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 .
CONTINUING DATA
This application is a 371 of PCT/US2022/045985 10/07/2022
PCT/US2022/045985 has PRO 63/262,255 10/08/2021
Claims 1-20 are pending.
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 6-7 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.
Claim 6 recites that “said cellulose ester is prepared by converting cellulose.” There are two different possible interpretations for this limitation. One interpretation is that the claim requires the active step of converting cellulose. The other interpretation is that the limitation “is prepared by” is a product-by-process limitation that is intended to limit the structure of the cellulose ester but does not require actually performing the converting step. MPEP 2173 states that if the language of a claims is such that the skilled artisan would read it with more than one reasonable interpretation, then a rejection under 35 U.S.C. 112(b) is appropriate.
Claim 7 contains the trademarks or trade names Admex, Scandiflex, Benzoflex, 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). MPEP 2173.05(u) states that a trademark or trade name is used to identify a source of goods, and is not the name of the goods themselves. Thus, a trademark or trade name does not define or describe the goods. If the trademark or trade name is used in a claim to identify a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b). The trademarks or trade names recited in claim 7 are used to identify a particular material, so the claim does not comply with the requirements of 35 U.S.C. 112(b).
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 7 recites the broad recitation “plasticizers,” and the claim also recites “such as the Benzoflex™ plasticizer series,” which is the narrower statement of the range/limitation. Claim 7 recites the broad recitation “poly (alkyl succinates),” and the claim also recites “such as poly (butyl succinate),” which is the narrower statement of the range/limitation. Claim 7 recites the broad recitation “epoxides,” and the claim also recites “such as the Paraflex™ plasticizer series,” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-16 and 19 is/are rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as being anticipated by Matsumura (WO 2021/117113A1, published June 17, 2021). EP3862388B1 is used as an English language equivalent.
Matsumura teaches a method wherein cellulose acetate was contacted with magnesium oxide and triacetin (a plasticizer). See Example 12, paragraph [0134]. Table 1 on page 15 states that the DS was 2.46. Sulfuric acid (a neutralizing agent) was present at 140 ppm, or 0.014%. The composition contained 5 wt.% of MgO and 20% triacetin. More broadly, the content of the additive (MgO in Example 12) is 5-40 wt.% (claim 3).
If claim 6 is interpreted to be a product-by-process limitation, the Matsumura composition meets the limitations because the structure of cellulose acetate is not changed.
The pKa of sulfuric acid is lower than 4.5 and its boiling point is greater than 170°C.
Table 1 in the current specification describes the inherent properties of MgO, which meet the claim limitations directed to solubility, pH, and alkaline efficiency. The current specification also discloses that MgO undergoes volumetric expansion.
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Claim(s) 1-2, 5-7, 9-16, and 18-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Holter (US 2017/0342598A1, 2017).
Holter teaches a film made by contacting cellulose acetate DS 2.45 with a basic additive and inhibitor [00411]. Film D in Table 1 (page 6) states that MgO is present at 5 wt% and citric acid is present at 0.5 wt%. The composition may further comprise a plasticizer [0035]. The basic additive is present from 0.01-40 wt% [0021].
If claim 6 is interpreted to be a product-by-process limitation, the Matsumura composition meets the limitations because the structure of cellulose acetate is not changed.
The pKa of citric acid is lower than 4.5 and its decomposition temperature is greater than 170°C.
Table 1 in the current specification describes the inherent properties of MgO, which meet the claim limitations directed to solubility, pH, and alkaline efficiency. The current specification also discloses that MgO undergoes volumetric expansion.
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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.
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(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Holter.
Holter teaches as set forth above. Holter’s example does not contain a plasticizer. Holter also teaches that the composition can optionally include a plasticizer.
It would have been obvious to one of ordinary skill in the art at the time the application was filed to include a plasticizer in Holter’s composition because Holter suggests it.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Matsumura or Holter in view of Shih (WO 2021/150542 A1, July 29, 2021).
Matsumura or Holter each teach as set forth above. Matsumura or Holter do not teach that the starting cellulose acetate is prepared using recycled materials.
Shih teaches that cellulose acetate can be prepared using recycled materials such as recycled plastic syngas. Paragraphs [0018]-[0019].
It would have been obvious to one of ordinary skill in the art at the time the application was filed to modify Matsumura’s or Holter’s processes to include preparing the cellulose acetate from recycled materials because cellulose acetate can be prepared using reactants obtained from recycled materials and recycling reduces waste.
Claim(s) 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Matsumura or Holter.
Matsumura or Holter each teach as set forth above, cellulose acetate compositions which comprise 5% MgO. Matsumura or Holter do not exemplify any compositions wherein the amount of MgO is 10-20%.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to modify Matsumura’s or Holter’s compositions to contain 10-20% MgO because both Matsumura and Holter exemplify an amount of 5% and both teach that the amount of MgO can be as much as 40%. MPEP 2144.05 states that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. The claimed range of 10-20% lies inside the prior art range of 5-40%.
