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 .
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.
Election/Restrictions
Applicant’s election without traverse of Group I and Species B in the reply filed on January 21, 2026 is acknowledged.
Claims 14 and 20-21 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention or species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on January 21, 2026.
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.
Claim 15 is 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.
The term “thick-walled” in claim 15 is a relative term which renders the claim indefinite. The term “thick-walled” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
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.
Claim(s) 1-6 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Agfa (GB 908,779 A).
Agfa teaches a composition comprising cellulose acetate (polysaccharide ester) and zinc oxide (ZnO, basic additive with solubility and pH anticipating the claimed ranges) (Pg. 3, Lns. 65-80). Agfa teaches that the zinc oxide is in the form of particles dispersed in the polymer in 25 wt% (Pg. 1, Lns. 65-80; Examples 1 and 6). Agfa teaches the composition cast on a metal plate (article that is not a film) (Pg. 2, Lns. 95-105).
Claim(s) 1-6, 10-13, 15-16, and 18-19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bastioli et al. (US Pat. No. 6,730,724).
Regarding Claims 1-6 and 15-16: Bastioli et al. teaches a composition comprising cellulose acetate and calcium carbonate (CaCO3, basic additive with solubility and pH anticipating the claimed ranges) wherein the calcium carbonate is present in 5 wt% overall and 12.2 wt% relative to the combined weight of the cellulose acetate and calcium carbonate (Table 1, Ex. 5; 5 wt% calcium carbonate to 41 wt% combined weight of the cellulose acetate and calcium carbonate). Bastioli et al. teaches that the calcium carbonate and cellulose acetate are mixed directly, therefore the calcium carbonate would be in the form of dispersed particles (4:35-55). Bastioli et al. teaches the compositions are part of an injection-molded article (1:1-10 and 5:10-25).
Regarding Claims 10-13: Bastioli et al. teaches the composition comprising 7.8 wt% sorbitol ethoxylate (Table 1, Ex. 5). Bastioli et al. teaches that glycerol (inhibitor of autocondensation reactions) may be utilized in place of sorbitol ethoxylate (4:15-25).
Regarding Claim 18: Bastioli et al. teaches that alternatively, magnesium hydroxide can be utilized in place of calcium carbonate (2:5-15).
Regarding Claim 19: The composition of Bastioli et al. does not include ZnO.
Claim(s) 1-7, 9, 16, and 18-19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Xiao et al. (English machine translation of CN 103413906 A).
Regarding Claims 1-4, 6, and 9: Xiao et al. teaches a composition comprising 3.5 g of cellulose acetate and 0.7 g of NaA zeolite (16% zeolite relative to total of zeolite and cellulose) ([0032]). Xiao et al. further teaches that aluminum oxide (Al2O3) or magnesium oxide (MgO) (basic additives with pH anticipating the claimed ranges) may alternatively be utilized in place of the zeolite ([0016], [0046]). Xiao et al. teaches the zeolite or aluminum oxide mixed as particles ranging from 0.04 to 5.0 µm (distributed particles wherein all the particles are less than 10 µm) ([0016]). Xiao et al. teaches the composition as part of a battery (article that is not a film) ([0002] and [0066]).
Regarding Claim 5: MgO has a solubility in water at 20°C of 6.2x10-4 g/100ml.
Regarding Claims 7, 16, and 18: The disclosure of Al2O2 in general reads on basic Al2O2 as there are only three types of Al2O2 (basic, acidic, and neutral). Therefore, one of ordinary skill in the art can immediately envisage all the species of the genus Al2O2.
Regarding Claim 19: The composition of Xiao et al. does not include ZnO.
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 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Agfa (GB 908,779 A).
Agfa teaches the article of claim 1 as set forth above. Agfa teaches that the zinc oxide has an average grain size of 0.5 microns (Pg. 2, Lns. 40-60; Examples 1 and 6).
Agfa et al. does not teach that the D90 particle size is less than or equal to 10 microns. However, it is common practice to optimize result effective variables such as grain size. Agfa et al. teaches that grain sizes should be 0.3-0.7 microns and that too large a grain size the spacing of photoconductor crystals from one another becomes too large. Therefore, one of ordinary skill in the art would have been motivated to keep the grain sizes as small as possible and as close to the average of 0.3-0.7 microns, which would exclude particles over 10 microns.
Claims 10-11 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Xiao et al. (English machine translation of CN 103413906 A).
Xiao et al. teaches the article of claim 1 as set forth above.
Regarding Claims 10-11: Xiao et al. teaches that the composition may comprise an additive such as methanol or ethanol (alcohol; inhibitor of autocondensation reactions) ([0015]).
Xiao et al. does not teach a specific embodiment comprising each of cellulose acetate, MgO or Al2O3, and methanol or ethanol. However, at the time of the invention, a person of ordinary skill in the art would have found it obvious to employ methanol or ethanol together with the cellulose acetate and MgO or Al2O3 with a reasonable expectation of success as Xiao et al. discloses that methanol or ethanol are suitable additives for the composition.
Regarding Claim 13: Xiao et al. teaches that the methanol or ethanol (additive) is present in 10-800 parts relative to about 2065-5920 parts total composition (0.16-38.7 wt%) ([0013]-[0015]).
Xiao et al. does not teach with sufficient specificity the claimed range of 0.001 to 10 wt%. 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 (see MPEP 2144.05).
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 1-7, 9-13, 15-16, and 18-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,920,260. Although the claims at issue are not identical, they are not patentably distinct from each other because both claim substantially similar articles comprising a polysaccharide ester and particles of a basic additive in the same amounts. The claims differ in that the patented claims are limited to a fiber of filter tow whereas the instant claims broadly recite an article other than a film. However, the fiber of filter tow anticipates the more general recitation of an article.
Claims 1-7, 9-13, 15-16, and 18-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 11,352,716. Although the claims at issue are not identical, they are not patentably distinct from each other because both claim substantially similar articles comprising a polysaccharide ester and particles of a basic additive in the same amounts. The claims differ in that the patented claims are limited to a fiber of filter tow whereas the instant claims broadly recite an article other than a film. However, the fiber of filter tow anticipates the more general recitation of an article.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PETER F GODENSCHWAGER whose telephone number is (571)270-3302. The examiner can normally be reached 8:30-5:00, M-F EST.
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/PETER F GODENSCHWAGER/Primary Examiner, Art Unit 1767 February 27, 2026