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.
Regarding claim 1, the claim has a number of different ways of referring to the alkaline material in the composition: “alkaline additive”, “alkaline addition” and “alkaline filler”. To maintain consistency within itself and the dependent claims, the examiner suggests amending these all to read “alkaline filler”.
Regarding claim 5, there are a number of brand names which should be removed such as “Triacetin”, “Benzoflex”, “Admex”, “Scandiflex”, “Paraplex”, “Resoflex”. Also, all occurances of “such as” and the groups that follow that statement should be removed because it is not clear if the scope of the claim is limited to only the groups following the phrase “such as”.
Regarding claim 8, there is no antecedent basis for the phrase “cellulose ester”. The examiner suggests amending it to read “cellulose acetate”.
Regarding claim 14, there is no antecedent basis for the phrase “alkaline efficiency”. The examiner suggests amending this claim so it depends from claim 13.
The remaining claims are rejected for being dependent upon a previously rejected claim.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 17 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 17 does not appear to further limit the amount of the alkaline filler. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claim(s) 1-2, 4-6, 8-15 and 16-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sheppard et al (US 2020/0247910) in view of Williams (WO 03/027373).
Regarding claims 1, 9-15 and 17, Sheppard teaches a cellulose acetate ([0071]) tow band ([0008]) comprising a cellulose acetate composition comprising: cellulose acetate ([0071]), a plasticizer ([0092]), at least one alkaline additive such magnesium oxide or calcium carbonate ([0103]) and a neutralizing agent ([0104]).
Given that the magnesium oxide and the calcium carbonate are the exact compounds used in the presently claimed invention, they would inherently have the recited pH and water solubility properties as well as the desired alkaline efficiency.
However, Sheppard fails to teach the amount of the alkaline filler.
Williams teaches a cellulose acetate composition (page 7) which incorporates 0 to 20 wt % of a filler (Abstract). The filler can be a calcium carbonate (page 9, lines 24-30).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have the filler of Sheppard in the amount as taught by Williams. One would have been motivated to do so in order to receive the expected benefit of using a standard amount of filler in a polymeric mixture. It would have been nothing more than using a known compound in a typical amount to achieve predictable results. KSR v. Teleflex, 550 U.S. 418, 82 USPQ2d 1385 (2007).
Regarding claim 2, Sheppard teaches that the cellulose acetate has a DS/AGU of 2 to 2.99 ([0072]).
Regarding claim 4, Sheppard teaches that the cellulose acetate is prepared by converting cellulose ([0111]) to cellulose acetate with reactants that are obtained by recycled materials ([0113]).
Regarding claims 5-6, Sheppard teaches that the plasticizer can be glycerol triacetate ([0092]) and is present in the amount from 0.5 to 50 % by weight ([0094]).
Regarding claim 8, Sheppard teaches that the cellulose ester contains a biodegradable cellulose eater ([0127]) and that this can be combined with cotton fibers ([0143]) which is another biodegradable polymer.
Regarding claim 16, Sheppard teaches that the filler can be MgO or Mg(OH)2 ([0103]) which indicates that the alkaline filler has undergone volumetric expansion via hydration.
Regarding claim 18, Sheppard teaches that the neutralizing agent can be citric acid ([0104]).
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sheppard et al (US 2020/0247910) in view of Williams (WO 03/027373) with evidence provided by Collins et al (US 2017/0088698) and McCreight et al (US 2012/0222793)
The discussion regarding Sheppard and Williams in paragraph 5 above is incorporated here by reference.
Regarding claim 3, Sheppard teaches that the cellulose acetate can be CA 398-30 ([0080]) which as evidenced by Collins has a number average molecular weight of 50,000 in paragraph [0086] and as evidenced by McCreight is a cellulose diacetate in paragraph [0100].
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sheppard et al (US 2020/0247910) in view of Wilson et al (US 2012/0325231).
The discussion regarding Sheppard and Williams in paragraph 5 above is incorporated here by reference.
Regarding claim 7, Sheppard teaches that the plasticizer can be glycerol triacetate ([0092]), however fails to teach that the plasticizer is PEG or MPEG.
Wilson teaches a cellulose acetate material for tow bands ([0002]) which incorporate plasticizers such as a mixture of glycerol triacetate and polyethylene glycol ([0032]).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have the plasticizer of Sheppard be the mixture of glycerol triacetate and polyethylene glycol as taught by Wilson. One would have been motivated to do so because it is a standard plasticizer mixture for tow bands made from cellulose acetate. It would have been nothing more than using known compounds in a typical manner to achieve predictable results. KSR v. Teleflex, 550 U.S. 418, 82 USPQ2d 1385 (2007).
Claim(s) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sheppard et al (US 2020/0247910) in view of Williams (WO 03/027373) and Lee et al (US 5,141,006) with evidence by Kay (US 4,019,942).
The discussion regarding Sheppard and Williams in paragraph 5 above is incorporated here by reference.
Regarding claim 19, Sheppard teaches the incorporation of citric acid ([0104]), however fails to teach the amount of the acid.
Lee teaches a cellulose acetate composition contains from 1 to 10 % by weight of the citric acid compound (col. 3, lines 50-60).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to use the citric acid of Sheppard in the amount as taught by Lee. One would have been motivated to do so in order to remove nicotine from cigarette smoke (Lee, col. 2, lines 60-65). Lee and Sheppard are in the same field of endeavor as evidenced by Kay which states that cellulose acetate materials for use in two bands are used in a cigarette filter rod (col. 1, lines 1-15).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DORIS L LEE whose telephone number is (571)270-3872. The examiner can normally be reached M-F 8 am - 5 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie Lanee Reuther can be reached at 571-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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DORIS L. LEE
Primary Examiner
Art Unit 1764
/DORIS L LEE/Primary Examiner, Art Unit 1764
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