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 .
Rejections
Claim Rejections - 35 USC § 102
1. 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.
(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.
2. Claims 1, 3, 4, and 8-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yuan et al., “Effects of Polyethylene Glycol on Morphology, Thermomechanical Properties, and Water Vapor Permeability of Cellulose Acetate-Free Films”, Pharmaceutical Technology, Vol. 25, Issue 10, October 2001, pages 62-73 with Ninni et al., “Kinematic Viscosities of Poly(ethylene glycol) Blends”, J. Chem. Eng. Data, 2002, 47, pages 835-838 cited as evidence of the type of average molecular weights of PEG 200 and PEG 400 and Author Unknown, “EASTMAN CA Cellulose Acetate, Sustained-Release”, Gustav Parmentier GmbH product bulletin, obtained from http://www.parmentier.de/elo/gpf/ca-product-information-sheet.pdf, 2006-02-03 being cited as evidence of the degree of substitution of Cellulose acetate 398-10 NF.
The above cited Yuan article is complete though some pages in the sequence of pages 62-73 are not present.
Regarding claims 1, 3, 4, and 8-12:
Yuan discloses compositions containing cellulose acetate, which is a cellulose ester polymer, and polyethylene glycol having a number average molecular weight within the instantly claimed range of number average molecular weights. See Yuan, page 62, particularly the last paragraph of the second column of text, noting that the polyethylene glycol is described as a plasticizer, page 64, the first column of text, particularly the first 22 lines, noting the cellulose acetate and PEG 400, and Tables I and II, noting the PEG 400 containing compositions.
The instant specification, page 36, Table 1 and page 37, Table 3, shows that PEG 300 falls within the scope of the instantly claimed polyethylene glycol plasticizer having a number average molecular weight of from about 100 g/mol to about 800 g/mol.
Ninni, Table 1 of page 835, the second column, shows PEG 200 to have an average molecular weight of 202 and a polydispersity index of 1.095, PEG 400 to have an average molecular weight of 400 and a polydispersity index of 1.086.
Though Yuan does not state the type of average molecular weight of their PEG 400, it is expected to be the number average molecular weight based on the instant specification use of PEG 300 and the descriptions of PEG 200 and 400 of Ninni. In any event the small polydispersities of these low molecular weight polyethylene glycols necessarily gives a number average molecular weight in the instantly claimed range whether the recited molecular weights of Yuan are number average or weight average molecular weights due to the relationship polydispersity index = weight average molecular weight/number average molecular weight and their low polydispersities.
The above compositions of Yuan therefore anticipate the instant claim 1.
Yuan is silent regarding the crystallinity of their polymer composition. The polymer composition of Yuan contains the instantly claimed ingredients and amounts thereof. It is therefore expected to necessarily and inherently possess the same properties as the instantly claimed compositions, including the crystallinity of the instant claim 3. See MPEP 2112.
Yuan, page 66, third column of text, the first paragraph under “Discussion”, describes the cellulose acetate/PEG 400 films as being transparent when acetone is used as the casting solvent. These transparent films anticipate the instant claim 4.
The exemplified cellulose acetate:PEG 400 ratios of Yuan, page 64, Tables I and II, include exemplified compositions which form films having the amounts of the instant claim 8.
Yuan is silent regarding the crystallization peak temperature of their polymer composition. The polymer composition of Yuan contains the instantly claimed ingredients and amounts thereof. It is therefore expected to necessarily and inherently possess the same properties as the instantly claimed compositions, including the crystallization peak temperature of the instant claim 9. See MPEP 2112.
Yuan is silent regarding the enthalpy of crystallization of their polymer composition. The polymer composition of Yuan contains the instantly claimed ingredients and amounts thereof. It is therefore expected to necessarily and inherently possess the same properties as the instantly claimed compositions, including the enthalpy of crystallization of the instant claim 10. See MPEP 2112.
Yuan is silent regarding the enthalpy of fusion of their polymer composition. The polymer composition of Yuan contains the instantly claimed ingredients and amounts thereof. It is therefore expected to necessarily and inherently possess the same properties as the instantly claimed compositions, including the enthalpy of fusion of the instant claim 11. See MPEP 2112.