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 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of copending Application No. 18698998 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the reference application claims a cellulose acetate composition comprising a plasticizer and an alkaline additive, wherein a 1% suspension of said alkaline addition has a pH of 8 or greater; wherein the water-solubility of said alkaline filler at 20-25C is greater than 1 ppm but less than 1,000 ppm; and wherein said alkaline filler is present in an amount of about 0.1% to about 10% based on the weight of the cellulose ester composition. Claim 1. DS/AGU is 1-2.5 (claim 2). The cellulose acetate is prepared from recycled materials (claim 4). The plasticizer is one of a list including Triacetin (claim 5) in an amount of 1-40 wt% (claim 6). The pH of a 1 wt % solution or suspension of said alkaline filler ranges from about 8 to about 12 (claim 11). The alkaline efficiency is at least 6 (claim 14). The alkaline filler is such as MgO (claim 15). The pH of a 1% suspension of the alkaline filler is 8 or greater, and the alkaline efficiency is at least 5 (claim 13). A neutralizing agent such as citric acid (which inherently meets the limitations of current claim 19) is present at 0.5-5 wt% (claims 18-19). MgO inherently undergoes volumetric expansion.
The reference application claims a product, not the process of making the product by contacting the cellulose acetate with an alkaline filler and a neutralizing agent.
It would have been obvious to one of ordinary skill in the art at the time the application was filed to prepare the reference product by contacting the cellulose acetate with an alkaline filler and a neutralizing agent because contacting the cellulose acetate with other components is the only way to prepare a composition containing all the components.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-4 and 6-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18698400 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the reference application claims a cellulose acetate composition comprising neutralizer, a plasticizer and an alkaline additive, wherein a 1% suspension of said alkaline addition has a pH of 8 or greater; wherein the water-solubility of said alkaline filler at 20-25C is greater than 1 ppm but less than 1,000 ppm; and wherein said alkaline filler is present in an amount of about 0.1% to about 10% based on the weight of the cellulose ester composition. Claims 1-2. The cellulose acetate is prepared from recycled materials (claim 4). The plasticizer is one of a list including Triacetin (claim 5) in an amount of 1-40 wt% (claim 6). The pH of a 1 wt % solution or suspension of said alkaline filler ranges from about 8 to about 12 (claim 7). The alkaline efficiency is at least 6 (claim 14). The alkaline filler is such as MgO (claim 10). The pH of a 1% suspension of the alkaline filler is 8 or greater, and the alkaline efficiency is at least 5 (claim 9). A neutralizing agent such as citric acid (which inherently meets the limitations of current claim 19) is present at 0.5-5 wt% (claims 14-15). MgO inherently undergoes volumetric expansion.
The reference application claims a product, not the process of making the product by contacting the cellulose acetate with an alkaline filler and a neutralizing agent.
It would have been obvious to one of ordinary skill in the art at the time the application was filed to prepare the reference product by contacting the cellulose acetate with an alkaline filler and a neutralizing agent because contacting the cellulose acetate with other components is the only way to prepare a composition containing all the components.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-4 and 6-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18698399 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the reference application claims a cellulose acetate composition comprising neutralizer, a plasticizer and an alkaline additive, wherein a 1% suspension of said alkaline addition has a pH of 8 or greater; wherein the water-solubility of said alkaline filler at 20-25C is greater than 1 ppm but less than 1,000 ppm; and wherein said alkaline filler is present in an amount of about 0.1% to about 10% based on the weight of the cellulose ester composition. Claims 1-2. The cellulose acetate is prepared from recycled materials (claim 4). The plasticizer is one of a list including Triacetin (claim 5) in an amount of 1-40 wt% (claim 6). The pH of a 1 wt % solution or suspension of said alkaline filler ranges from about 8 to about 12 (claim 8). The alkaline efficiency is at least 6 (claim 11). The alkaline filler is such as MgO (claim 12). The pH of a 1% suspension of the alkaline filler is 8 or greater, and the alkaline efficiency is at least 5 (claim 10). A neutralizing agent such as citric acid (which inherently meets the limitations of current claim 19) is present at 0.5-5 wt% (claims 18-19). MgO inherently undergoes volumetric expansion.
The reference application claims a product, not the process of making the product by contacting the cellulose acetate with an alkaline filler and a neutralizing agent.
It would have been obvious to one of ordinary skill in the art at the time the application was filed to prepare the reference product by contacting the cellulose acetate with an alkaline filler and a neutralizing agent because contacting the cellulose acetate with other components is the only way to prepare a composition containing all the components.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
No claims are allowed.
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/LAYLA D BERRY/ Primary Examiner, Art Unit 1693
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