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 .
Election/Restrictions
Applicant's election with traverse of Group I (e.g. claims 1-15) in the reply filed on August 24, 2026 is acknowledged. The traversal is on the ground(s) that Group I and Group II share the same special technical feature .
Applicant further notes the mixed cellulose ester of Group I and the dope composition of Group II share the technical feature of a mixed cellulose ester comprising a degree of substitution of the following substituents: acetyl (DSAc) from 0.9 to 2.4; C3alkyl-CO- (e.g. butyryl, DSAKCO) from 0.1 to 0.8; and hydroxyl (DSOH) from 0.65 to 1.0, see pg. 5, Requirement for Unity of Invention, last paragraph.
These arguments are not found persuasive because the Examiner notes .
Accordingly, the Examiner notes claim 16 recites the average degree of substitution of the C3alkyl-CO- (e.g. butyryl) substituents in totality of the (C2-3)alkyl-CO- substituents, and thus claim 16 does not necessarily recite nor require the butyryl substituent be present in an amount between 0.1 to 0.8 as recited of the mixed cellulose ester of claim 1 in Group I, and noteworthy in view of the Examiner’s reasonable interpretation the C2alkyl-CO- (e.g. propionyl) substituent could be present with an average degree of substitution between 0.7 to 0.8 in the dope composition and thus said C3alkyl-CO- (e.g. butyryl) substituent would be present with an average degree of substitution of less than 0.1 in the mixed cellulose ester within said dope composition.
Additionally, assuming arguendo claim 16 did necessarily recite and require the C3alkyl-CO- (e.g. butyryl) substituent be present with an average degree of substitution of 0.1 to 0.8, which the Examiner respectfully disagrees; the technical feature Applicant argues is not a special technical feature in view of the prior art. Attention is drawn to Ong et al. (Published 19 November 2012, Industrial & Engineering Chemistry Research, Vol. 51, Issue 49, pp. 16135-16145, PTO-892) which is discussed in greater detail within the 102 rejection below.
Thus, the requirement is still deemed proper and is therefore made FINAL.
Claims 16-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on August 24, 2026.
Priority
This application is a 371 of PCT/US2022/049644 11/11/2022 which claims benefit of 63/263,952 11/12/2021 and claims benefit of 63/264,990 12/06/2021 and claims benefit of 63/365,202 05/24/2022.
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 119(e) as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed applications, Application Nos. 63/263,952 and 63/264,990, fail to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. The prior filed applications as discussed above fail to provide adequate support for the structural limitations recited in claim 15.
Therefore, the Examiner reasonably interprets claims 1-14 have a priority date of 11/12/2021; and claim 15 has a priority date of 05/24/2022.
Information Disclosure Statement
The Information Disclosure Statement (IDS) filed on 08/24/2026 has been considered by the Examiner inasmuch as foreign documents have been submitted into the file wrapper in English.
Claim Status
The claim set filed August 24, 2026, has been entered.
Claims 16-18 are withdrawn from consideration for the reasons discussed above.
Thus, claims 1-15 as amended are examined on the merits herein.
Claim Objections
Claim 1 is objected to because of the following informalities:
Claim 1, last line of the claim, recites the claimed range of DSOH is 0.65-0.1.0, which the Examiner interprets as a clear typographical error in view of the previous range recited as 0.6-1.0 in the preliminary amendment filed May 10, 2024.
Accordingly, the Examiner reasonably interprets the claimed range of DSOH is 0.65 to 1.0 and will use said range in view of the prior art.
Appropriate correction is required.
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 1-2, 5, 9, and 11-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ong et al. (Published 19 November 2012, Industrial & Engineering Chemistry Research, Vol. 51, Issue 49, pp. 16135-16145, PTO-892).
Regarding claims 1-2, 5, 9, and 11-14, Ong teaches a mixed cellulose ester comprising a plurality of hydroxyl (OH), acetyl (Ac), and butyryl (Bu) functional groups (e.g. the mixed cellulose ester, required in claim 1, lines 1-4), see pg. 16136, Table 1.
Ong exemplifies said mixed cellulose ester as CAB_M in Table 1, see pg. 16136. Ong teaches CAB_M has a DS(OH) of 0.83 (e.g. the DSOH recited in claim 1, last two lines of the claim and claim 9); a DS(Ac) of 1.49 (e.g. the DSAc recited in claim 1, lines 6-7); and a DS(Bu) of 0.68 (e.g. the DSBu recited in claim 1, lines 8-9 and claim 5), see pg. 16136, Table 1, CAB_M.
The Examiner notes the sum of DSAc and DSBu in the cellulose ester CAB_M of Ong is 2.17 and therefore anticipates the sum of DSAc and DSBu recited in claim 2.