Author Unknown, “EASTMAN CA Cellulose Acetate, Sustained-Release” shows that the degree of substitution of Cellulose acetate 398-10 NF of Yuan consists essentially of cellulose diacetate. It is not seen that any additional compounds in the Cellulose acetate 398-10 NF of Yuan materially affects the basic and novel characteristics of the composition. It is therefore not seen that “consisting essentially” of the instant claim 12 excludes any additional polymers of the Cellulose acetate 398-10 NF of Yuan from the instant claim 12. See MPEP 2111.03 Transitional Phrases [R-01.2024], particularly “III. CONSISTING ESSENTIALLY OF
The transitional phrase "consisting essentially of" limits the scope of a claim to the specified materials or steps "and those that do not materially affect the basic and novel characteristic(s)" of the claimed invention. In re Herz, 537 F.2d 549, 551-52, 190 USPQ 461, 463 (CCPA 1976) (emphasis in original) (Prior art hydraulic fluid required a dispersant which appellants argued was excluded from claims limited to a functional fluid "consisting essentially of" certain components. In finding the claims did not exclude the prior art dispersant, the court noted that appellants’ specification indicated the claimed composition can contain any well-known additive such as a dispersant, and there was no evidence that the presence of a dispersant would materially affect the basic and novel characteristic of the claimed invention. The prior art composition had the same basic and novel characteristic (increased oxidation resistance) as well as additional enhanced detergent and dispersant characteristics.). "A ‘consisting essentially of’ claim occupies a middle ground between closed claims that are written in a ‘consisting of’ format and fully open claims that are drafted in a ‘comprising’ format." PPG Industries v. Guardian Industries, 156 F.3d 1351, 1354, 48 USPQ2d 1351, 1353-54 (Fed. Cir. 1998). See also Atlas Powder v. E.I. duPont de Nemours & Co., 750 F.2d 1569, 224 USPQ 409 (Fed. Cir. 1984); In re Janakirama-Rao, 317 F.2d 951, 137 USPQ 893 (CCPA 1963); Water Technologies Corp. vs. Calco, Ltd., 850 F.2d 660, 7 USPQ2d 1097 (Fed. Cir. 1988). For the purposes of searching for and applying prior art under 35 U.S.C. 102 and 103, absent a clear indication in the specification or claims of what the basic and novel characteristics actually are, "consisting essentially of" will be construed as equivalent to "comprising." See, e.g., PPG, 156 F.3d at 1355, 48 USPQ2d at 1355 ("PPG could have defined the scope of the phrase ‘consisting essentially of’ for purposes of its patent by making clear in its specification what it regarded as constituting a material change in the basic and novel characteristics of the invention."). See also AK Steel Corp. v. Sollac, 344 F.3d 1234, 1240-41, 68 USPQ2d 1280, 1283-84 (Fed. Cir. 2003) (Applicant’s statement in the specification that "silicon contents in the coating metal should not exceed about 0.5% by weight" along with a discussion of the deleterious effects of silicon provided basis to conclude that silicon in excess of 0.5% by weight would materially alter the basic and novel properties of the invention.”
3. Claims 1-3, 6, 8-11, and 17-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US Pat. Application Publication No. 2016/0068665 Budhavaram et al. with Yuan et al., “Effects of Polyethylene Glycol on Morphology, Thermomechanical Properties, and Water Vapor Permeability of Cellulose Acetate-Free Films”, Pharmaceutical Technology, Vol. 25, Issue 10, October 2001, pages 62-73 being cited as evidence that Budhavaram’s polyethylene glycol PEG 300 is necessarily a plasticizer in their compositions.
