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 1-16 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 claim 1 is a relative term which renders the claim 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 cellulose ester composition is rendered indefinite.
The recitation of “disintegratable rate” in claim 1 is rendered indefinite. “Disintegratable rate” is 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
Claim 5 contains the trademark/trade name 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 a plasticizer and, accordingly, the identification/description is indefinite.
Regarding claim 5, 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).
Claims 5 and 6 recites the limitation "said plasticizer" in claim 5, line 1-2, and claim 6, line 1-2. There is insufficient antecedent basis for this limitation in the claim.
Claims 8, 9, 10, and 11 recites the limitation "said branched, amorphous biofiller" in claim 8, line 2, claim 9, line 1-2, claim 10, line 1-2, and claim 11, line 1-2. There is insufficient antecedent basis for this limitation in the claim.
The term “about” in claim 10 and 11 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. The amount of biofiller is rendered indefinite.
Claim 12 recites “the maximum thickness” which causes confusion. Does the thickness refer to the article? The examiner invites the applicant to clarify.
Claim 15 recites the limitation “the plaque” in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claims 2-4, 7, 13-14, and 16 are rejected for being dependent on claim 1.
Claim Analysis
Summary of Claim 1:
An article comprising a disintegratable cellulose ester composition; wherein said cellulose ester composition comprises comprising
at least one biodegradable cellulose ester and
at least one biodegradable, branched starch;
wherein said branched starch has a degree of branching of 2 to 6;
wherein said cellulose ester composition has a disintegratable rate of 50% or more.
Claim Rejections - 35 USC § 102/103
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 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.
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.
Claims 1-2, 4-11, and 15-16 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Mayer et al. (US 5288318).
Regarding claim 1, Mayer et al. disclose in Example 1 an article comprising 1000 grams of cellulose acetate, 200 grams of corn starch, and 250 grams of triacetin [col 9, line 60-69; col 10, line 1-7], thereby reading on a biodegradable cellulose ester and at least one biodegradable, branched starch.
Mayer et al. is silent on the degree of branching as recited in the instant claim.
However, in view of the table in the instant specification, page 11, line 20-25, native corn starch has a degree of branching of 3.1, thereby lying within the claimed range. Therefore, one of ordinary skill in the art would have found the degree of branching of the corn starch of Mayer et al. to be inherent.
Mayer et al. is silent on the cellulose ester composition has a disintegratable rate as recited in the instant claim.
In view of the substantially identical article comprising a cellulose ester composition of Mayer et al., the article comprising a cellulose ester composition of Mayer et al., will possess the claimed properties because disintegratable rate is an inherent property. Because the PTO does not have proper means to conduct experiments, the burden of proof is now shifted to Applicant to show otherwise. (See In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977); In re Fitzgerald, 205 USPQ 594 (CCPA 1980).)
Regarding claim 2, Mayer et al. disclose the cellulose ester of the article of Example 1 is a cellulose acetate [col 9, line 60-69; col 10, line 1-7], thereby reading on the instant claim.
Regarding claim 4, Mayer et al. is silent on if the cellulose ester of the article of Example 1 is prepared by the process recited in the instant claim.
However, the present claims are product-by-process claims. “[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." (MPEP § 2113 (quoting In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)).) If the prior art teaches the same product as the product formed by the process recited in the claims at issue, the claims are unpatentable. However, if the process of the claims at issue results in a product that is different from the product taught by the prior art, then the prior art does not teach the invention recited in the claims at issue.
Regarding claim 5, Mayer et al. disclose the article of Example 1 comprises triacetin [col 9, line 60-69; col 10, line 1-7], thereby reading on the plasticizer of the instant claim.
Regarding claim 6, Mayer et al. disclose the article of Example 1 comprises 17.2 wt% of triacetin plasticizer (calculated by 250/1450×100 =17.2 wt%, [col 9, line 60-69; col 10, line 1-7]), thereby lying within the claimed range.
Regarding claim 7, Mayer et al. disclose the article of Example 1 comprises are extruded and injection molded [col 9, line 60-69; col 10, line 1-7], thereby reading on the molded article instant claim.
Mayer et al. is silent on the cellulose ester composition is biodegradable or compostable as recited in the instant claim.
In view of the substantially identical article comprising a cellulose ester composition of Mayer et al., the article comprising a cellulose ester composition of Mayer et al., will possess the claimed properties because biodegradable and compostable are inherent properties. Because the PTO does not have proper means to conduct experiments, the burden of proof is now shifted to Applicant to show otherwise. (See In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977); In re Fitzgerald, 205 USPQ 594 (CCPA 1980).)
Regarding claim 8, Mayer et al. disclose the article of Example 1 comprise native corn starch [col 9, line 60-69; col 10, line 1-7], which has a degree of branching of 3.1 as discussed in the rejection for claim 1 above, thereby lying within the claimed range.
