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 § 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 2-21 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.
Claims 2 and 5-15 the phrase "as defined in claim 1" renders the claim indefinite because it is unclear which limitation(s) defined in claim 1 correspond to the claimed invention [see MPEP § 2173.05(f)]. The phrase “as defined in” will be interpreted as “according to”.
Claim 3 the phrase "as defined in claim 2" renders the claim indefinite because it is unclear which limitation(s) defined in claim 2 correspond to the claimed invention [see MPEP § 2173.05(f)]. The phrase “as defined in” will be interpreted as “according to”.
Claim 4 the phrase "as defined in claim 3" renders the claim indefinite because it is unclear which limitation(s) defined in claim 3 correspond to the claimed invention [see MPEP § 2173.05(f)]. The phrase “as defined in” will be interpreted as “according to”.
Claims 16-21 the phrase "as defined in claim 15" renders the claim indefinite because it is unclear which limitation(s) defined in claim 15 correspond to the claimed invention [see MPEP § 2173.05(f)]. The phrase “as defined in” will be interpreted as “according to”.
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.
Claim(s) 1, 6, 9, and 11-15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yuan, J.; Shang, P. P.; Wu, S. H. Pharm. Technol. 2001, 25, 62, when taken with Polyethylene glycol 3,350 Certificate of Analysis, Sigma-Aldrich, 2025.
Regarding claims 1, 6, 9 and 15: Yuan et al. (Pharm. Technol. 2001, 25, 62) discloses cellulose acetate (CA) films containing polyethylene glycol (PEG) as a plasticizer [abstract], wherein Sample 13 [Table I, Sample 13] prepares a film containing 25 wt% PEG 3350 and 75 wt% CA (CA-PEG ratio 8:2) by casting a polymer solution onto glass plate and allowing the solvent to evaporate [§Materials and Methods, Preparation of free films; Table I, Sample 13]. Yuan et al. (Pharm. Technol. 2001, 25, 62) discloses the PEG 3350 has a Mn (number average molecular weight) of 3367 [§Materials and Methods, Materials].
Polyethylene glycol 3,350 Certificate of Analysis provides evidence for a Mn of 3367 [§Certificate of Analysis].
Regarding claims 11-14: Yuan et al. (Pharm. Technol. 2001, 25, 62) discloses the basic claimed composition [as set forth above with respect to claim 1].
The claimed effects and physical properties, i.e. the polymer composition exhibits a generally unimodal distribution from a wavenumber of 1000 cm-1 to a wavenumber of 1150 cm-1 as determined by ATR-FTIR [instant claim 11]; the polymer composition exhibits one or less absorbance peaks greater than 0.3 from a wavenumber of 1000 cm-1 to a wavenumber of 1150 cm-1 as determined by ATR-FTIR [instant claim 12]; the polymer composition exhibits no absorbance peaks greater than 0.08 from a wavenumber of 2500 cm-1 to a wavenumber of 4000 cm-1 as determined by ATR-FTIR [instant claim 13]; the polymer composition exhibits two or less absorbance peaks greater than 0.36 as determined by ATR-FTIR [instant claim 14], would inherently be achieved, as “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) [see MPEP 2112.01].
Claim(s) 1, 5, 9, and 11-15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yuan, J.; Shang, P. P.; Wu, S. H. Pharm. Technol. 2001, 25, 62, when taken with Polyethylene glycol 1000 Certificate of Analysis, Sigma-Aldrich, 2023.
Regarding claims 1, 5, 9 and 15: Yuan et al. (Pharm. Technol. 2001, 25, 62) discloses cellulose acetate (CA) films containing polyethylene glycol (PEG) as a plasticizer [abstract], wherein Sample 10 [Table I, Sample 10] prepares a film containing 25 wt% PEG 1000 and 75 wt% CA (CA-PEG ratio 8:2) by casting a polymer solution onto glass plate and allowing the solvent to evaporate [§Materials and Methods, Preparation of free films; Table I, Sample 10]. Yuan et al. (Pharm. Technol. 2001, 25, 62) discloses the PEG 1000 has a Mn (number average molecular weight) of 950-1050 [§Materials and Methods, Materials].