Budhavaram describes their exemplified PEG 300 as a compatibilizer at paragraph [0036]. Yuan also shows PEG 400 to be a plasticizer for cellulose esters. See Yuan, page 62, particularly the last paragraph of the second column of text, noting that the polyethylene glycol is described as a plasticizer, page 64, the first column of text, particularly the first 22 lines, noting the cellulose acetate and PEG 400, and Tables I and II, noting the PEG 400 containing compositions. It is therefore expected that the PEG 300 of Budhavaram necessarily acts as plasticizer because of its similarity to PEG 400. The PEG is of relatively low volatility and would be a good solvent for cellulose acetate. It therefore would be understood to necessarily inherently be a plasticizer as well as a compatibilizer in the compositions of Budhavaram containing PEG 300 and cellulose acetate. See MPEP 2112.
Regarding claims 1, 2, 6, and 8:
Budhavaram discloses compositions containing 68 wt% of cellulose acetate, 25 wt% of glyceryl tribenzoate, and 7 wt% of PEG 300 at paragraphs [0120], particularly the footnotes of Table 1 which defines GTB as glyceryl tribenzoate plasticizer, and [0125], particularly Table 2, Sample 41. The instant specification, page 36, Table 1 and page 37, Table 3, shows that PEG falls within the scope of the instantly claimed plasticizers having a number average molecular weight of from about 100 g/mol to about 800 g/mol. This exemplified composition of Budhavaram anticipates the instant claims 1, 2, 6, and 8.
Regarding claims 3 and 9-11:
Budhavaram is silent regarding the crystallinity of their polymer composition. The polymer composition of Budhavaram contains the instantly claimed ingredients and amounts thereof and is used in similar applications as the compositions of the instant claims. Similar compositions with similar end uses are expected to possess similar properties. It is therefore expected to necessarily and inherently possess the same properties as the instantly claimed compositions, including the crystallinity of the instant claim 3. See MPEP 2112.
Budhavaram is silent regarding the crystallization peak temperature of their polymer composition. The polymer composition of Budhavaram contains the instantly claimed ingredients and amounts thereof and is used in similar applications as the compositions of the instant claims. Similar compositions with similar end uses are expected to possess similar properties. It is therefore expected to necessarily and inherently possess the same properties as the instantly claimed compositions, including the crystallization peak temperature of the instant claim 9. See MPEP 2112.
Budhavaram is silent regarding the enthalpy of crystallization of their polymer composition. The polymer composition of Budhavaram contains the instantly claimed ingredients and amounts thereof and is used in similar applications as the compositions of the instant claims. Similar compositions with similar end uses are expected to possess similar properties. It is therefore expected to necessarily and inherently possess the same properties as the instantly claimed compositions, including the enthalpy of crystallization of the instant claim 10. See MPEP 2112.
Budhavaram is silent regarding the enthalpy of fusion of their polymer composition. The polymer composition of Budhavaram contains the instantly claimed ingredients and amounts thereof and is used in similar applications as the compositions of the instant claims. Similar compositions with similar end uses are expected to possess similar properties. It is therefore expected to necessarily and inherently possess the same properties as the instantly claimed compositions, including the enthalpy of fusion of the instant claim 11. See MPEP 2112.
Regarding claims 17-18:
Budhavaram only discloses injection molding as the means for making the articles disclosed therein. See Budhavaram’s claim 15 and paragraphs [0104]-[0105]. Budhavaram, paragraph [0126], discloses making vehicle interior parts from the compositions of Samples 38-42. Vehicle interior parts made from polymer compositions are molded to give the desired shapes. This disclosure of Budhavaram is taken as disclosing the inventions of the instant claims 17-18 with sufficient specificity to anticipate them. Furthermore, the instant claims are directed to the articles per se and not the method of making them. The articles made from Budhavaram’s Sample 41 fall within the scope of the articles of the instant claims 17-18 even if made by a different shaping process than molding because the claims are directed to the articles per se and the shaping method does not distinguish the articles of the instant claims from those of Budhavaram. See MPEP 2113.
4. Claims 1, 3, 4, 8-17 are rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as being anticipated by WO 2021/150540 Michael-Sapia et al.