Regarding claim 9, Mayer et al. disclose the article of Example 1 comprises native corn starch [col 9, line 60-69; col 10, line 1-7], thereby reading on the instant claim.
Regarding claim 10 and 11, Mayer et al. disclose the article of Example 1 comprises 13.8 wt% of corn starch (calculated by 200/1450×100 =13.8 wt% [col 9, line 60-69; col 10, line 1-7]), which is interpreted as the biofiller, thereby lying within the claimed range.
Regarding claim 15 and 16, Mayer et al. is silent on the amount of plaque disintegrates of the article as recited in the instant claims.
In view of the substantially identical article comprising a cellulose ester composition of Mayer et al., the article comprising a cellulose ester composition of Mayer et al., will possess the claimed properties because disintegratable rate is an inherent property. Because the PTO does not have proper means to conduct experiments, the burden of proof is now shifted to Applicant to show otherwise. (See In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977); In re Fitzgerald, 205 USPQ 594 (CCPA 1980).)
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.
Claims 3 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Mayer et al. (US 5288318).
The article of claim 1 is incorporated herein by reference.
Regarding claim 3, Mayer et al. is silent on the molecular weight of the cellulose acetate used in Example 1 and if the cellulose acetate is a cellulose diacetate as recited in the instant claim.
However, Mayer et al. broadly teach the cellulose acetate has a molecular weight of 28,000 to 62,000 Daltons (claim 1, [col 3, line 34-51], thereby lying within the claimed range. Mayer et al. further teach the cellulose acetate has a degree of acetyl substitution of 1.2 to 3.0 [col 4, line 28-43]. A cellulose acetate having a degree of acetyl substation of 2.0 is a cellulose diacetate, thereby reading on the instant claim. Therefore, it would have been obvious to one of ordinary skill in the art to use a cellulose diacetate having the molecular weight broadly taught by Mayer et al.
Regarding claim 13, Mayer et al. et al. disclose the article as rejected above.
While Mayer et al. do not disclose that the article is used in food service and grocery items, horticulture, agriculture, recreation, coatings, fibers, nonwovens, and home/office applications, it is noted that case law holds that "where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation." See Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997).
Claims 12 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Mayer et al. (US 5288318) in view of Yi et al. (US 20070043149).
The article of claim 1 is incorporated herein by reference.
Regarding claim 12, Mayer et al. do not teach the max thickness of the article as recited in the instant claim.
Yi et al. teach a biodegradable resin composition comprising a cellulose diacetate (claim 1). Yi et al. further teach the biodegradable resin composition are used to turn into films having a thickness of 300 µm [0047], equivalent to 12 mils and thereby lying within the claimed range. Mayer et al. is also concerned with a cellulose ester biodegradable compositions (claim 1). Therefore, it would have been obvious to one of ordinary skill in the art to form an article having the thickness as taught by Yi et al. with the article of Mayer et al. since both are related to cellulose ester compositions.
Regarding claim 14, Mayer et al. is silent on the article as recited in the instant claim.
Yi et al. teach the biodegradable resin composition is a mulching film among others (claim 9), thereby reading on the instant claim. Mayer et al. is also concerned with a cellulose ester biodegradable compositions (claim 1). Therefore, it would have been obvious to one of ordinary skill in the art to form an article having the thickness as taught by Yi et al. with the article of Mayer et al. since both are related to cellulose ester compositions.
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 1-7 and 9-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1, 2, 3, 6, 7, 8, 9, and 13-15 of copending Application No. 18698403 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both applications refer to cellulose ester compositions comprising at least one biodegradable cellulose ester and at least one biodegradable starch, wherein said branched starch has a degree of branch of 2 to 6; wherein said cellulose ester composition has a disintegratable rate of 50% or more.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-11 and 18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-5, 7-10, and 13-18 of copending Application No. 18698256 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both applications refer to cellulose ester compositions comprising at least one biodegradable cellulose ester and at least one biodegradable starch, wherein said branched starch has a degree of branch of 2 to 6; wherein said cellulose ester composition has a disintegratable rate of 50% or more.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 3-6, and 8-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1, 3-6, 9, and 10-12 of copending Application No. 18698407 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both applications refer to cellulose ester compositions comprising at least one biodegradable cellulose ester and at least one biodegradable starch, wherein said branched starch has a degree of branch of 2 to 6; wherein said cellulose ester composition has a disintegratable rate of 50% or more.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREA WU whose telephone number is (571)272-0342. The examiner can normally be reached M F 8 - 5.
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.
/ANDREA WU/Examiner, Art Unit 1763
/JOSEPH S DEL SOLE/Supervisory Patent Examiner, Art Unit 1763
Prosecution Insights