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 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.
Claims 1-2 and 4-7 are rejected under 35 U.S.C. 103 as being unpatentable over Fridman et al. (RU-2624692-C1).
Regarding claims 1-2 and 6
Fridman discloses a thermoplastic plasticized modified cellulose acetate that comprises cellulose acetate, a low molecular weight plasticizer and a stabilizer (abstract).
Fridman discloses a composition comprising 100 parts cellulose acetate, 50 parts acetyl triethyl citrate (i.e., the specifically claimed citrate compound, which is expected to have the claimed solubility properties), and 10 parts of the rection product of polybutylene glycol adipate (Examples 3 and 4).
Although the 50 parts of the citrate compound is above the limit of 45 parts as claimed, and the 10 parts of adipate are above the limit of 9 parts as claimed, there is not such a difference in amounts that the skilled artisan would expect a difference in properties, and a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
Regarding claim 4
Although the total of component (B) and (C) are greater than that claimed, there is not such a difference in amounts that the skilled artisan would expected a difference in properties, and a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
Regarding claim 5
The amount of component (B) is 83.3 % and the amount of component (C) is 16.7 % of the total of components (B) and (C).
Regarding claim 7
Fridman discloses molding the composition (immediately before Table 1),which would form a molded article.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Fridman et al. (RU-2624692-C1), as applied to claims 1-2 and 4-7 above, in view of JP-5798640-B2 (hereafter the ‘640 patent).
Regarding claim 3
Although Fridman does not disclose the claimed adipate compounds, Fridman does disclose the use of adipate compounds in a plasticized cellulose acetate. However, the ‘640 patent discloses that in cellulose ester compositions such as cellulose acetate that adipic acid compounds can be used to help plasticize the cellulose acetate(Background Art), and discloses that claimed adipate compounds (Formulas I-1, II-1, and III-1). Therefore it would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to add to the teachings of Fridman by using one of the claims adipate compounds to help plasticize the composition, with a reasonable expectation of success, as suggested by the ‘640 patent.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Fridman et al. (RU-2624692-C1), as applied to claims 1-2 and 4-7 above, in view of Schuler (USP 3,549,248).
Regarding claim 8
Although Fridman does not disclose using the composition to make an eyeglass frame, Fridman does disclose the other limitations of the claim including forming molded articles. However, Schuler discloses that plasticized cellulose acetate may be used to make an eyeglass frame (column 1, lines 36-39). Therefore it would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to add to the teachings of Fridman by using his composition to form an eyeglass frame, with a reasonable expectation of success, as suggested by Schuler.
Response to Arguments
Applicants argue against the prior art rejection.
Applicants argue that component (C) is a plasticizer as recited in the claims. This is not persuasive as claim one recites in part”…1 to 9 parts by mass of an adipate-based compound.” The claims: 1) do not recite a plasticizer; 2) the reaction product of polyethylene glycol/polybutylene glycol adipate and MDI is an “adipate-based compound” as claimed; and 3) applicants have not shown that the adipate-based compound of the reference would not act like a plasticizer.
Applicants argue against the non-overlapping ranges. These arguments are not persuasive as applicants have not shown any evidence of new or unexpected results for the claimed ranges.
Applicants argue that the adipate-based compound of Fridman is not a plasticizer as the adipate compound of the ‘640 patent is. Even if this is true it is not persuasive as the ‘640 patent discloses that the claimed adipate compounds can be used to help plasticize a plasticized cellulose acetate, which is motivation itself for the combination.
The remaining arguments have been fully considered but are not persuasive for the same reasons given above.
Conclusion
THIS ACTION IS MADE FINAL. 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 JAMES E MCDONOUGH whose telephone number is (571)272-6398. The examiner can normally be reached Mon-Fri 10-10.
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JAMES E. MCDONOUGH
Examiner
Art Unit 1734
/JAMES E MCDONOUGH/Primary Examiner, Art Unit 1734
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