Claim 17, each of succinic acid and adipic acid has less than 8 carbon atoms.
Regarding Claim 18, dimethyl phthalate has a molecular weight about 194. glycerin triacetate (triacetin) has a molecular weight about 218.
Regarding Claim 19, Ito teaches the cellulose ester has a degree of substitution less than 2.15 and exemplifies the degree of substitution being 2.14 (Example 1).
Claims 1, 4-13, 15 and 17-19 are rejected under 35 U.S.C. 103 as being unpatentable over Shih et al. (US20230183449 A1, priority dates in 2020).
Regarding Claim 1, Shih teaches a composition comprising: (1) a cellulose acetate having a degree of substitution of acetyl (DSAc) between 2.2 to 2.6; (2) 5 to 40 wt % of a plasticizer; (3) 0.1 to 3 wt% of a nucleating agent; (4) 0.1 to 15 wt% of a physical blowing agent (claim 1); and 1 to 40 wt% of at least one other biodegradable polymer other than cellulose acetate; wt% is based on the total weight of the cellulose acetate composition; wherein the at least one other biodegradable polymer includes polybutylene succinate, polybutylene succinate-co-adipate, polyethylene succinate and polybutylene adipate terephthalate ([0038-0039]). Shih further teaches suitable plasticizers including triacetin, triethyl citrate, and low molecular weight PEG, e.g. PEG200, PEG400 (0034-0035] and examples); those plasticizers have a number average molecular weight (Mn) less than 1000. Polybutylene succinate and polybutylene succinate-co-adipate read on the claimed polyesters. Thus, Shih teaches a composition comprising a cellulose acetate having a degree of substitution between 2.2 to 2.6, 5 to 40 wt % of a plasticizer have Mn less than 1000; 0.1 to 3 wt% of a nucleating agent; 0.1 to 15 wt% of a physical blowing agent; and 1 to 40 wt% of the claimed polyester; wt% is based on the total weight of the composition. Converting to parts by weight per 100 parts by weight of cellulose acetate, the amount of the plasticizer is in the amount of 5.3 parts to 2000 parts per 100 parts of cellulose acetate, the amount of the biodegradable polyester is in the amount of 1 part to 2000 parts of per 100 parts cellulose acetate. The amounts of plasticizer and the amount of polyester encompass the claimed amounts, respectively. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists (See MPEP 2144.05 I). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portions of the ranges taught by Shih. Further, Shih exemplifies plasticizer being used at 20% of the composition (Table 22), converting to wt% based on the cellulose acetate, the amount of the plasticizer is 25 parts to 100 parts by weight per 100 parts by weight of cellulose acetate, falling within the claimed 15 parts to 100 parts by weight per 100 parts by weight of cellulose acetate. Furthermore, Shih teaches the cellulose acetate composition contains a biodegradable polymer ( other than the BCA) in an amount from 0.1 to less than 50 wt%, or 1 to 40 wt%, or 1 to 30 wt %, or 1 to 25 wt %, or 1 to 20 wt %, based on the cellulose acetate composition ([0038]). Therefore, Shih suggests using a biodegradable polymer other than the BCA in a smaller amount, when the biodegradable polymer other than the BCA (including polybutylene succinate) being used in the amount of 1 to 20 wt% of the cellulose acetate composition, converting to wt% based on the weight of cellulose acetate, the amount is 1 to 91 parts by weight of the biodegradable polyester per 100 parts cellulose acetate, falling within the claimed 120 parts or less by weight per 100 parts by weight of cellulose acetate. (calculation will be provided upon request).
Although Shih is silent on polybutylene succinate and polybutylene succinate-co-adipate obtained by dehydration condensation, polybutylene succinate and polybutylene succinate-co-adipate are included in the claimed polyesters of the instant claim 7, as discussed at para. 8 above, patentability of a product-by-process claim is based on the product itself. Additionally, polybutylene succinate and polybutylene succinate-co-adipate do not contain aromatic rings.
Regarding Claim 4, Shih teaches suitable plasticizers including triacetin, triethyl citrate, and low molecular weight PEG, e.g. PEG200, PEG400 (0034-0035] and examples).
Regarding Claim 5, polybutylene succinate and polybutylene succinate-co-adipate do not contain aromatic structural units.
Regarding Claim 6, Shih teaches the biodegradable polyesters include polyethylene succinate, polybutylene succinate, polybutylene succinate-co-adipate ([0038-39]). It would be reasonable to infer that polyethylene succinate-co-adipate is a suitable biodegradable polyester for the composition.
Regarding Claim 7, Shih teaches the biodegradable polyesters include polybutylene succinate and polybutylene succinate-co-adipate ([0038-39]).
Regarding Claim 8, Shih teaches the composition comprising a cellulose acetate having a degree of substitution of acetyl (DSAc) between 2.2 to 2.6 (Claim 1).
Regarding Claim 9, Shih discloses that the Mn of the cellulose acetates about 10,000 to 100,000 ({0029]). Weight average molecular weight is usually lager than Mn, therefore, Shih discloses that the weight average molecular weight of the cellulose acetates overlapping with the claimed mw of 100,000 or more.