Ong teaches a membrane comprising CAB_M was produced, see pg. 16136, right column, 2.2. membrane preparation, paragraph 2; and subjected to morphological studies, see pg. 16136, right column, 2.3. morphological studies, paragraph 1.
Ong teaches the annealed and freeze-dried membranes were examined under FESEM for their morphology, where Figure S1 in the supporting information shows the FESEM images for all 12 membranes cast from their corresponding cellulose esters, see pg. 16138, left column, 3.2. membrane morphology, paragraph 1 and Figure S1.
The Examiner notes the CAB_M membrane depicted in Figure S1 of Ong shows the cellulose ester has a top surface, a bottom surface and a cross section; and Ong teaches these membranes have a thickness ranging from 50 μm to 100 μm, see pg. 16138, left column, 3.2. membrane morphology, paragraph 1.
Accordingly, in view of Ong depicting the CAB_M membrane having said top and bottom surfaces as well as a measurable thickness within the range taught by Ong above, the Examiner reasonably interprets the CAB_M membrane taught by Ong is an article or composition, as required in instant claim 12 or instant claim 14 respectfully; specifically the Examiner notes, said article or composition is a film as required in instant claim 13.
With respect to claim 11, the Examiner notes Ong is silent regarding the biodegradability of their cellulose ester CAB_M.
Nevertheless, Ong teaches a mixed cellulose ester which anticipates the mixed cellulose ester of claim 1 by containing all the same components in all the claimed amounts. Therefore, products of identical chemical compositions cannot have mutually exclusive properties. See MPEP 2112.01(II) which recites “Products of identical chemical composition can not have mutually exclusive properties”; and “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”.
Therefore, the claimed biodegradation characteristic recited in claim 11 will therefore necessarily be present in the mixed cellulose ester of CAB_M taught by Ong above.
Thus, the teachings of Ong anticipate instant claims 1-2, 5, 9, and 11-14.
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.
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.
(I) Claims 1-9 and 11-14 are rejected under 35 U.S.C. 103 as being unpatentable over Shelton et al. (Published 16 April 2009, US-20090096962-A1, PTO-892).
Regarding claims 1-9 and 11-14, Shelton teaches cellulose esters with a high degree of substitution of hydroxyl groups (also called high DSOH cellulose esters) as substrates and/or negative C-plate optical compensation films in LCD applications (e.g. the article, film or composition, as required in claims 12-14, respectively), see abstract.
Shelton exemplifies said cellulose ester is a cellulose acetate butyrate (CAB) with a high degree of substitution of hydroxyl groups, see paragraph [0036].
Shelton teaches the lower range of DSOH includes 0.65 and the upper range includes 1.0 and where any lower range DSOH may be combined with any upper range of DSOH (e.g. the DSOH recited in claim 1, last two lines of the claim and claims 8-9), see paragraph [0037].
Shelton teaches the cellulose acetate butyrate may have a maximum degree of substitution (DSMax) of 3.0, where an average degree of substitution of acetyl substituents (DSAc) is from 0.1 to 2.5, particularly 1.75 to 2.0 (e.g. the Examiner notes said range encompasses the DSAc range recited in claim 1, lines 6-7); and where the average degree of substitution of butyryl substituents (DSBu) is determined from equation 3, which is recited as DSBu = DSMax – DSAc – DSOH, see paragraph [0043].
The Examiner notes if DSMax is 3, DSAc is 1.75 to 2.0, and DSOH is 0.65 to 1.0 as taught by Shelton above, then DSBu ranges from 0 to 0.6 (e.g. the Examiner notes said range encompasses the DSBu range recited in claim 1, lines 8-9; and claims 3-5). Accordingly, in each case, these ranges are identical, overlap, or encompass, where applicable, their respectively claimed ranges, and consequently establish a prima facie case of obviousness. See MPEP 2144.06(II) drawn to substituting equivalents known for the same purpose.
The Examiner further notes that when DSBu is 0.3 as taught by Shelton above, the sum of DSAc and DSBu is in the range of 2.05 to 2.3 and thus is encompassed within the claimed range recited in claim 2.
With respect to claim 11, the Examiner notes Shelton is silent regarding the biodegradability of their cellulose esters.
Nevertheless, Shelton’s teachings result in a mixed cellulose ester which corresponds to the mixed cellulose ester of claim 1 by containing all the same components in all the claimed amounts. Therefore, products of identical chemical compositions cannot have mutually exclusive properties. For example, where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01(II) which recites “Products of identical chemical composition can not have mutually exclusive properties”; and “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”.