Regarding claims 1, 8, and 13-16:
Michael-Sapia exemplifies compositions containing the instantly claimed combinations of cellulose ester, polyethylene glycol having an average molecular weight of 300-500 Daltons, which falls within the scope of the instantly claimed polyethylene glycol plasticizers, in amounts of 13-23 wt% and other amount ranges which fall within the scope of the amounts of polyethylene glycol of the instant claims, phosphite antioxidants, which falls within the scope of the instant claims 13-14, and citric acid, which falls within the scope of the instant claims 15-16. See Michael-Sapia, paragraphs [0097], [0262], particularly noting the compositions with PEG 200, PEG 300, PEG 400, and PEG 600, [0264], [0265], [0266], [0297], Table 14, Ex # 49, [0309], [0310], noting the phosphite antioxidant and citric acid, which falls within the scope of the instant claims 13-16, [0316], [0318], [0319], [0320], [0323], [0324], and [0325], which falls within the scope of the instant claims 1, 8, and 13-16. Table 4 of paragraph [0266] of Michael-Sapia discloses CDA, or cellulose diacetate, and PEG 200-600, which falls within the scope of the instant claims, including the instant claim 12. Note the definition of CDA at paragraph [0254] of Michael-Sapia.
Regarding claims 3 and 9-11:
Michael-Sapia is silent regarding the crystallinity of their polymer composition. The polymer composition of Michael-Sapia contains the instantly claimed ingredients and amounts thereof and is used in similar applications as the compositions of the instant claims. Similar compositions with similar end uses are expected to possess similar properties. It is therefore expected to necessarily and inherently possess the same properties as the instantly claimed compositions, including the crystallinity of the instant claim 3. See MPEP 2112.
Michael-Sapia is silent regarding the crystallization peak temperature of their polymer composition. The polymer composition of Michael-Sapia contains the instantly claimed ingredients and amounts thereof and is used in similar applications as the compositions of the instant claims. Similar compositions with similar end uses are expected to possess similar properties. It is therefore expected to necessarily and inherently possess the same properties as the instantly claimed compositions, including the crystallization peak temperature of the instant claim 9. See MPEP 2112.
Michael-Sapia is silent regarding the enthalpy of crystallization of their polymer composition. The polymer composition of Michael-Sapia contains the instantly claimed ingredients and amounts thereof and is used in similar applications as the compositions of the instant claims. Similar compositions with similar end uses are expected to possess similar properties. It is therefore expected to necessarily and inherently possess the same properties as the instantly claimed compositions, including the enthalpy of crystallization of the instant claim 10. See MPEP 2112.
Michael-Sapia is silent regarding the enthalpy of fusion of their polymer composition. The polymer composition of Michael-Sapia contains the instantly claimed ingredients and amounts thereof and is used in similar applications as the compositions of the instant claims. Similar compositions with similar end uses are expected to possess similar properties. It is therefore expected to necessarily and inherently possess the same properties as the instantly claimed compositions, including the enthalpy of fusion of the instant claim 11. See MPEP 2112.
Regarding claim 4:
Michael-Sapia, paragraph [0114], falls within the scope of the instant claim 4.
Regarding claim 17:
The injection molded plaques of Michael-Sapia, paragraphs [0316] and [0319] fall within the scope of the instant claim 17.
Claim Rejections - 35 USC § 103
5. 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.
6. Claims 7, 12, 13, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over US Pat. Application Publication No. 2016/0068665 Budhavaram et al. with Yuan et al., “Effects of Polyethylene Glycol on Morphology, Thermomechanical Properties, and Water Vapor Permeability of Cellulose Acetate-Free Films”, Pharmaceutical Technology, Vol. 25, Issue 10, October 2001, pages 62-73 being cited as evidence that Budhavaram’s polyethylene glycol PEG 300 is necessarily a plasticizer in their compositions.
Budhavaram describes their exemplified PEG 300 as a compatibilizer at paragraph [0036]. Yuan also shows PEG 400 to be a plasticizer for cellulose esters. See Yuan, page 62, particularly the last paragraph of the second column of text, noting that the polyethylene glycol is described as a plasticizer, page 64, the first column of text, particularly the first 22 lines, noting the cellulose acetate and PEG 400, and Tables I and II, noting the PEG 400 containing compositions. It is therefore expected that the PEG 300 of Budhavaram necessarily acts as plasticizer because of its similarity to PEG 400. The PEG is of relatively low volatility and would be a good solvent for cellulose acetate. It therefore would be understood to necessarily inherently be a plasticizer as well as a compatibilizer in the compositions of Budhavaram containing PEG 300 and cellulose acetate. See MPEP 2112.