Regarding Claim 10, for the composition discussed in Claim 1, the composition comprising 2 to 93.8 wt% of cellulose acetates based on the total weight of the composition, the amounts overlap with the claimed 30 wt.% to 90 wt.% of the composition.
Regarding claims 11-12, Shih teaches the cellulose esters have acetyl substitution (claim 1).
Regarding Claim 13, Shih reaches the composition comprising cellulose acetate (claim 1).
Regarding Claim 15, Shih discloses that the cellulose acetates have a degree of polymerization of 25 to 250 ([0023]). Although Shih is silent on the degree of polymerization being a viscosity-average degree of polymerization, it would be reasonable to infer that the disclosed degree of polymerization falls within or overlaps with the claimed viscosity-average degree of polymerization of 10 to 400.
Regarding Claim 17, succinic acid and adipic acid have less than 8 carbon atoms.
Regarding Claim 18, the exemplary plasticizers, such as triacetin, triethyl citrate, and low molecular weight PEG, e.g. PEG200, PEG400 have a molecular between 50 and 1000.
Regarding Claim 19, Shih discloses the cellulose acetates having a degree of substitution of acetyl (DSAc) between 2.2 to 2.6, overlapping with the claimed 2.1 to 2.3.
Claims 3 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Shih, as applied to Claim 1 above, and in further view of Takatoshi et al. (JP4635307 B2).
The disclosure of Shih on Claim 1 is incorporated herein by reference.
Shih teaches a composition comprising a cellulose acetate having a degree of substitution of acetyl between 2.2 to 2.6 but is silent on the degree of substitution of each OH positions.
As discussed under Itoh, one ordinary skilled artisan would have been motivated to use cellulose acetate having the substitutions at the 2-position and the 3-position both greater than the 6-position to ensure biodegradability.
In addition, Takatoshi teaches a cellulose acetate having a total degree of substitution of 2.54 and the degree of substitution at the 6-position is 0.72 (Example 2), a full substitution at an OH position is 1, therefore, the highest degree of substitution at the 2-position or the 3-position is 1 and the lowest degree of substitution at the 2-position or the 3-position is 0.82. Takatoshi further teaches a cellulose acetate having a total degree of substitution of 2.60 and the degree of substitution at the 6-position being 0.77 (example 5), therefore, the highest degree of substitution at the 2-position or the 3-position is 1 and the lowest degree of substitution at the 2-position or the 3-position is 0.83. Takatoshi furthermore teaches that films made from a composition comprising such cellulose acetates have excellent surface quality (minimal compression failure and film thickness unevenness) ([0275]). In view of such benefits, one ordinary skilled artisan would have been motivated, before the effective filing date of the instant application, using the cellulose acetates taught by Takatoshi for the compositions of Shih because Shih concerns to make films or large volume consumer products ([0002] and claim 19).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Itoh, as applied to Claim 1 above, and in further view of Sun et al. (CN111116997A).
The disclosure of Itoh on Claim 1 is incorporated herein by reference.
Itoh teaches a composition comprising a cellulose ester having an average degree of substitution from 1 to 2.15 (ab.) but is silent on the molecular weight of the cellulose ester.
However, Sun teaches a biodegradable cellulose composition comprising cellulose acetate having a degree of substitution of 1.5 to 2.8 (ab.), overlapping with the substitution of 1 to 2.15 of Itoh. Sun further teaches the cellulose acetate have a molecular weight of 10,000 to 120,000 (claim 5). Sun furthermore teaches the biodegradable cellulose composition comprising a plasticizer, such as triacetin (Claim 9).
One ordinary skilled artisan would have been motivated before the effective filling date of the instant application to adopt the molecular weight taught by Sun for the cellulose acetates of Itoh because both Itoh and Sun direct to a biodegradable cellulose acetate composition, the compositions of Sun and Itoh comprising common components, and both compositions of Sun and Itoh are for making cigarette filters (8: 43-57 of Itoh; Claim 28 of Sun). Moreover, Sun teaches cellulose acetates having a molecular weight of 10,000 to 120,000 are suitable for a composition for making cigarette filters.
It would have been obvious to one ordinary skilled artisan, before the effective filling date of the instant application, to have selected the overlapping portion of the molecular weight taught by Sun, i. e. 100,000 to 120,000. (See MPEP 2144.05 I).
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Shih, as applied to Claim 1 above, and in further view of Kaminen et al. (US2020/0199332 A1).
The disclosure of Shih on Claim 1 is incorporated herein by reference.
Shih teaches the cellulose composition comprising another biodegradable polymer, for example, polybutylene succinate but is silent on the molecular weight.
However, Kaminen discloses a cellulose based composition comprising another polymer, preferably polybutylene succinate ([0036]) and Kaminen exemplifies the polybutylene succinate having a molecular weight of 180,000 (Table 3). One ordinary skilled artisan would have been motivated to use polybutylene succinate having a molecular weight of 180,000 for the composition of Shih because Kaminen teaches the polybutylene succinate having the molecular weight is suitable for cellulose based composition.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HUIHONG QIAO whose telephone number is (571)272-8315. The examiner can normally be reached 9AM - 5PM.
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/HUIHONG QIAO/Examiner, Art Unit 1763
/JOSEPH S DEL SOLE/Supervisory Patent Examiner, Art Unit 1763
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