Therefore, the claimed biodegradation characteristic recited in claim 11 will therefore necessarily be present in the mixed cellulose ester taught by Shelton above.
Consequently, it would have been prima facie obvious to one of ordinary skill in the art before the invention was filed to have used the teachings of Shelton as a starting point and through routine experimentation and optimization arrived at the claimed cellulose ester as recited in the instant claims as within the scope of the artisan as combining prior art elements according to known compositions to yield predictable results. One of ordinary skill in the art would have been motivated to produce negative C-plate optical compensation films for use in LCD applications as taught by Shelton above. One of ordinary skill in the art would have had a reasonable expectation of success to have used Shelton as a starting point and would have arrived at the claimed cellulose ester; because Shelton teaches a mixed cellulose ester comprising a plurality of acetyl, butyryl and hydroxyl groups with the required degrees of substitutions as recited in the instant claims as already discussed above.
Thus, the claimed invention would have been prima facie obvious over the teachings of the prior art.
(II) Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Shelton et al. (Published 16 April 2009, US-20090096962-A1, PTO-892) as applied to claims 1-9 and 11-14 above, and further in view of Elkins et al. (Published 16 January 2020, US-20200017647-A1, PTO-892).
Shelton addresses claims 1-9 and 11-14 as written above.
Although Shelton does not teach where the cellulose ester has a weight average molecular weight in the range of 15,000 to 100,000 Da as required in claim 10.
However, in the same field of endeavor of using mixed cellulose esters in compensation films for LCD applications, Elkins exemplifies regioselectively substituted cellulose esters, films from regioselectively substituted cellulose esters and methods of making the same, see abstract.
Elkins teaches the cellulose esters are used in coating applications and examples of preferred celluloses esters for use in coating applications includes cellulose acetate butyrate, see paragraph [0071].
Elkins teaches films are produced comprising cellulose esters disclosed herein and are used as compensation films for LCDs; and Elkins specifically incorporates Shelton et al. (US 2009/0096962) by reference in its entirety to the extent they do not contradict the statements herein, indicating that examples of inventive films are taught herein, see paragraph [0074].
Elkins teaches the regioselectively substituted cellulose ester has a weight average molecular weight (MW) in the range of about 5,000 Da to about 250,000 Da (e.g. the weight average molecular weight of the MCE, required in claim 10), see paragraph [0087].
Accordingly, it would have been prima facie obvious to one of ordinary skill in the art before the invention was filed to have incorporated the weight average molecular weight of the mixed cellulose esters as taught by Elkins into the mixed cellulose ester films as taught by Shelton as within the scope of the artisan as combining prior art elements according to known compositions and methods to yield predictable results.
One of ordinary skill in the art would have been motivated to have included the weight average molecular weight of the mixed cellulose esters as taught by Elkins to create the negative C-plate optical compensation films for LCD applications where said films comprise the mixed cellulose esters as taught by Shelton. One of ordinary skill in the art would have had a reasonable expectation of success to have made the inclusion as discussed above, because both Shelton and Elkins are drawn to mixed cellulose esters as compensation films for LCD applications.
Thus, the claimed invention would have been prima facie obvious over the combined teachings of the prior art.
(III) Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Shelton et al. (Published 16 April 2009, US-20090096962-A1, PTO-892) as applied to claims 1-9 and 11-14 above, and further in view of Sasaki et al. (Published 30 June 2015, WO-2015111435-A1, English machine translation provided by IP.com, PTO-892).
Shelton addresses claims 1-9 and 11-14 as written above.
Although Shelton does not teach the cellulose acetate required in the composition as recited in claim 15.
However, in the same field of endeavor of films for LCD applications, Sasaki teaches a cellulose ester-based retardation film provided in a VA liquid crystal display device, see English machine translation, pg. 3, lines 8-9.
Sasaki teaches said retardation film comprises mixing a plurality of cellulose esters having an acyl group having 3 to 6 carbon atoms, see English machine translation, pg. 4, lines 12-13.
Sasaki teaches the preparation of a retardation film 301 in Example 3 on pg. 33 of the English machine translation; where said film was doped with diacetylcellulose (e.g. cellulose acetate, required in claim 15, line 2) which has an acetyl group substitution degree of 2.50 (e.g. the average degree of substitution, required in claim 15, lines 2-3); at 5 parts by mass, see English machine translation, pg. 33, example 3 and preparation of dope.
Sasaki teaches in the production of the retardation film 301, retardation films 302 to 308 were produced in the same manner except that the mixing ratio of resin A: diacetyl cellulose and resin B: cellulose acetate propionate was changed as shown in Table 3, see English machine translation, pg. 33, preparation of dope.
