CTNF 18/473,339 CTNF 77177 Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia 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 07-30-02 AIA 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. 07-34-01 Claims 1-8 are 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. Instant claim 1 recites content of flame retardant as 1-10 parts by mass. Instant claim 3, recited content of linear polyester to be 100 parts by mass; content of polar polyester to be 10-70 parts by mass and content of cellulose to be 10-570 parts by mass. Instant claims fail to specifically indicate based on what the content of the additives is reported. The examples in the instant specification (see examples 1-9 in the attached Figure) do not add up to 100% as such the way applicants report the content of the components is not clear or not distinctly claimed. Drawings 06-22 AIA The drawings are objected to because : Per MPEP rule 1.84 (u)(1) if only single drawing or view is used in an application to illustrate the claimed invention, it must not be numbered and the abbreviation Fig. (Figure in instant case) must not appear . Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance. 07-30-03-h AIA Claim Interpretation With respect to the amounts of the components, the examiner consulted specification, specifically inventive examples 1-9 which show total content of the composition of 100 % (not including flame retardant). Consequently, if the content of the components is within the same range as reflected in the examples, the prior art will meet the claims. 07-06 AIA 15-10-15 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 § 103 07-20-aia AIA 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. 07-23-aia AIA 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. 07-20-02-aia AIA 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. 07-21-aia AIA Claim s 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Hale (US 2005/0154114) . With respect to claim 1, 4-7 , Hale discloses molding composition comprising flexible biodegradable polymer A, rigid biodegradable polymer B, and compatibilizers which is encompassed by term “comprising” (Abstract). Polymer A of Hale is selected from polybutylene succinate, polybutylene succinate adipate and polyethylene succinate which meet instant claims 1, 4 and 5 of the instant invention. For support, please see claim 13 of Hale. Polymer B of Hale is polylactic acid which meets the limitation of the inventive highly polar polyester as well as instant claims 1, 6 and 7. Additives of Hale include flame retardants based on phosphoric acid esters [0099-0102]. Wherein content of flame retardant is 5-40 wt.% which overlaps with claimed range of 1-10 parts by mass. Fillers of Hale include filers, which are cellulosic fibers [0140]. Specifically, cotton fiber is a type of cellulose fiber having cellulose content of above 90%. Content of the fibers is 3-80 wt.% based on the polymer blend [0142]. Other cellulosic fibers of Hale include Sisal, flax, hemp, ramie and the like [0140]. With respect to claim 2 , as disclosed above, polymer A is utilized in amount of 5-95 wt. % while polymer B is utilized in amount of 95-5 wt.%, which encompasses content of polymer A being greater than polymer B (Hale’s claim 1). With respect to claim 3 , content of polymers is described in rejection of claim 2 above, content of cellulose fiber and flame retardant are described in the rejection of claim 1 above. In the light of the above disclosure, it would have been obvious to one having ordinary skill in the art at the time instant invention that Hale teaches biodegradable molding composition which comprises instant biodegradable polyester, cellulose fiber and phosphorus-based flame retardant. The components and their content meet the limitations of the instant invention. Resulting composition when molded into an article is biodegradable with increased flexibility, ductility, bendability, cohesion, elongation, deflection, toughness and the like [0139] . 07-22-aia AIA Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Hale (US 2005/0154114) as applied to claim s 1-7 above, and further in view of Sato (WO 2014/034071, submitted by applicants in the IDS dated 9/25/2023) Discussion of Hale from paragraph 1 of this office action is incorporated here by reference. In short summary Hale disclose molding composition comprising instant biodegradable polyester, cellulose fiber and phosphorus-based flame retardant. Hale further states that the natural fibers such as cotton fibers are preferable longer and narrower because they can impart more strength to the polymer while adding significantly less bulk and mass to the matrix that the thick fibers would. Hake discloses the aspect ratio of the fibers to be within a range of 25:1, more preferably 100:1 or more and the most preferred embodiment is 250:1 or more [0141]. While Hale discloses the importance of the aspect ratio of the cellulose fibers, he does not disclose the actual length. Sato also discloses biodegradable composition comprising biodegradable