The entire discussion of paragraph 3 above is repeated here.
Regarding claim 7:
Budhavaram, paragraph [0040], discloses using plasticizers, including triacetin, i.e. glycerol triacetate, triethyl citrate and acetyl triethyl citrate, in their compositions. Budhavaram does not disclose the use of these plasticizers with the above discussed compositions of Budhavaram.
It would have been obvious to one of ordinary skill in the art prior to the instantly claimed invention to use the combination of PEG 300 and cellulose acetate exemplified by Budhavaram and glycerol triacetate, triethyl citrate or acetyl triethyl citrate in the compositions of Budhavaram because they are encompassed for use as plasticizers by Budhavaram and the exemplified compositions of Budhavaram would have been expected to additionally have the plasticizing effects of the triethyl citrate or acetyl triethyl citrate of Budhavaram.
Regarding claim 12:
Budhavaram discloses cellulose acetates consisting essentially of cellulose diacetate at paragraph [0050]. They are not disclosed with the PEG 300 containing compositions of Budhavaram.
It would have been obvious to one of ordinary skill in the art prior to the instantly claimed invention to use the combination of PEG 300 and cellulose acetate exemplified by Budhavaram in which the cellulose acetate consists essentially of cellulose diacetate because cellulose diacetates are encompassed by Budhavaram, paragraph [0050], and such compositions of Budhavaram would have been expected to have the properties of cellulose diacetates and the PEG 300 of Budhavaram.
“[C]onsisting essentially” of the instant claim 12 is not taken as being limiting because there is no probative showing that any additional compounds in the cellulose acetate of Budhavaram, paragraph [0050], materially affects the basic and novel characteristics of the composition. It is therefore not seen that “consisting essentially” of the instant claim 12 excludes any additional polymers of the cellulose diacetates of Budhavaram from the instant claim 12. See MPEP 2111.03 Transitional Phrases [R-01.2024], particularly “III. CONSISTING ESSENTIALLY OF
The transitional phrase "consisting essentially of" limits the scope of a claim to the specified materials or steps "and those that do not materially affect the basic and novel characteristic(s)" of the claimed invention. In re Herz, 537 F.2d 549, 551-52, 190 USPQ 461, 463 (CCPA 1976) (emphasis in original) (Prior art hydraulic fluid required a dispersant which appellants argued was excluded from claims limited to a functional fluid "consisting essentially of" certain components. In finding the claims did not exclude the prior art dispersant, the court noted that appellants’ specification indicated the claimed composition can contain any well-known additive such as a dispersant, and there was no evidence that the presence of a dispersant would materially affect the basic and novel characteristic of the claimed invention. The prior art composition had the same basic and novel characteristic (increased oxidation resistance) as well as additional enhanced detergent and dispersant characteristics.). "A ‘consisting essentially of’ claim occupies a middle ground between closed claims that are written in a ‘consisting of’ format and fully open claims that are drafted in a ‘comprising’ format." PPG Industries v. Guardian Industries, 156 F.3d 1351, 1354, 48 USPQ2d 1351, 1353-54 (Fed. Cir. 1998). See also Atlas Powder v. E.I. duPont de Nemours & Co., 750 F.2d 1569, 224 USPQ 409 (Fed. Cir. 1984); In re Janakirama-Rao, 317 F.2d 951, 137 USPQ 893 (CCPA 1963); Water Technologies Corp. vs. Calco, Ltd., 850 F.2d 660, 7 USPQ2d 1097 (Fed. Cir. 1988). For the purposes of searching for and applying prior art under 35 U.S.C. 102 and 103, absent a clear indication in the specification or claims of what the basic and novel characteristics actually are, "consisting essentially of" will be construed as equivalent to "comprising." See, e.g., PPG, 156 F.3d at 1355, 48 USPQ2d at 1355 ("PPG could have defined the scope of the phrase ‘consisting essentially of’ for purposes of its patent by making clear in its specification what it regarded as constituting a material change in the basic and novel characteristics of the invention."). See also AK Steel Corp. v. Sollac, 344 F.3d 1234, 1240-41, 68 USPQ2d 1280, 1283-84 (Fed. Cir. 2003) (Applicant’s statement in the specification that "silicon contents in the coating metal should not exceed about 0.5% by weight" along with a discussion of the deleterious effects of silicon provided basis to conclude that silicon in excess of 0.5% by weight would materially alter the basic and novel properties of the invention.”