The Examiner notes retardation films 302-304 contain a cellulose acetate weight percent of 10-30% in Table 3 on pg. 80 of WO-2015111435-A1; see Table 3, 5th column from the left, resin A. The Examiner notes said percentage of cellulose acetate is encompassed by the weight percentage of cellulose acetate recited in claim 15, lines 1-2.
Sasaki teaches from Table 3 the retardation films 302 to 307 having said configuration are generally excellent in brittleness, saponification suitability, and R value fluctuation compared to the comparative example; particularly a cellulose acetate weight percent of 30% in resin A, English machine translation, pg. 33, second to last paragraph from the end of the page.
Accordingly, it would have been prima facie obvious to one of ordinary skill in the art before the invention was filed to have incorporated the cellulose acetate exemplified in Resin A as taught by Sasaki above into the cellulose ester films taught by Shelton above as within the scope of the artisan as combining prior art elements according to known compositions and methods to yield predictable results. One of ordinary skill in the art would have been motivated to make such an incorporation as Sasaki teaches said cellulose acetate of resin A, particularly at 30 wt%, is generally excellent regarding brittleness, saponification suitability, and R value fluctuation compared to the comparative example. One of ordinary skill in the art would have had a reasonable expectation of success to have incorporated the teachings of Sasaki into the teachings of Shelton above, as both Shelton and Sasaki are drawn to cellulose-ester based films for liquid crystal displays; and particularly since Sasaki teaches the incorporation of the cellulose acetate of Sasaki into films that comprise mixed cellulose esters exemplified as cellulose acetate propionate in resin B of Sasaki above, and where Sasaki also taught the retardation films comprise mixing a plurality of cellulose esters having an acyl group having 3 to 6 carbon atoms.
Thus, the claimed invention would have been prima facie obvious over the combined teachings of the prior art.
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.
(I) Claims 1-12 and 14-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 5, 7 and 9-15 of copending Application No. 18/709,165 (Applicant: Eastman Chemical Company, amended claim set filed 05/10/2024, filed 11/11/2022) (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are drawn to a mixed cellulose ester.
Reference claims 1 and 9 recite a biodegradable bead comprising a mixed cellulose ester, wherein the biodegradable bead exhibits at least 40 percent biodegradability at 56 days according to the OECD 301F test method, wherein:
the mixed cellulose ester comprises:
(a) an average degree of substitution for acetyl substituents (DSAc) of less than 2.3;
(b) an average degree of substitution for propionyl or butyryl substituents (DSBu) of at least 0.1; and
(c) an average degree of substitution for hydroxyl substituents (DSOH) of at least 0.6.
Reference claim 9 additionally recites the bead comprises an additional biodegradable cellulose ester in line 2.
Reference claims 2 and 10 recite DSOH is in the range of 0.7 to 1.4.
Reference claims 3 and 11 recite the DSAc is in the range of 0.9 to 2.2; and reference claims 5 and 12 recite the DSBu is in the range of 0.1 to 1.1.
The Examiner notes from the combined teachings of reference claims 3 and 5 and/or 11-12, the total sum of DSAc and DSBu is from 1.0 to 3.3, and therefore encompasses the sum as recited in instant claim 2.
Reference claim 13 recites the mixed cellulose ester exhibits at least 60% biodegradability at 56 days according to the OECD 301F test method.
Reference claims 7 and 14 recite the mixed cellulose ester has a weight average molecular weight in the range of from 5,000 Da to 100,000 Da.
Reference claim 15 recites the additional biodegradable cellulose ester is cellulose acetate.
The Examiner notes the reference specification discloses in the sixth aspect a biodegradable bead comprising any one of the previously disclosed mixed cellulose esters or cellulose ester compositions (see pg. 28, lines 5-10); the biodegradable beads may comprise (1) any mixed cellulose ester described herein and (2) a biodegradable cellulose acetate having an average degree of substitution for the acetyl substituents (DSAc) from 1.5 to 2.6 (see pg. 30, lines 25-30) and wherein said bead comprises 1 wt% to 40 wt% of the biodegradable cellulose acetate (see pg. 31, lines 1-9).
Therefore, the Examiner reasonably interprets the limitation of reference claim 15 corresponds to instant claim 15.
Thus, the Examiner reasonably interprets reference claims 1-3, 5, 7 and 9-15 make obvious instant claims 1-12 and 14; and reference claims 9-15 make obvious instant claims 1-12 and 14-15.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
(II) Claims 1-4 and 6-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 5 and 12 of copending Application No. 18/709,118 (Applicant: Eastman Chemical Company, amended claim set filed 05/10/2024, filed 11/11/2022) (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are drawn to a mixed cellulose ester.
