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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
The abstract of the disclosure is objected to because “discloses” and “comprising” are legalese, and the phrases “The present application discloses” and “The present application also discloses” can be implied. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
The disclosure is objected to because of the following informalities: (page 29, line 13) “form 0.8 to 0.9” is a typographical error.
Appropriate correction is required.
The use of the terms Eastman, Benzoflex, Admex, Scandiflex, Paraplex, Resolflex, Irganox, Ethanox, Evernox, Anox, Lowinox, Naugard, Songnox, ADK Stab, Ultranox, Doverphos, Irgafos, Weston, Mark, Alkanox, Plastidor, Micatin, Nizoral, Lotramin, Lotramin AF, Canesten, Ertaczo, Lamisil, Naftin, Lotramin Ultra, Tinactin, Beneform, OxiTop, ClearFlo, ThermFlo, Douglas 3060, and Argo, which are trade names or marks used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Claim Objections
Claims 9 and 13 are objected to because of the following informalities:
Claim 9: “and glycol tribenzoate” is a typographical error and should read “glycol tribenzoate”.
Claim 9: “polyvinyl pyrollidone” is a typographical error and should read “polyvinyl pyrrolidone”.
Claim 9: “poly(ethylene glycol) MW 200-600” is recited once and “polyethylene glycol” is subsequently recited twice.
Claim 9: “triethyl citrate” is recited twice.
Claim 9: “acetyl triethyl citrate” and “acetylated triethyl citrate” are both recited.
Claim 9: “tripropionin” is recited twice.
Claim 13: There is no punctuation mark at the end of this claim.
Appropriate correction is required.
Applicant is advised that should claim 4 be found allowable, claim 5 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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 1-18 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 term “disintegratable” in claims 1-18 is a relative term which renders the claims indefinite. The term “disintegratable” 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. The specification provides multiple standards for measurement of disintegration but fails to define which, if any, of these standards nor to what extent these standards must be met to render a material “disintegratable”. Dependent claims 2-18 are similarly rejected by their dependence on indefinite claim 1.
Claims 1, 4, and 5 recite “disintegratable rate” as a claim limitation, a term which is not defined by the claim and the specification does not provide a standard for obtaining said “disintegration rate”, rendering the scope of the claim indefinite. Dependent claims 2-18 are similarly rejected by their dependence on indefinite claim 1.
The term “biodegradable” in claims 1 and 12 is a relative term which renders the claims indefinite. The term “biodegradable” 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. The specification provides multiple standards for measurement of biodegradation but fails to define which, if any, of these standards nor to what extent these standards must be met to render a material “biodegradable”. Dependent claims 2-18 are similarly rejected by their dependence on indefinite claim 1.
Claim 7 recites the limitation "the disintegratable melt processable cellulose ester composition". There is insufficient antecedent basis for this limitation in the claim. For examination purposes, this has been interpreted as the disintegratable cellulose ester composition recited in claim 1.
The term “melt processable” in claims 7 and 10 is a relative term which renders the claim indefinite. The term “melt processable” 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 7 recites the claim limitation “cellulose diacetate having a polystyrene equivalent number average molecular weights (Mn) from 10,000 to 90,000” but fails to provide a measurement basis or units for the numerical value, rendering the scope of the claim indefinite. For examination purposes, the units have been interpreted to be Daltons.
Claims 9, 10, and 11 recite the limitation "said plasticizer". There is insufficient antecedent basis for this limitation in the claim.
Claim 9 recites the claim limitation “poly(ethylene glycol) MW 200-600” but fails to define MW and fails to provide a measurement basis or units for the numerical value, rendering the scope of the claim indefinite. For examination purposes, “MW” has been interpreted as weight average molecular weight and the units have been interpreted to be Daltons.
Claim 9 contains the trademark/trade names Benzoflex, Admex, Scandiflex, Paraplex, and Resolflex. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe plasticizers and, accordingly, the identification/description is indefinite.
Claim 9 recites the limitations "the benzoate containing plasticizers", "the Benzoflex plasticizer series", "the Paraplex plasticizer series", and "the Resolflex series of plasticizers". There is insufficient antecedent basis for these limitations in the claim.
Regarding claim 9, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 12, it is unclear whether “a biodegradable cellulose ester (BCE) component” is the same as that first recited in claim 1 or a new, additional component, rendering the scope of the claim indefinite. For examination purposes, this limitation has been interpreted to be a recitation of that in claim 1.
