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.
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 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Koyanagi et al. (JP 2021-161337) in view of Tachibana et al., “Cellulose acetate butyrate as multifunctional additive for poly(butylene succinate) by melt blending: Mechanical properties, biomass carbon ratio, and control of biodegradability,” Polymer Degradation and Stability, Vol. 95, Issue 8, August 2010, pp. 1406-1413. The citations below for Koyanagi et al. are taken from an English language machine translation provided by Applicant.
Regarding claims 1-3, Koyanagi et al. teaches a molding composition comprising from 10 to 60% by mass (¶39) of pulp fibers and from 40 to 90% by mass (¶46) of a biodegradable resin (¶13). The pulp fiber is preferably pulp derived from broadleaf trees (cellulose fiber) (¶27) and the biodegradable resin is preferably polybutylene succinate or polybutylene succinate/adipate (both of which are aliphatic polyesters) (¶43). The molding composition may contain 10% by mass or less of an optional component such as a plasticizer or a thermoplastic resin (¶47).
Koyanagi et al. does not teach that the composition comprises from 4 to 25% by mass of esterified cellulose. However, Tachibana et al. teaches a blend of polybutylene succinate and cellulose acetate butyrate (esterified cellulose) (Abstract), wherein it is taught that adding 10% by mass of cellulose acetate butyrate to polybutylene succinate increased the strain at break (ductility) and the tensile strength (overall strength) of the composition (Section 3.3). Adding a small amount of cellulose acetate butyrate to the polybutylene succinate acts as a plasticizer for the resin (Section 3.3). Koyanagi et al. and Tachibana et al. are analogous art because they are from the same field of endeavor as that of the instant invention, namely that of aliphatic polyester compositions used for molding articles. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to add 10% of cellulose acetate butyrate, as taught by Tachibana et al., to the composition, as taught by Koyanagi et al., and would have been motivated to do so in order to increase the ductility and the strength of the composition (Section 3.3).
Regarding claim 4, if the aliphatic polyester is present in 40% by mass (XP) and the esterified cellulose is present in 10% by mass (XE), the equation is met with XP/XE = 4.
Regarding claim 5, the alkylenedicarboxylic acids used to form polybutylene succinate and polybutylene succinate/adipate are succinic acid and adipic acid. Succinic acid has an alkylene group containing 2 carbon atoms and adipic acid has an alkylene group containing 4 carbon atoms. The alkylenediol used to form the polyester is 1,4-butanediol which has a carbon chain length of 4 carbon atoms.
Regarding claim 6, cellulose acetate butyrate has an average carbon chain length of alkyl groups of 2.0 to 2.2, and has a DS value of 1.5 to 2.0 (¶112 of instant specification).
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 1-6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5, and 6 of copending Application No. 18/757,700 (“the reference application”) in view of Tachibana et al., “Cellulose acetate butyrate as multifunctional additive for poly(butylene succinate) by melt blending: Mechanical properties, biomass carbon ratio, and control of biodegradability,” Polymer Degradation and Stability, Vol. 95, Issue 8, August 2010, pp. 1406-1413.
Regarding claims 1 and 3, claim 1 of the reference application teaches a molding material comprising cellulose fibers and a resin, wherein the resin includes a saturated aliphatic polyester and a highly polar polyester. Claim 5 of the reference application teaches that when a content of the saturated aliphatic polyester is regarded as 100 parts by mass, a content of the highly polar polyester is 10 to 70 parts by mass and a content of the cellulose fibers is 110 to 570 parts by mass. These values can provide an amount of cellulose fibers in the composition of from 39 to 84% by weight (calculated by Examiner)1.
The reference application does not teach that the composition comprises from 4 to 25% by mass of esterified cellulose. However, Tachibana et al. teaches a blend of polybutylene succinate and cellulose acetate butyrate (esterified cellulose) (Abstract), wherein it is taught that adding 10% by mass of cellulose acetate butyrate to polybutylene succinate increased the strain at break (ductility) and the tensile strength (overall strength) of the composition (Section 3.3). Adding a small amount of cellulose acetate butyrate to the polybutylene succinate acts as a plasticizer for the resin (Section 3.3). The reference application and Tachibana et al. are analogous art because they are from the same field of endeavor as that of the instant invention, namely that of aliphatic polyester compositions used for molding articles. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to add 10% of cellulose acetate butyrate, as taught by Tachibana et al., to the composition, as taught by Koyanagi et al., and would have been motivated to do so in order to increase the ductility and the strength of the composition (Section 3.3).
Regarding claim 2, claim 5 of the reference application teaches that when a content of the saturated aliphatic polyester is regarded as 100 parts by mass, a content of the highly polar polyester is 10 to 70 parts by mass and a content of the cellulose fibers is 110 to 570 parts by mass. These values can provide an amount of the aliphatic polyester of from 14 to 45% by mass (calculated by Examiner)2.
Regarding claim 4, with the amount of the aliphatic polyester (XP) being from 14 to 45% by mass as set forth above, and the amount of the esterified cellulose (XE) being 10% by mass, also as set forth above, XP/XE is from 1.4 to 4.5, which overlaps the claimed range.
Regarding claim 5, claim 6 of the reference application teaches that the saturated aliphatic polyester includes, as raw material monomers, an alkylene dicarboxylic acid which as an alkylene group with 2 to 8 carbon atoms and an alkylene diol with has an alkylene group with 2 to 8 carbon atoms.
Regarding claim 6, cellulose acetate butyrate has an average carbon chain length of alkyl groups of 2.0 to 2.2, and has a DS value of 1.5 to 2.0 (¶112 of instant specification).
This is a provisional nonstatutory double patenting rejection.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANGELA C SCOTT whose telephone number is (571)270-3303. The examiner can normally be reached Monday-Friday, 8:30-5:00, EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANGELA C SCOTT/Primary Examiner, Art Unit 1767
1 100 parts aliphatic polyester, 70 parts highly polar polyester, and 110 parts cellulose fiber provides for 39% by mass of the cellulose fiber; 100 parts aliphatic polyester, 10 parts highly polar polyester, and 570 parts cellulose fiber provides for 84% by mass of the cellulose fiber.
2 100 parts aliphatic polyester, 70 parts highly polar polyester, and 570 parts cellulose fiber provides for 14% by mass of the aliphatic polyester; 100 parts aliphatic polyester, 10 parts highly polar polyester, and 110 parts cellulose fiber provides for 45% by mass of the aliphatic polyester.
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