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 .
DETAILED ACTION
All the references cited in the International Search Report have been considered. None is anticipatory.
Election/Restrictions
Applicant’s election with traverse of Group II, claims 3 and 10-11 is acknowledged. All groups are distinct inventions and present a serious burden to the U.S. Patent and Trademark Office based on a proper lack of unity analysis. The traversal is on the ground that the restriction is only proper if the claims are independent or distinct and there would be a serious burden placed on the Examiner if restriction is not required. This is not found persuasive because the issue as to the meaning and intent regarding “independent and distinct” as used in 35 U.S.C 121 and 37 CFR 1.41, which is for national applications, but it is not used for PCT national stage (371) applications. For PCT national stage applications, restriction is based upon unity of invention; restriction of a national stage application does not take into account whether or not the inventions are independent or distinct and does not take into account burden on the examiner.
This restriction is made FINAL. The restriction and election of species as stated in the previous office action are repeated here as such.
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.
Claim(s) 3 and 10-11 (is)are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Regarding claim 1, the phrase "as described in the specification" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. Under 35 U.S.C. § 112(b) and the standard set in Nautilus, Inc. v. Biosig Instruments, Inc., claims must inform a person of ordinary skill in the art with reasonable certainty about the scope of the invention. Claims 3 and 10-11 depend upon claim 1 and fail to rectify the issue in claim 1. See MPEP § 2173.05(d). DEP in claim 11 is recommended to be amended as diethyl phthalate.
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 of this title, 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.
Claim(s) 3 and 10-11 is (are) rejected under 35 U.S.C. 103(a) as being unpatentable over Tanaka et al. (US 20220243033, eff F/D 3/19, or WO2020251025, P/D 12/20) in view of Eastman CA-398-30 catalog (“Eastman”).
As to claims 3 and 10-11, Tanaka (abs., claims, examples, Figures) discloses a composition for producing molding (1, 24, 71-78, 122, 125, Ex.10) comprising a cellulose acetate, a plasticizer of DAIFATTY-101 (5-40 parts per 100 parts of cellulose acetate, 4.8-28 wt% of the total composition, the same one used in instant examples and [0092]), and another plasticizer, such as diethyl phthalate (≤10 wt% of DAIFATTY-101, the sane one of claim 11, ≤3.8 wt% or of the total composition when DAIFATTY-101 is ≤40 per 100 parts of cellulose acetate). The loading of DAIFATTY-101 and diethyl phthalate overlap with the claimed ranges of claims 3 and 10. It has been found that where claimed ranges overlap ranges disclosed by prior art, a prima facie case of obviousness exists - see MPEP 2144.05 I. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Therefore, it would have been obvious to one skilled in the art to have created/selected the claimed compositional elements from the composition disclosed in the Tanaka since it discloses all applicants' components, values and methods of making.
Tanaka is/are silent on the cellulose acetate used in instant examples and [0092].
In the same area of endeavor of producing mold, Eastman teaches Cellulose Acetate CA-398-30 is a high-viscosity, high molecular weight, and bio-content containing that permits good plasticizer distribution during blending, which is the same cellulose acetate used in instant examples and [0092].
Therefore, as to claims 3 and 10-11, it would have been obvious to one of ordinary skill in the art to have modified the composition disclosed by Tanaka and replaced the cellulose acetate with CA-398-30 in view of Eastman, because the resultant composition would yield improved plasticizer distribution and environmental friendliness.
The references are silent on the claimed properties of Tg, notched Izod impact strength, and creep deflection of claim 1. Accordingly, the examiner recognizes that not all of the claimed effects or physical properties are positively stated by the references. However, the references teach a composition containing the claimed components in the claimed amounts prepared by substantially similar components. In the case, the cellulose acetate, the plasticizers, and the loadings. Therefore, one of ordinary skill would have a reasonable expectation that the claimed effects and physical properties, i.e. Tg, notched Izod impact strength, and creep deflection, would necessarily flow from a composition containing all of the claimed components in the claimed amounts prepared by a substantially similar process. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. See In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977); In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990); see also MPEP § 2112.01(I)-(II). If it is the applicant’s position that this would not be the case: (1) applicant must provide evidence to support the applicant’s position, and (2) it would be the examiner’s position that the application contains inadequate disclosure on how to obtain the claimed effects or properties with only the claimed components in the claimed amounts by the disclosed or claimed process.
Tanaka and Eastman are silent on the intended use of " ophthalmic article” of claim 1. Case law holds that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP 2111.02, In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ 458,459 (CCPA 1963). In this particular case, no compositional difference between the claimed and disclosed compositions, and the disclosed composition would inherently be capable of performed the claimed intended use.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHANE FANG whose telephone number is (571)270-7378. The examiner can normally be reached on Mon-Thurs. 8am-6pm. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached on 571.572.1302. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SHANE FANG/Primary Examiner, Art Unit 1766
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