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 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 5 and 20 is 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.
Considering Claim 5: Claim 5 contains the several trademark/trade names. 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 specific plasticizers and, accordingly, the identification/description is indefinite.
Considering Claim 20: Claim 20 recites a thickness without a unit. As such, the scope of the claim is indefinite, as one cannot determine the process thickness of the article. For the purpose of further examination, the claim will be interpreted as referring to a thickness in mm.
Claim Rejections - 35 USC § 102
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.
Claims 1-10 and 12-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Imanishi (JP 2007-161943). Note: A machine translation is being used for JP 2007-161943.
Considering Claims 1, 2, and 7-10: Imanishi teaches an article comprising a cellulose ester composition comprising a cellulose ester (pg. 4), a filler that is preferably calcium carbonate/an alkaline filler (pg. 20) in an amount of 0.1 to 20 weight percent, preferably 1 to 10 weight percent of the composition (pg. 21), a plasticizer (pg. 9-11), and an acid neutralizer (pg. 22-23).
Imanishi is silent towards the water solubility and pH of the alkaline filler. However, Imanishi teaches the same compound (calcium carbonate) as the instant claims (see claim 10). "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. See MPEP § 2112.01.
Considering Claim 3: Imanishi teaches the cellulose ester as being cellulose acetate (pg. 5).
Considering Claim 4: The instant claim is a product by process claim. Imanishi teaches the claimed cellulose ester, but does not teach that the reactants are obtained from recycled materials. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted). See MPEP § 2113.
Considering Claim 5: Imanishi teaches the plasticizer as being triphenyl phosphate in the example (pg. 33).
Considering Claim 6: Imanishi teaches the plasticizer as being 0.3 to 40 parts by weight of 100 parts of the polymeric component (pg. 11).
Considering Claims 12 and 14: Imanishi teaches the organic acid as preferably being malonic acid, maleic acid, fumaric acid, glycolic acid, lactic acid, citric acid or malic acid, with citric acid being most preferred (pg. 22).
Considering Claim 13: Citric acid has a pKa of 3.1 and a boiling point of 310 ºC.
Considering Claim 15: Imanishi teaches the organic acid as being preseing in amount of 0.005 to 0.5 parts per 100 parts of cellulose ester, or about 0.5 weight percent (pg. 22).
Considering Claims 16, 17, 19, and 20: Imanishi teaches articles with a thickness of 1.5 or 1.0 mm (pg. 34).
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients, in the claimed amounts, and teaches the composition as being made by a substantially similar process. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. the compostabilty and disintegration properties, would necessarily arise from a composition with all the claimed ingredients in the claimed amounts. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. If it is the 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 that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Considering Claim 18: Imanishi teaches the article as being used for home appliances (pg. 32).
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, 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 11 is rejected under 35 U.S.C. 103 as being unpatentable over Imanishi (JP 2007-161943) as applied to claim 1 above, and further in view of Liu (CN 107523144). Note: A machine translation is being used for CN 107523144.
Considering Claim 11: Imanishi teaches the article of claim 1 as shown above. Imanishi teaches a filler that is preferably calcium carbonate/an alkaline filler (pg. 20) in an amount of 0.1 to 20 weight percent, preferably 1 to 10 weight percent of the composition (pg. 21).
Imanishi does not teach the second filler. However, Liu teaches a cellulose acetate composition comprising 15 weight percent of magnesium hydroxide, in combination with 10 weight percent of calcium carbonate (Example 1). Imanishi and Liu are analogous art as they are concerned with the same field of endeavor, namely cellulose acetate compositions. It would have been obvious to a person of ordinary skill in the art to have added the magnesium hydroxide of Liu to the composition of Imanishi, and the motivation to do so would have been, as Liu suggests, to improve the flame retardancy of the composition (pg. 2-3).
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 1-10, 12-16, and 18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1- of copending Application No. 18/698,998 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Considering Claims 1-3: Claim 1 of application ‘998 teaches an article made from a composition comprising at least one cellulose acetate, at least one plasticizer, at least one alkaline additive, and at least one neutralizing agent; 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.
Considering Claims 4-6: Claims 4-6 of application ‘998 corresponds to instant claims 4-6.
Considering Claims 7-9: Claims 11-13 of application ‘998 corresponds to instant claims 7-9.
Considering Claim 10: Claims 15 of application ‘998 corresponds to instant claim 10.
Considering Claims 12-15: Claims 18 and 19 of application ‘998 corresponds to instant claim 12-15.
Considering Claim 16: The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients, in the claimed amounts, and teaches the composition as being made by a substantially similar process. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. the biodegradability or compostability, would necessarily arise from a composition with all the claimed ingredients in the claimed amounts. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. If it is the 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 that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Considering Claim 18: The instant claim is a statement of intended use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020) (The court found that the preamble in one patent’s claim is limiting but is not in a related patent); Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-20 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-20 of copending Application No. 18/698,399 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Considering Claim 1: Claim 1 of application ‘399 teaches a melt processable cellulose ester composition comprising:at least one cellulose ester, at least one alkaline additive, at least one plasticizer, and at least one neutralizing agent; wherein a 1 weight % suspension of said alkaline filler has a pH of 8 or greater; wherein the water-solubility of said alkaline filler at 20- 250C 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 weight % to about 35 weight % based on the weight of the cellulose ester composition; orat least one cellulose acetate, at least one plasticizer, at least one alkalineadditive, and at least one neutralizing agent; wherein a 1 weight % suspension of said alkaline addition has a pH of 8 or greater; wherein the water-solubility of said alkaline filler at 20-25oC 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 weight % to about 35 weight % based on the weight of the cellulose ester composition. Claim 20 of application ‘399 recites an article made from the composition.
Considering Claims 2-20: Claims 2-20 of application ‘399 correspond to instant claims 2-20.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-10, 12-14, and 16-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1- 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:
Considering Claims 1-3, 7-10, and 12-14: Claim 9 of Application ‘047 teaches a composition comprising a cellulose acetate, a plasticizer, a citric acid stabilizer, and 1 to 60 weight percent of calcium carbonate. Claim 15 of application ‘047 teaches an article made from the composition.
Application ‘047 is silent towards the water solubility and pH of the alkaline filler. However, Application ‘047 teaches the same compound (calcium carbonate) as the instant claims (see claim 10). "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. See MPEP § 2112.01.
Considering Claim 4: The instant claim is a product by process claim. Application ‘047 teaches the claimed cellulose ester, but does not teach that the reactants are obtained from recycled materials. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted). See MPEP § 2113.
Considering Claim 5: Claim 5 of application ‘047 teaches the plasticizer as being polyethylene glycol mw 300-550.
Considering Claim 6: Claim 1 of application ‘047 teaches the plasticizer as being present in 10 to 25 weight percent.
Considering Claim 16: The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients, in the claimed amounts, and teaches the composition as being made by a substantially similar process. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. the biodegradability or compostability, would necessarily arise from a composition with all the claimed ingredients in the claimed amounts. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. If it is the 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 that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Considering Claims 17, 19, and 20: Claim 14 of application ‘047 teaches an article of less than 1.89 mm.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients, in the claimed amounts, and teaches the composition as being made by a substantially similar process. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. the compostabilty and disintegration properties, would necessarily arise from a composition with all the claimed ingredients in the claimed amounts. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. If it is the 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 that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Considering Claim 18: Claim 17 of application ‘047 teaches a horticultural article.
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 LIAM J HEINCER whose telephone number is (571)270-3297. The examiner can normally be reached M-F 7:30-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LIAM J HEINCER/Primary Examiner, Art Unit 1767
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