polyesters, flame retardants and cellulose fibers. Sato also teaches that selection of fibers is important in order to properly balance mechanical properties, extrusion processability and the like [0039] Cellulose fibers of Sato in more preferred embodiments can have an average diameter of less than 15 microns, with preferred range between 0.1-15 microns [0039]. The average fiber length is in a range of 200-800 microns with preferred upper range of 500 microns [0040]. At 500 microns length and 15 microns diameter, the aspect ratio of the fiber is approximately 33:1. At 500 microns length and 1 micron length the aspect ratio is 500:1. In the light of the above disclosure, it would have been obvious to one having ordinary skill in the art at the time of the instant invention to utilize cellulosic fiber having length and diameter as that of Sato in the composition of Hale. This is because the aspect ratio of the cellulose fibers of Sato have the aspect ratio required by Hale. Both references clearly stated that selection of fibers will affect mechanical properties of the composite article and both references require articles with good mechanical properties . Double Patenting 08-33 AIA 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. 08-35 AIA Claim s 1-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-8 of copending Application No. 18/473,335 (‘335) . Although the claims at issue are not identical, they are not patentably distinct from each other because : Claim 1 of ‘335 discloses molding material comprising linear alkyl-based polyester, highly polar polyester and cellulose fibers. Therein the content of the linear alkyl-based polyester is greater than the content of the highly polar polyester (reads on instant claims 1 and 2) and wherein the total content of linear alkyl-based polyester and highly polar polyester is less than or equal to a content of cellulose fibers. While instant claim 1 does not expressly state the relations between content of polymers and content of fibers, such is evident in claim 2 of ‘335, which is identical to instant claim 3. Limitation of claim 3 of ‘335 is the same as limitation of instant claim 4. Claim 4 of ‘335 is the same as instant claim 5. Claim 5 of ‘335 is the same as instant claim 6. Claim 6 of ‘335 is the same as instant claim 7. Claim 7 of ‘335 is the same as instant claim 8. Claim 8 of ‘335 is directed to recitation of flame retardant which is an identical description of the flame retardant of instant claim 1. In summary co-pending application ‘335 is an obvious variation of the instant invention ‘339 . This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. 08-35 AIA Claim s 1-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1, 4-11 of copending Application No. 18/757,700 (‘700) . Although the claims at issue are not identical, they are not patentably distinct from each other because : Claim 1 of ‘700 discloses molding material comprising cellulose fibers and resin, wherein resin comprises a saturated aliphatic polyester and a highly polar polyester wherein, instant invention is open to any molecular weight and maximum values. Additionally saturated aliphatic polyester reads on instantly claimed alkyl-based polyester. Claims 4 and 5 are directed to the content of each polyester resin and the cellulose fibers. The content is the same as in instant claims 2 and 3. Claim 6 of ‘700 recites the same limitations as instant claim 4. Claim 7 of ‘700 recites the same alkyl-based polyesters as instant claim 5. Claims 8 and 9 recite the same limitations as instant claims 6 and 7. Claim 10 of ‘700 recite the same fiber length as instant claim 8. Claim 11 of ‘700 is directed to the same flame retardant and its content as instant claim 1. While this rejection does not list crosslinking agents of ‘700 it should be noted that use of crosslinking agents is viewed as inherent in the molding compositions. Consequently, co-pending application ‘700 is seen as obvious variation of the instant invention’339 . This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. Correspondence Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATARZYNA I KOLB whose telephone number is (571)272-1127. The examiner can normally be reached M-F. 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 at 5712701046. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /KATARZYNA I KOLB/Primary Examiner, Art Unit 1767 June 1, 2026 Application/Control Number: 18/473,339 Page 2 Art Unit: 1767 Application/Control Number: 18/473,339 Page 3 Art Unit: 1767 Application/Control Number: 18/473,339 Page 4 Art Unit: 1767 Application/Control Number: 18/473,339 Page 5 Art Unit: 1767 Application/Control Number: 18/473,339 Page 6 Art Unit: 1767 Application/Control Number: 18/473,339 Page 7 Art Unit: 1767 Application/Control Number: 18/473,339 Page 8 Art Unit: 1767 Application/Control Number: 18/473,339 Page 9 Art Unit: 1767 Application/Control Number: 18/473,339 Page 10 Art Unit: 1767 Application/Control Number: 18/473,339 Page 11 Art Unit: 1767
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