Regarding claim 13:
Budhavaram, paragraphs [0031], [0070], and [0071], discloses using antioxidants in their compositions. The antioxidants are not exemplified with their cellulose acetate and PEG 300.
It would have been obvious to one of ordinary skill in the art prior to the instantly claimed invention to use the combination of PEG 300 and cellulose acetate exemplified by Budhavaram and antioxidants disclosed by Budhavaram in the compositions of Budhavaram because they are encompassed by Budhavaram, as discussed above, and the exemplified compositions of Budhavaram would have been expected to additionally have the resistance to oxidation given by the antioxidants of Budhavaram.
Regarding claims 17 and 18:
Budhavaram, paragraphs [0107] and [0110], discloses making articles falling within the scope of the instant claims 17 and 18 from their compositions. Budhavaram, claim 15, claims injection molding their compositions to form their articles. Budhavaram does not exemplify making them with their exemplified composition of PEG 300 and cellulose acetate.
It would have been obvious to one of ordinary skill in the art prior to the instantly claimed invention to make the articles of the instant claims 17 and 18 by injection molding the exemplified composition of Budhavaram, paragraph [0125], Table 2, Sample 41, to form articles of the instant claims 17 and 18 because such molded articles are encompassed by Budhavaram, claim 15 and paragraphs [0107]-[0113], and would have been expected to have the properties of the composition of Sample 41 of Table 2 of paragraph [0125] of Budhavaram.
Regarding claim 19:
Budhavaram, paragraphs [0109] and [0110], discloses making medical devices from their compositions. They do not exemplify making them with their exemplified composition of PEG 300 and cellulose acetate.
It would have been obvious to one of ordinary skill in the art prior to the instantly claimed invention to make the medical devices of Budhavaram, paragraphs [0109] and [0110], with their exemplified compositions of PEG 300 and cellulose acetate which fall within the scope of the instant claims because such medical devices are encompassed broadly by Budhavaram and would have been expected to have the properties of the composition of Sample 41 of Table 2 of paragraph [0125] of Budhavaram.
7. Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over US Pat. Application Publication No. 2016/0068665 Budhavaram et al. in view of Yuan et al., “Effects of Polyethylene Glycol on Morphology, Thermomechanical Properties, and Water Vapor Permeability of Cellulose Acetate-Free Films”, Pharmaceutical Technology, Vol. 25, Issue 10, October 2001, pages 62-73.
Budhavaram describes their exemplified PEG 300 as a compatibilizer at paragraph [0036]. Yuan also shows PEG 400 to be a plasticizer for cellulose esters. See Yuan, page 62, particularly the last paragraph of the second column of text, noting that the polyethylene glycol is described as a plasticizer, page 64, the first column of text, particularly the first 22 lines, noting the cellulose acetate and PEG 400, and Tables I and II, noting the PEG 400 containing compositions. It is therefore expected that the PEG 300 of Budhavaram necessarily acts as plasticizer because of its similarity to PEG 400. The PEG is of relatively low volatility and would be a good solvent for cellulose acetate. It therefore would be understood to necessarily inherently be a plasticizer as well as a compatibilizer in the compositions of Budhavaram containing PEG 300 and cellulose acetate. See MPEP 2112.
The entire discussion of paragraph 3 above is repeated here.