Regarding claim 12, it is unclear whether “at least one other biodegradable polymer other than the BCE” is intended to be the same as the biodegradable, branched starch first recited in claim 1 or a new, additional component, rendering the scope of the claim indefinite. For examination purposes, this limitation has been interpreted to be a recitation of that in claim 1.
Claim 13 recites the limitation "said branched, amorphous biofiller". There is insufficient antecedent basis for this limitation in the claim.
The term “amorphous” in claim 13 is a relative term which renders the claim indefinite. The term “amorphous” 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.
Claims 14, 15, and 16 recite the limitation "said biofiller". There is insufficient antecedent basis for this limitation in these claims.
The term “about” in claims 15 and 16 is a relative term which renders the claim indefinite. The term “about” 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 § 103
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 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.
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.
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 1-18 are rejected under 35 U.S.C. 103 as being unpatentable over Shih et al (US 20230075066 A1, priority date 01/20/2020) in view of Mayer et al (US 5288318 A, filed 07/01/1993).
Regarding claims 1, 2, and 9-16, Shih discloses a biodegradable cellulose acetate (cellulose ester) composition comprising (i) a cellulose acetate with an acetyl degree of substitution from 2.2 to 2.6 and (ii) 17-23 wt% of polyethylene glycol or methoxy polyethylene glycol (plasticizers) having an average molecular weight of 300 to 550 Daltons, which is melt-processable, biodegradable, and disintegrable [0109]. The composition may also comprise at least one other biodegradable polymer (biofiller), such as a starch, present in an amount of 0.1 to 50 wt% [0034].
While Shih does not particularly disclose a “disintegratable rate”, the instant claims and specification fail to specify the conditions which lead to disintegration or a measurement protocol for obtaining the claimed “disintegratable rate”. Additionally, a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Shih does not particularly disclose the identity of the starch nor its degree of branching.
In the same field of endeavor, Mayer discloses biodegradable cellulose acetate (cellulose ester)-based compositions comprising 30 to 70% by weight cellulose acetate with a molecular weight of 28,000 to 62,000 Daltons, 10 to 60% by weight starch, and 5 to 35% by weight of a plasticizer selected from the group consisting of triacetin, diacetin, monoacetin, ethylene glycol, propylene glycol and glycerol (page 2, column 2, line 64 to page 3, column 3, line 8). Mayer particularly discloses that the starch may be selected from the group consisting of corn, tapioca, potato, sago, wheat, rye, pea, sorghum, rice and arrowroot (page 3, column 3, lines 19-24). While Mayer does not particularly point out the degree of branching of these starches, applicant’s own disclosure states that native corn starch has a degree of branching of 3.1 and potato starch has a degree of branching of 2.8 (table on page 11 of instant specification).
Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to select the potato or corn starch disclosed by Mayer and thus modify the biodegradable cellulose acetate composition disclosed by Shih, with a reasonable expectation of success. It has been established that selection of a known material based on its suitability for its intended use is prima facie obvious (Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)). “Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” (325 U.S. at 335, 65 USPQ at 301.). See MPEP 2144.07.
Regarding claim 3, the combination of Shih and Mayer discloses all limitations of claim 1 as set forth in the above rejection. Shih further discloses that articles made of these compositions are compostable [0082 and 0093].
Regarding claims 4 and 5, although Shih discloses that their composition is “disintegratable” [0109], Shih does not particularly disclose a “disintegratable rate”. It is noted that the instant claims do not specify the conditions which lead to disintegration nor a measurement protocol for obtaining the claimed “disintegratable rate”, as set forth in the above rejection with respect to claim 1. Additionally, a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Regarding claim 6, the combination of Shih and Mayer discloses all limitations of claim 1 as set forth in the above rejection. Shih particularly discloses that the cellulose acetate (ester) has an acetyl degree of substitution of 2.2 to 2.6 [0109]. A prima facie case of obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP 2144.05(I).
Regarding claim 7, the combination of Shih and Mayer discloses all limitations of claim 1 as set forth in the above rejection. Shih particularly discloses that the cellulose acetate may have a polystyrene equivalent number average molecular weight (Mn) from about 10,000 to about 100,000 (Daltons) [0025]. A prima facie case of obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP 2144.05(I).
Regarding claim 8, the combination of Shih and Mayer discloses all limitations of claim 1 as set forth in the above rejection. Shih further discloses that the cellulose acetate may be prepared using reactants obtained from recycled materials [0028].
