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 Interpretation
Instant invention is directed to cellulose ester composition comprising property enhancing agent, which is defined in claims 3-5 and includes diprotic acid, organic acid or tartaric acid. Instant specification also disclose use of citric acid, which while not diprotic it is an organic acid. While prior art of record may not specifically call these compounds as property enhancing agents, the compounds and their properties are mutually exclusive as such if these compounds are recited in the prior art their property of enhancing properties will be inherent as in both instant invention and prior art will recite compounds having identical chemical structure.
Additionally, instant specification [0007] defines the property enhancing agent if incorporated into cellulose ester polymer will improve physical property of the molded article. Properties that applicants disclose include L* values (CIELAB) [0008-0012, 0014]. However in [0013] the applicants disclose that the property enhancing agent can lower intrinsic viscosity of the cellulose ester. This is actually counterintuitive because CIELAB measurements are influenced by surface chemistry, morphology, crystallinity, phase structure, as well as mechanical and thermal stability. Polymers with lower molecular weight often have lower mechanical strength and toughness, lower viscosity, lower glass and melt temperature and greater chain mobility. Such compositions are prone to defects and degradation. The examiner request that applicants provide further insight on this part of the specification. Until then, the examiner will treat the L* values as not necessarily better but the higher the value is the lighter color will be.
Claim Objections
Claims 1 and 2 are objected to because of the following informalities: Applicant’s claims 1 and 2 refer to the Pka of property enhancing agent. Correct and accepted form should be pKa not Pka. Appropriate correction is required. Specification requires the same correction.
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.
Claim Rejections - 35 USC § 102
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.
Claims 1-5, 7-10, 12-16 and 20 are rejected under 35 U.S.C. 102(a)(1) or 102(a)(2) as being anticipated by Shih (WO 2021/150541) (EFD 20/01/2020).
With respect to claims 1, 2 and 4, Shih discloses biodegradable cellulose acetate (reads on cellulose ester) composition (Title) and plasticizer (PEG) along with additives (Abstract) to form films, sheets and articles. Exemplified additive (see examples 45-5, 45-6, 45-9, 45-10) is citric acid which has pKa values of 3.13 and 4.76 for first and second carboxylic acid group.
With respect to claim 3-5, while examples of Shih disclose use of citric acid, in [0044] additional suitable compounds are clearly envisaged and disclosed. Right next to citric acid, Shih discloses tartaric acid which is both diprotic and organic.
With respect to claims 7 and 8, example 45-4 (table 24 page 88) discloses cellulose acetated with addition of PEG400 (17 parts), Weston 705T antioxidant (0.5 parts), DLTDP antioxidant (0.1 parts exhibits L* value of 57.2. Example 45-6 comprises in addition citric acid (0.1 parts) and its L* value increased to 84.2. Consequently addition of small amount of citric acid resulted in increased L* to greater than required 62.
With respect to claim 9, Shih utilized citric acid in the examples mentioned above in 0.1 parts, however specification states that organic acid if utilized its amount is in a range of 0.1-0.5 parts [0096].
With respect to claim 10, according to claim 1 of Shih, cellulose acetate has a degree of substitution of 2.2-2.6 which lies squarely within applicant’s range.
With respect to claim 12, with content of organic acid being less than 1%, content of plasticizer is 1-40wt%, balance 39-98 wt.% will be the cellulose acetate [0020].
With respect to claim 13, plasticizer exemplified by Shih is PEG400 (see also claim 7 of Shih), however triacetin is also disclosed and clearly envisaged in [0019]. Triacetin in teachings of Shih is also disclosed as food-compliant plasticizer (bottom of 0031).
With respect to claim 14, examples of Shih mentioned above disclose use of antioxidants. Other options for various antioxidants can be found in [0026-0027] of Shih.
With respect to claims 15 and 16, Shih discloses use of additives such as metal oxides (silica, titania), mineral fillers such as talc, calcium carbonate as well as dyes colorants and pigments [0031].