Regarding claim 5:
Budhavaram discloses using polyethylene glycol of unspecified molecular weights as plasticizers. See Budhavaram, paragraph [0046], noting “polyethylene glycols”. Budhavaram, paragraph [0036] discloses using polyethylene glycols having molecular weights less than 10,000 as compatibilizers and discloses combinations of their compatibilizers. Budhavaram exemplifies PEG 300 and contemplates the use of polyethylene glycols with molecular weights up to 10000 and combinations of their compatibilizers.
Yuan, Tables I and II of page 64 exemplifies PEG 1000 and PEG 3350 as plasticizers for cellulose acetate. These molecular weights are taken as falling within the scope of the instantly claimed molecular weights of the instant claim 5.
It would have been obvious to one of ordinary skill in the art prior to the instantly claimed invention to use the combination of PEG 300 and cellulose acetate exemplified by Budhavaram and polyethylene glycols of the molecular weights of the instant claim 5 because such polyethylene glycols are encompassed by the compatiblizer combinations of Budhavaram, paragraph [0036] and the general recitation to use polyethylene glycols of unspecified molecular weights as plasticizers of Budhavaram, paragraph [0040], Yuan discloses using PEG 1000 and PEG 3350 as cellulose acetate plasticizers, and the benefits of the low molecular weight compatbilizer of Budhavaram and the higher molecular weight polyethylene glycol compatibilizer of Budhavaram plus the plasticization expected of the polyethylene glycols of Budhavaram and the plasticization taught by Yuan, as discussed above, would have been expected in the resulting compositions of Budhavaram.
8. Claims 14-16 are rejected under 35 U.S.C. 103 as being unpatentable over US Pat. Application Publication No. 2016/0068665 Budhavaram et al. in view of WO 2021/150540 Michael-Sapia et al. with Yuan et al., “Effects of Polyethylene Glycol on Morphology, Thermomechanical Properties, and Water Vapor Permeability of Cellulose Acetate-Free Films”, Pharmaceutical Technology, Vol. 25, Issue 10, October 2001, pages 62-73 being cited as evidence that Budhavaram’s polyethylene glycol PEG 300 is necessarily a plasticizer in their compositions.
Budhavaram describes their exemplified PEG 300 as a compatibilizer at paragraph [0036]. Yuan also shows PEG 400 to be a plasticizer for cellulose esters. See Yuan, page 62, particularly the last paragraph of the second column of text, noting that the polyethylene glycol is described as a plasticizer, page 64, the first column of text, particularly the first 22 lines, noting the cellulose acetate and PEG 400, and Tables I and II, noting the PEG 400 containing compositions. It is therefore expected that the PEG 300 of Budhavaram necessarily acts as plasticizer because of its similarity to PEG 400. The PEG is of relatively low volatility and would be a good solvent for cellulose acetate. It therefore would be understood to necessarily inherently be a plasticizer as well as a compatibilizer in the compositions of Budhavaram containing PEG 300 and cellulose acetate. See MPEP 2112.
The entire discussion of paragraph 3 above is repeated here.
Regarding claim 14:
Budhavaram discloses using antioxidants including organophosphorus compounds at
Budhavaram, paragraph [0070]. Organophosphorus compounds encompass the phosphites of the instant claim 14. The phosphite antioxidants are not exemplified with the cellulose acetate and PEG 300 of Budhavaram, paragraph [0125], Table 2, Sample 41.
Michael-Sapia, paragraphs [0028] and [0030], discloses adding phosphite antioxidants, which falls within the scope of the instant claims 15 and 16, to cellulose acetate compositions which may contain PEG plasticizers (Michael-Sapia, paragraphs [0020]-[0023]).
It would have been obvious to one of ordinary skill in the art prior to the instantly claimed invention to use the combination of PEG 300 and cellulose acetate exemplified by Budhavaram, paragraph [0125], Table 2, Sample 41 and the phosphite antioxidants of the instant claim 14 because they are encompassed by Budhavaram, as discussed above, Michael-Sapia discloses the use of phosphite antioxidants in similar compositions as those of Budhavaram, and the exemplified compositions of Budhavaram would have been expected to additionally have the resistance to oxidation given by the phosphite antioxidants of Michael-Sapia.