Regarding claims 17 and 18, the combination of Shih and Mayer discloses all limitations of claim 1 as set forth in the above rejection. Shih further discloses that the composition may be manufactured into articles such as plaques [0300] and that such articles comprising the composition may be at least 97, 98, 99, or 99.5 percent disintegrated within not more than 12, 11, 10, 9, or 8 weeks [0095].
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, 2, 6, 7, and 9-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 8, 9, and 10 of U.S. Patent No. 12662587. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent claims a cellulose acetate (cellulose ester) composition having a degree of substitution between 2.2 and 2.6, a number average molecular weight between 20,000 and 100,000 (Daltons), 17-23 wt% of a polyethylene glycol having a molecular weight of 400 (Daltons), which is melt processable, biodegradable, and disintegrable. The patent also claims a filler which may be a carbohydrate (encompassing starch), as well as a biodegradable polymer other than cellulose acetate (also encompassing starch). While the patent also claims inclusion of a stabilizer comprising primary and secondary antioxidants which the instant application does not claim, the instant specification notes that stabilizers containing primary and secondary antioxidants may optionally be included (page 14, line 25 to page 17, line 10).
It would have been obvious to one of ordinary skill in the art to make the instantly claimed compositions from the claims of the reference patent because they are encompassed by the claims of the reference patent and would have been expected to give only predictable results. The open language of the instant claims encompasses any additional ingredients of the reference patent.
Claims 1, 2, 6, 7, 9-12, 15, and 16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8, and 10-13 of copending Application No. 17/759,047 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending application discloses a melt processable and biodegradable cellulose acetate composition comprising at least one cellulose acetate, at least one plasticizer at 10 to 25 wt% , and at least one additional biodegradable polymer at 0 to less than 50 wt%, and optional additional additives. The copending cellulose acetate has a number average molecular weight between 35,000 and 55,000 (Daltons) and a DS between 1.5 and 2.5. The additional copending claims which are patentably indistinct from the instant application place further limitations on the degree of substitution and molecular weight of the cellulose acetate; the amount, identity, and molecular weight of the plasticizer (polyethylene glycol or methoxy polyethylene glycol); the identity of the filler (may be a carbohydrate); the amount and identity of the biodegradable polymer (polyhydroxyalkanoates, polycaprolactone polymers, or a combination thereof); and the amounts and identities of the optional additional additives; such that the copending and instant ranges render each other obvious. While the copending application recites additional elements, such as an odor modifying additive, which are not claimed in the instant application, the specification of the instant application discloses that odor modifying additives may be included (page 18, lines 7-20).
It would have been obvious to one of ordinary skill in the art to make the instantly claimed compositions from the claims of the copending application because they are encompassed by the claims of the copending application and would have been expected to give only predictable results. The open language of the instant claims encompasses any additional ingredients of the copending application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 2, 9, 10, and 11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 11, and 12 of copending Application No. 16/688,502 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending application claims a melt-processable cellulose acetate composition comprising cellulose acetate, a fatty acid, and a melt-processing aid which is a plasticizer present from 1 to 40 wt% of the composition, said plasticizer being selected from the group consisting of triacetin, triethyl citrate, or polyethylene glycol with a molecular weight from 200 to 1000 Daltons. The copending application also claims a further additive, being one or more of a UV absorber, an antioxidant, an acid or radical scavenger, an epoxidized oil, and combinations thereof. While the composition of the copending application contains a fatty acid and an additional additive which the instant application does not claim, the specification of the instant application notes that the composition may include other components, such as fatty acids or fatty acid esters (page 23, lines 8-24), UV absorbers, antioxidants, acid and radical scavengers, and epoxidized oils (page 14, line 25 to page 15, line 2). Additionally, while the copending application does not claim the branched starch component claimed in the instant application, the specification of the copending application states that their cellulose acetate composition may additionally contain organic fillers, such as starches (page 12, line 29 to page 13, line 14).
It would have been obvious to one of ordinary skill in the art to make the instantly claimed compositions from the claims of the copending application because they are encompassed by the claims of the copending application and would have been expected to give only predictable results. The open language of the instant claims encompasses any additional ingredients of the copending application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of copending Application No. 18/698,403 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending application claims the process of producing a disintegratable cellulose ester composition which is sufficiently identical to the instantly claimed composition such that one practicing the copending inventions would necessarily possess the instantly claimed composition. The copending claimed compositions are necessarily melt processable because it is the same polymer as the instant claims and is not disclosed as having been crosslinked to a thermoset condition. The copending claimed compositions and articles necessarily have the same “disintegratable rate” as the instant claims because it is the same polymer as the instant claims and is not disclosed as having been modified in such a way that would change this parameter. While the copending application does not particularly claim the disintegration according to standard ISO 20200 of the instant application, the specification of the copending application states that films and articles of the copending claimed composition would disintegrate in a way that is sufficiently overlapping in scope with instant claims 17 and 18 (page 37, line 19 to page 39, line 20).