With respect to claim 20, the composition of Shih is directed to the single-use consumer products [0033] that are compostable and degradable and includes melt extruded products [0004] such as containers, food packaging straws, plates, bowls and the like [0088].
Claims 17 and 19 are rejected under 35 U.S.C. 102(a)(1) or 102(a)(2) as being anticipated by Shih (WO 2021/150541) (EFD 20/01/2020).
With respect to claims 17 and 19, Shih discloses biodegradable cellulose acetate (reads on cellulose ester) composition (Title) and plasticizer (PEG) along with additives (Abstract) to form films, sheets and articles. Exemplified additive (see examples 45-5, 45-6, 45-9, 45-10) is citric acid which has pKa values of 3.13 and 4.76 for first and second carboxylic acid group.
Example 45-4 (table 24 page 88) discloses cellulose acetated with addition of PEG400 (17 parts), Weston 705T antioxidant (0.5 parts), DLTDP antioxidant (0.1 parts exhibits L* value of 57.2. Example 45-6 comprises in addition citric acid (0.1 parts) and its L* value increased to 84.2. Consequently addition of small amount of citric acid resulted in increased L* to greater than required 62.
While Shih does not refer to citric acid and tartaric acid in the same manner as the applicants, both are listed in [0044] as oxidative decomposition agents of the article made. This is well known as breaking bonds within cellulose acetate inherently lowering intrinsic viscosity. Additionally consistent with the claim interpretation above, compounds having identical chemical structure will possess the same properties. Consequently, tartaric acid and citric acid will have the same effect on cellulose acetate as they do in applicant’s invention.
Claim 21 is rejected under 35 U.S.C. 102(a)(1) or 102(a)(2) as being anticipated by Shih (WO 2021/150541) (EFD 20/01/2020).
With respect to claim 20, According to examples 45-5, 45-6, 45-9 and 45-10 the cellulose ester is combined with plasticizers, additives and organic acid (citric acid), melt-processed and extruded [0053] into final article, wherein increasing melt flow rate, is an inherent property of compounds such as citric acid and tartaric acid, which will decrease intrinsic viscosity of the composition.
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 6 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Shih (WO 2021/150541) (EFD 20/01/2020).
Discussion of Shih from paragraph 1 of this office action is incorporated here by references While Shih discloses the same composition, specifically cellulose acetate having degree of substitution between 2.2-2.6 in the same amounts, the same plasticizer (PEG or triacin) also within the same amount as well as citric acid or tartaric acid (also within claimed range), Shih does not address the percentage by which melt flow rate is increased.
Instant claim 6 requires this change to be at least 10%, while claim 11 requires it to be at least 100% up to 2000%.
The increase in melt flow rate is obvious for following reasons:
Cellulose acetate of Shih, other than having the same degree of substitution utilize the same components which include citric acid or tartaric acid which are know viscosity modifiers by chain scission [0050] and PEG 400 as plasticizers which is a liquid at room temperature. The initial cellulose acetate also has the same molecular weight which ranges from 10,000-90,000 [instant 0035), which is the same molecular weight as that of Shih [0100]. Intrinsic viscosity of the instant cellulose acetate is 0.5-2 dl/g [0036], which is also the same intrinsic viscosity as that of Shih [0007]. Figure 1 of Shih further shows decrease of wt.% based on the temperature. While final degree to which Shih reduces melt flow rate is not disclosed, such is rendered obvious because Shih seeks compositions that can be decomposed. The composition is pelletized and formed into articles. Since cellulose acetate has the same initial intrinsic viscosity or molecular weight and it is subject to the same plasticizers and organic acids, in the same amounts, the melt processing temperatures would have to be within the same range in order to melt cellulose acetate. Consequently the same decomposition of cellulose acetate will occur at the same temperature. Consequently melt flow rate of the composition of Shih will be within the same range. Since according to applicants invention, organic acids such as tartaric acid or citric acid are both responsible for chain scission and L* values, and such acids are utilized in the same amount, the extent of the chain scission will be the same in both instant invention and Shih.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Shih (WO 2021/150541) (EFD 20/01/2020).
