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 Objections
Claims 1 – 19 are objected to because of the following informalities:
for consistency, “the composition” in each instance in Claims 1, 3 – 6, 8 – 11, 14 – 16 should be amended to recite “the biodegradable melt-stable composition”;
for consistency, “The composition” in Claims 2 – 13 in each instance should be amended to recite “The biodegradable melt-stable composition”;
for consistency, “said composition” in Claim 12 should be amended to recite “said biodegradable melt-stable composition”; and
for consistency, Claims 17 – 19 should be amended to recite “the biodegradable cellulose acetate melt of Claim 9”.
Appropriate correction is required.
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.
Claims 1 – 19 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.
The phrases “as measured according to the procedure disclosed in the specification”, “as disclosed in in the specification”, and “as described in in the specification” in Claims 1, 5, and 11 render the scope of these claims indefinite, as such phrases fail to point out exactly what is included or excluded in the claims.
As Claims 2 – 4, 6 – 10, and 12 – 19 all ultimately depend on Claim 1, they inherit the deficiencies thereof and are also therefore rejected under this statute.
Claim Rejections - 35 USC § 102
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.
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 20 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2019/0264006 to Argoud et al. (hereinafter Argoud).
Regarding Claim 20. Argoud teaches a composition which is processed by melt blending cellulose acetate [0135], i.e. a melt-processable cellulose acetate composition.
A preferred cellulose acetate for use in the disclosed composition is CA-398-30 [0051]. As this is the same cellulose acetate used in the examples of the instant specification, it would be reasonably expected that CA-398-30 in Argoud would be characterized by a metals-to-sulfur ratio M/S of at least 1.35.
Argoud further teaches the composition comprises a plasticizer [0014] – [0017].
Argoud does not expressly characterize the composition is biodegradable. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Argoud teaches a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. Therefore, the claimed effects and physical properties, i.e. a biodegradable composition, would implicitly be achieved in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. See In Re Spada, 911, F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process.
Allowable Subject Matter
Claims 1 – 19 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter: the prior art does not teach or suggest a biodegradable melt-stable composition comprising all of the instantly claimed components in the claimed amounts, which is in the form of a powder having an average particle size of from 150 to 300 microns and a maximum particle size of 500 microns and which has a b* of less than 20 as measured according to ASTM D 6290-98 when processed according to the instantly claimed conditions.
WO 2021/150540 to Michael-Sapia et al. (hereinafter Michael-Sapia) corresponds to the closest prior art, teaching a biodegradable cellulose acetate composition. Michael-Sapia teaches the cellulose acetate used has a degree of substation of 2.2 to 2.6 [0098] and may specifically be CA-398-30 [0051]. As this is the same cellulose acetate provided in the examples of the instant specification, it would be reasonably expected that CA-398-30 in Argoud would be characterized by a heated intrinsic viscosity of 0.9 and a metals-to-sulfur ratio M/S of at least 1.35. Michael-Sapia further teaches the composition may comprise citric acid [0029], which corresponds to a compound of instantly claimed formula I in which R1 is hydrogen, R2 is hydroxyl, R3 is COOH, and n is 1.
However, Michael-Sapia does not expressly describe an embodiment in which CA-398-30 and citric acid in an amount of 0.025 to 0.4 weight percent are used together. Moreover, Michael-Sapia does not teach providing the composition in the form of a powder having an average particle size of from 150 to 300 microns and a maximum particle size of 500 microns. As such, it cannot be presumed that a plaque of the instantly claimed dimensions formed when the composition is injection molded necessarily exhibits a b* of less than 20 as measured according to ASTM D 6290-98. There is also no other prior art reference which provides the teaching and/or guidance necessary to modify Michael-Sapia to teach each of the missing limitations and thereby arrive at the instantly claimed invention.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MELISSA RIOJA whose telephone number is (571)270-3305. The examiner can normally be reached Monday - Friday 10:00 am - 6:30 pm EST.
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/MELISSA A RIOJA/ Primary Examiner, Art Unit 1764
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