Regarding claims 15-16:
Budhavaram, paragraph [0031], discloses using other additives in their PEG 300/cellulose acetate compositions but does not disclose polycarboxylic acids or citric acid.
Michael-Sapia, paragraphs [0029], [0031], and [0045], discloses adding citric acid, which falls within the scope of the instant claims 15 and 16, to cellulose acetate compositions which may contain PEG plasticizers (Michael-Sapia, paragraphs [0020]-[0023]).
It would have been obvious to one of ordinary skill in the art prior to the instantly claimed invention to use the combination of PEG 300 and cellulose acetate exemplified by Budhavaram, paragraph [0125], Table 2, Sample 41 and citric acid, which falls within the scope of the instant claims 15-16, because the citric acid is encompassed by the other additives of Budhavaram, Michael-Sapia discloses adding citric acid to cellulose acetate compositions to act as a second stabilizer and to act as oxidative decomposition agents and the citric acid of Michael-Sapia would have been expected to give the properties it provides their compositions to the compositions of Budhavaram.
9. Claims 2, 6, 7, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2021/150540 Michael-Sapia et al.
The entire discussion of paragraph 4 above is repeated here.
Regarding claims 2, 6, and 7:
Michael-Sapia, paragraph [0005], discloses using at least one plasticizer, which encompasses two plasticizers. Michael-Sapia, paragraph [0021], discloses triethyl citrate, triacetin, i.e. glycerol triacetate, and acetylated triethyl citrate, which fall within the scope of the instant claim 7. The amounts of plasticizer disclosed by Michael-Sapia, paragraph [0022] and the amounts of polyethylene glycol plasticizer exemplified by Michael-Sapia leave amounts remaining for the second plasticizer which fall within the scope of the instant claim 6. Michael-Sapia does not specify the instantly claimed PEG plasticizer with another plasticizer with sufficient specificity to anticipate the instant claim 2.
It would have been obvious to one of ordinary skill in the art prior to the instantly claimed invention to use the combination of cellulose esters and polyethylene glycol plasticizers which fall within the scope of the instant claim 1 with an additional plasticizer because using an additional plasticizer is encompassed by Michael-Sapia, paragraph [0005], and the combination of plasticizers would have been expected to contribute the properties of each plasticizer in proportion to the amounts thereof.
It would have been obvious to one of ordinary skill in the art prior to the instantly claimed invention to use the combination of cellulose esters and polyethylene glycol plasticizers which fall within the scope of the instant claim 1 with the plasticizers of the instant claim 7 in the amounts of the instant claim 6 because these plasticizer combinations and amounts are encompassed by Michael-Sapia and would have been expected to give compositions having the properties of each plasticizer in proportion to the amounts thereof.
Regarding claim 18:
Michael-Sapia, paragraph [0268], discloses heat forming their compositions into the form of a container or a cup. It is not seen that they actually form the instantly claimed compositions into containers or cups. Therefore, Michael-Sapia is not seen as anticipating the instant claim 18. The cup and container fall within the scope of the instant claim 18, hot beverage pod, beverage holder, packaging, and container.
It would have been obvious to one of ordinary skill in the art prior to the instantly claimed invention to form the combination of cellulose esters and polyethylene glycol plasticizers which fall within the scope of the instant claim 1 into the cup or container of Michael-Sapia because Michael-Sapia exemplifies forming their compositions into these forms and they would have been expected to have the properties of the compositions of Michael-Sapia which fall within the scope of the instant claim 1.3
Conclusion
10. Any inquiry concerning this communication or earlier communications from the examiner should be directed to PATRICK D NILAND whose telephone number is (571)272-1121. The examiner can normally be reached on Monday to Friday from 10 to 5.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert S Jones, can be reached at telephone number 571-270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Examiner interviews are available via a variety of formats. See MPEP § 713.01. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) Form at https://www.uspto.gov/InterviewPractice.
/PATRICK D NILAND/Primary Examiner, Art Unit 1762