Polyethylene glycol 1000 Certificate of Analysis provides evidence for a Mn of 950-1050 [§Certificate of Analysis].
Regarding claims 11-14: Yuan et al. (Pharm. Technol. 2001, 25, 62) discloses the basic claimed composition [as set forth above with respect to claim 1].
The claimed effects and physical properties, i.e. the polymer composition exhibits a generally unimodal distribution from a wavenumber of 1000 cm-1 to a wavenumber of 1150 cm-1 as determined by ATR-FTIR [instant claim 11]; the polymer composition exhibits one or less absorbance peaks greater than 0.3 from a wavenumber of 1000 cm-1 to a wavenumber of 1150 cm-1 as determined by ATR-FTIR [instant claim 12]; the polymer composition exhibits no absorbance peaks greater than 0.08 from a wavenumber of 2500 cm-1 to a wavenumber of 4000 cm-1 as determined by ATR-FTIR [instant claim 13]; the polymer composition exhibits two or less absorbance peaks greater than 0.36 as determined by ATR-FTIR [instant claim 14], would inherently be achieved, as “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) [see MPEP 2112.01].
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.
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(s) 1-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Budhavaram et al. (US 2016/0068665).
Regarding claims 1-3, 5-7 and 9: Budhavaram et al. (US ‘665) discloses plasticized cellulose ester compositions [abstract], wherein Sample 41 [Sample 41; 0126; Table 2, Sample 41] contains 68 wt% CA (cellulose acetate [0120]), 25 wt% GTB (glyceryl tribenzoate [0120]) and 7 wt% PEG-300 (polyethylene glycol, molecular weight 300) [Sample 41; 0126; Table 2, Sample 41]. Budhavaram et al. (US ‘665) discloses polyethylene glycols having a molecular weight (number average (Mn) [0027; 0051]) of less than about 10,000 [0037].
Budhavaram et al. (US ‘665) does not disclose the polyethylene glycol of Sample 41 having a Mn of about 1000 g/mol to about 15,000 g/mol [instant claim 1]; a Mn of about 1000 g/mol to about 2,000 g/mol [instant claim 5]; a Mn of about 2000 g/mol to about 5,000 g/mol [instant claim 6]; a Mn of about 5000 g/mol to about 10,000 g/mol [instant claim 7]. However, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) [See MPEP 2144.05].
Additionally, while the polyethylene glycol of Sample 41 having a Mn of about 1000 g/mol to about 15,000 g/mol [instant claim 1]; a Mn of about 1000 g/mol to about 2,000 g/mol [instant claim 5]; a Mn of about 2000 g/mol to about 5,000 g/mol [instant claim 6]; a Mn of about 5000 g/mol to about 10,000 g/mol [instant claim 7], one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to have employed a polyethylene glycol having a Mn of about 1000 g/mol to about 15,000 g/mol; a Mn of about 1000 g/mol to about 2,000 g/mol; a Mn of about 2000 g/mol to about 5,000 g/mol; a Mn of about 5000 g/mol to about 10,000 g/mol, as Budhavaram et al. (US ‘665) discloses polyethylene glycols having a number average molecular weight less than about 10,000 [0037]. See also In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980) [MPEP 2144.05].
Regarding claim 4: Budhavaram et al. (US ‘665) discloses triacetin and glyceryl tribenzoate as plasticizers [0040].
An express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious. In re Fout, 675 F.2d 297, 213 USPQ 532 (CCPA 1982) [see MPEP 2144.06].
Regarding claim 8: Budhavaram et al. (US ‘665) discloses about 10 to about 40 wt% of plasticizers (ex. GTB) [0037] and about 0.1% to about 20 wt% polyethylene glycols having a molecular weight (number average (Mn) [0027; 0051]) of less than about 10,000 [0037].
Budhavaram et al. (US ‘665) does not specifically disclose about 50 to about 80 wt% of polyethylene glycol in relation to all plasticizers. However, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) [See MPEP 2144.05].
Regarding claim 10: Budhavaram et al. (US ‘665) discloses cellulose esters, such as cellulose acetate (CA) [0020-0023; 0054-0058; 0120; 0126].