It would have been obvious to one of ordinary skill in the art to make the instantly claimed compositions from the claims of the copending application because they are encompassed by the claims of the copending application and would have been expected to give only predictable results. The open language of the instant claims encompasses any additional ingredients of the copending application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11, 15, and 16 of copending Application No. 18/698,405 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending application claims an article comprising a disintegratable cellulose ester composition which is sufficiently identical to the instantly claimed composition such that one practicing the copending inventions would necessarily possess the instantly claimed composition. The copending claimed compositions and articles are necessarily melt processable because it is the same polymer as the instant claims and is not disclosed as having been crosslinked to a thermoset condition. The copending claimed compositions and articles necessarily have the same “disintegratable rate” as the instant claims because it is the same polymer as the instant claims and is not disclosed as having been modified in such a way that would change this parameter. While the copending application does not claim that the cellulose ester is prepared by converting cellulose to a cellulose ester with reactants that are obtained from recycled materials, the specification of the copending application states that the cellulose ester can be prepared using reactants obtained from recycled materials (page 6, lines 27-30). The copending claim 16 specifies only the thickness of the article which disintegrates to at least 90% within 12 weeks according to ISO 20200, such that the length and width disclosed in instant claim 18 falls within the scope of copending claim 16. Additionally, the specification of the copending application states that articles with the dimensions of 16.8 cm in length, 0.9 to 1.8 cm in width and 1.4 to 3.3 mm thick will disintegrate at least 90% within 12 weeks according to ISO standard 20200 (page 44, lines 27-31).
It would have been obvious to one of ordinary skill in the art to make the instantly claimed compositions from the claims of the copending application because they are encompassed by the claims of the copending application and would have been expected to give only predictable results. The open language of the instant claims encompasses any additional ingredients of the copending application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of copending Application No. 18/698,407 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending application claims an article (tow band) comprising a disintegratable cellulose ester composition which is sufficiently identical to the instantly claimed composition such that one practicing the copending inventions would necessarily possess the instantly claimed composition. The DS/AGU of claim 2 of the copending application and the degree of substitution of claim 6 of the instant application overlap and render each other obvious. The copending claimed compositions and articles are necessarily melt processable because it is the same polymer as the instant claims and is not disclosed as having been crosslinked to a thermoset condition. The copending claimed compositions and articles are necessarily compostable because it is the same polymer as the instant claims and is not disclosed as having been modified in such a way to render it non-compostable. The copending claimed compositions and articles necessarily have the same “disintegratable rate” as the instant claims because it is the same polymer as the instant claims and is not disclosed as having been modified in such a way that would change this parameter. While the copending application does not particularly claim the disintegration according to standard ISO 20200 of the instant application, the specification of the copending application states that films and articles of the copending claimed composition would disintegrate in a way that is sufficiently overlapping in scope with instant claims 17 and 18 (page 36, line 28 to page 38, line 30).
It would have been obvious to one of ordinary skill in the art to make the instantly claimed compositions from the claims of the copending application because they are encompassed by the claims of the copending application and would have been expected to give only predictable results. The open language of the instant claims encompasses any additional ingredients of the copending application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Cheng et al (CN 107686567 A, English translation attached) discloses foamed articles comprising cellulose acetate, corn or potato starch, and a plasticizer (glycerin). Bastioli et al (US 6730724 B1) discloses biodegradable compositions and articles comprising such compositions, said composition comprising cellulose acetate or cellulose acetate butyrate, maize starch, and plasticizers. Beven et al (US 5954059 A) discloses filtration materials comprising cellulose acetate, maize (corn) starch, plasticizers, and inorganic fillers.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Savannah G Phillips whose telephone number is (571)270-0822. The examiner can normally be reached M-Th 8-6 ET.
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, Joseph Del Sole can be reached at (571)272-1130. 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.
/SAVANNAH G. PHILLIPS/Examiner, Art Unit 1763
/JOSEPH S DEL SOLE/Supervisory Patent Examiner, Art Unit 1763
Prosecution Insights