Discussion of Shih from paragraph 1 of this office action is incorporated here by references While Shih discloses the same composition, specifically cellulose acetate having degree of substitution between 2.2-2.6 in the same amounts, the same plasticizer (PEG or triacin) also within the same amount as well as citric acid or tartaric acid (also within claimed range), Shih does not address the percentage by which melt flow rate is increased. Instant claim 18, requires this change to be at least 20%.
The increase in melt flow rate is obvious for following reasons:
Cellulose acetate of Shih, other than having the same degree of substitution utilize the same components which include citric acid or tartaric acid which are known viscosity modifiers by chain scission [0050] and PEG 400 as plasticizers which is a liquid at room temperature. The initial cellulose acetate also has the same molecular weight which ranges from 10,000-90,000 [instant 0035), which is the same molecular weight as that of Shih [0100]. Intrinsic viscosity of the instant cellulose acetate is 0.5-2 dl/g [0036], which is also the same intrinsic viscosity as that of Shih [0007]. Figure 1 of Shih further shows decrease of wt.% based on the temperature. While final degree to which Shih reduces melt flow rate is not disclosed, such is rendered obvious because Shih seeks compositions that can be decomposed. The composition is pelletized and formed into articles. Since cellulose acetate has the same initial intrinsic viscosity or molecular weight and it is subject to the same plasticizers and organic acids, in the same amounts, the melt processing temperatures would have to be within the same range in order to melt cellulose acetate. Consequently the same decomposition of cellulose acetate will occur at the same temperature. Consequently melt flow rate of the composition of Shih will be within the same range. Since according to applicants invention, organic acids such as tartaric acid or citric acid are both responsible for chain scission and L* values, and such acids are utilized in the same amount, the extent of the chain scission will be the same in both instant invention and Shih.
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, 4, 9-13, 17, 18 and 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5-7, 17 and 18 of co-pending Application No. 17/701,008 (‘008) Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claims 1, 6 and 7 of ‘008 is directed to an thermoformed article comprising cellulose ester and plasticizer and organic acid that has pKa within range claimed in instant invention. Organic acid further satisfies instant claim 4.
Claim 7 of ‘008 further states that the organic acid (citric acid) is utilized in amount of 0.001-0.1 wt% which overlaps with range of instant claim 9.
Claim 1 of ‘008 further provides content of cellulose acetate and plasticizer which meets the limitation of instant claim 12 and 17.
Consequently claims 1, 6 and 7 of ‘008 meet instant claims 20, 1, 4, 9, 12 and 17.
Claim 5 of ’008 further discloses use of antioxidant which is generically encompassed by instant claim 14.
Claims 17 and 18 of ‘008 discloses plasticizer which is PEG or triacetin which meets the limitation of instant claim 13
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 4, 12-14 and 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 7, 8, 13, 16 and 17 of co-pending Application No. 18/297340 (‘340) Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claims 1 and 16 of ‘340 disclose composition comprising cellulose acetate, plasticizer and polycarboxylic acid, such as citric acid. This composition meets the limitation of instant claims 1 and 4.
Claim 1 further teaches that the plasticizer is polyethylene glycol which meets instant claim 13.
Claim 7 of ‘340 discloses that composition comprises glycerol triacetate which is also known as triacetin of instant claim 13.
Claim 8 of ‘340 discloses content of the cellulose acetate and plasticizer which meets instant claim 12.
Claim 13 of ‘340 discloses use of antioxidant which meets the limitation of instant claim 14.
Claim 17 of ‘340 is directed to molded article which meets instant claim 20.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Correspondence
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/KATARZYNA I KOLB/Primary Examiner, Art Unit 1767 March 2, 2026