Budhavaram et al. (US ‘665) does not specifically disclose cellulose diacetate. However, a prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. “An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties.” In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979) [See MPEP 2144.09]. Compounds which are homologs (compounds differing regularly by the successive addition of the same chemical group) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977) [See MPEP 2144.09].
Regarding claims 11-14: Budhavaram et al. (US ‘665) discloses the basic claimed composition [as set forth above with respect to claim 1].
The claimed effects and physical properties, i.e. the polymer composition exhibits a generally unimodal distribution from a wavenumber of 1000 cm-1 to a wavenumber of 1150 cm-1 as determined by ATR-FTIR [instant claim 11]; the polymer composition exhibits one or less absorbance peaks greater than 0.3 from a wavenumber of 1000 cm-1 to a wavenumber of 1150 cm-1 as determined by ATR-FTIR [instant claim 12]; the polymer composition exhibits no absorbance peaks greater than 0.08 from a wavenumber of 2500 cm-1 to a wavenumber of 4000 cm-1 as determined by ATR-FTIR [instant claim 13]; the polymer composition exhibits two or less absorbance peaks greater than 0.36 as determined by ATR-FTIR [instant claim 14], would implicitly be achieved, as “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) [see MPEP 2112.01].
Regarding claims 15-16 and 19: Budhavaram et al. (US ‘665) discloses a molded article, such as a vehicle interior part (ex. cup holder) [0107; 0126].
Regarding claims 17-18: Budhavaram et al. (US ‘665) discloses a molded article, such as food and beverage containers [0107].
A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim [see MPEP 2111.02].
Regarding claim 20: Budhavaram et al. (US ‘665) discloses a molded article, such as appliance components [0107].
Regarding claim 21: Budhavaram et al. (US ‘665) discloses a molded article, such as medical devices [0107; 0109].
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 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of copending Application No. 18/297340 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the polymer composition containing a cellulose ester polymer and plasticizer overlaps in scope with the instant claimed polymer composition. While Application No. 18/297340 does not specifically disclose claim 1 containing 3-30 wt% of second plasticizer comprising a polyethylene glycol having a number average molecular weight of 1,000 g/mol to 15,000 g/mol, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included 3-30 wt% of second plasticizer comprising a polyethylene glycol having a number average molecular weight of 1,000 g/mol to 15,000 g/mol, and would have been motivated to do so since Application No. 18/297340 claims 3-30 wt% of second plasticizer [claim 6] comprising a polyethylene glycol having a number average molecular weight of 1,000 g/mol to 15,000 g/mol [claim 5]. “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) [see MPEP 2144.06].
One of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to have employed a polyethylene glycol having a Mn of about 1000 g/mol to about 2,000 g/mol; a Mn of about 2000 g/mol to about 5,000 g/mol; a Mn of about 5000 g/mol to about 10,000 g/mol, as Application No. 18/297340 claims a polyethylene glycol having a number average molecular weight of 1,000 g/mol to 15,000 g/mol [claim 5]. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) [See MPEP 2144.05].
The claimed effects and physical properties, i.e. the polymer composition exhibits a generally unimodal distribution from a wavenumber of 1000 cm-1 to a wavenumber of 1150 cm-1 as determined by ATR-FTIR [instant claim 11]; the polymer composition exhibits one or less absorbance peaks greater than 0.3 from a wavenumber of 1000 cm-1 to a wavenumber of 1150 cm-1 as determined by ATR-FTIR [instant claim 12]; the polymer composition exhibits no absorbance peaks greater than 0.08 from a wavenumber of 2500 cm-1 to a wavenumber of 4000 cm-1 as determined by ATR-FTIR [instant claim 13]; the polymer composition exhibits two or less absorbance peaks greater than 0.36 as determined by ATR-FTIR [instant claim 14], would implicitly be achieved, as “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) [see MPEP 2112.01].
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
See attached form PTO-892.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL F PEPITONE whose telephone number is (571)270-3299. The examiner can normally be reached on 7:00 AM - 3:30 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached on 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MICHAEL F PEPITONE/Primary Examiner, Art Unit 1767