Reference claim 1 recites a film comprising a mixed cellulose ester (MCE) comprising a plurality of acetyl, butyryl and hydroxyl substituents, wherein the MCE has an average degree of substitution of:
acetyl substituents (DSAc) of 2.1 to 2.3;
butyryl substituents (DSBu) of 0.2 to 0.4; and
hydroxyl substituents (DSOH) of 0.6 to 0.8.
Reference claim 2 recites the sum of DSBu and DSAc is from 2.0 to 2.4.
Reference claim 5 recites the DSOH is from 0.6 to 0.7.
Reference claim 12 recites the film exhibits at least 40% biodegradability at 56 days according to the OECD 301F test method.
With respect to instant claim 10, the reference specification discloses in the third aspect a mixed cellulose ester (MCE) corresponding to reference claim 1 (see pg. 12, lines 9-16); and further discloses the MCE of the third aspect has a weight average molecular weight from about 15,000 to 100,000 Da (see pg. 14, line 31 – pg. 15, line 4).
Therefore, the Examiner reasonably interprets the MCE of reference claim 1 comprises a weight average molecular weight from about 15,000 to 100,000 Da which corresponds to instant claim 10.
Thus, the Examiner reasonably interprets reference claims 1-2, 5 and 12 make obvious instant claims 1-4 and 6-14.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
(III) Claims 1-12 and 14-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 7-8, and 10-15 of copending Application No. 18/709,223 (Applicant: Eastman Chemical Company, amended claim set filed 05/10/2024, filed 11/11/2022) (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are drawn to a mixed cellulose ester.
Reference claim 1 recites a biodegradable bead comprising a mixed cellulose ester, wherein the mixed cellulose ester comprises:
(a) an average degree of substitution for acetyl substituents (DSAc) of less than 2.3;
(b) an average degree of substitution for propionyl or butyryl substituents (DSBu) of at least 0.1; and
(c) an average degree of substitution for hydroxyl substituents (DSOH) of at least 0.6.
Reference claim 2 recites DSOH is in the range of 0.7 to 1.4.
Reference claim 3 recites the DSAc is in the range of 0.9 to 2.2; and reference claim 5 recites the DSBu is in the range of 0.1 to 1.1.
Reference claim 7 recites the mixed cellulose ester exhibits at least 60% biodegradability at 56 days according to the OECD 301F test method.
Reference claim 8 recites the mixed cellulose ester has a weight average molecular weight in the range of from 5,000 Da to 100,000 Da.
The Examiner notes reference claims 1-3 and 7-8 make obvious instant claims 1-2, 5-12 and 14.
Additionally, reference claim 10 recites a biodegradable bead comprising a mixed cellulose ester and an additional cellulose ester, wherein the mixed cellulose ester comprises:
(a) an average degree of substitution for acetyl substituents (DSAc) in the range of 0.9 to 2.3;
(b) an average degree of substitution for butyryl substituents (DSBu) in the range of 0.1 to 1.1; and
(c) an average degree of substitution for hydroxyl substituents (DSOH) in the range of 0.7 to 1.4.
Reference claim 11 recites DSOH is in the range of 0.7 to 1.0.
Reference claim 12 recites the DSAc is in the range of 0.9 to 2.2; and reference claim 13 recites the DSBu is in the range of 0.2 to 1.1.
Reference claim 14 recites the mixed cellulose ester exhibits at least 45% biodegradability at 56 days according to the OECD 301F test method.
Reference claim 15 recites the mixed cellulose ester has a weight average molecular weight in the range of from 5,000 Da to 100,000 Da.
The Examiner notes the reference specification discloses in the sixth aspect a biodegradable bead comprising any one of the previously disclosed mixed cellulose esters or cellulose ester compositions (see pg. 28, lines 1-5); the biodegradable beads may comprise (1) any mixed cellulose ester described herein and (2) a biodegradable cellulose acetate having an average degree of substitution for the acetyl substituents (DSAc) from 1.5 to 2.6 (see pg. 30, lines 23-28) and wherein said bead comprises 1 wt% to 40 wt% of the biodegradable cellulose acetate (see pg. 30, line 29 – pg. 31, line 4).
Therefore, the Examiner reasonably interprets the limitation of an additional cellulose ester as recited in reference claim 10 corresponds to the cellulose ester of instant claim 15.
The Examiner notes reference claims 10-15 make obvious instant claims 1-12 and 14-15.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
No claims are allowed in this action.
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/JARET J CREWS/Examiner, Art Unit 1691
/RENEE CLAYTOR/Supervisory Patent Examiner, Art Unit 1691
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