CTNF 18/756,155 CTNF 77177 Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. 07-06 AIA 15-10-15 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. Claim Rejections - 35 USC § 103 07-20-aia AIA 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. 07-103 AIA The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action. 07-23-aia AIA 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. 07-20-02-aia AIA 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. 07-21-aia AIA Claim s 1-3, 5, 6, 8, 9 are rejected under 35 U.S.C. 103 as being unpatentable over Hale (US 2005/0154114) in view of Shoji (US 2015/0105521) . With respect to claim 1 , Hale teaches composition comprising polymer blend with cellulose fibers and impact modifiers. Resin composition comprises polylactic acid in amount of 5-95 wt% and another biodegradable polyester in amount of 5-95 wt % (Abstract). Wherein molecular weight of the polylactic acid is 50,000 to 110,000 [0078]. Hale also teaches impact modifier [0104] but does not disclose any details regarding its nature or content as well as compatibilizers utilized in amount of 0.25-21 parts [abstract]. Impact modifiers are elastomers which just like the compatibilizers of Hale have “soft block” and “hard block” [0090-0094]. Shoji discloses another composition comprising polylactic acid and a resin, wherein composition uses polyester elastomers which have hard segment (polyester segment) and soft segment (polyalkylene glycol) which as elastomers will also improve impact resistance without affecting compatibility with matrix polyester polymers. Polyester elastomer under tradename Hytrel is a high molecular weight elastomer which is evidenced by its high melting point, while glass transition temperature is lowered due to presence of long polyalkylene oxide segments (see attached Hytrel brochure). Consequently, Hytrel would meet the maximum value 2 of the instant invention. In the light of the above disclosure, it would have been obvious to one of ordinary skill in the art at the time instant invention was filed to utilize polyester elastomer of Shoji in the teachings of Hale. Such modification would further improve the properties of the composition of Hale which is impact strength. One way to improve impact strength is to compatibilize the polymers of the composition and another is to add an elastomer which are well known for its ability to improve impact resistance. With respect to the area under the curve, if polyester elastomer is to be utilized as a compatibilizer, its content in Hale is 0.25-10 wt %. If utilized as impact modifier, Shoji discloses its amount to be 9.6 parts per 90 parts of the PLA, which is also within the range of the compatibilizer of Hale. Consequently, the content of elastomer within the composition is much smaller than that of the polylactic acid leading to the maximum 2 to be smaller than maximum 1. With respect to claims 2 and 3 , Hale discloses composition which is utilized to make films and sheets by injection molding, blow molding etc… [0152]. However, Hale in order to make such product last does not disclose the crosslinking agents required for making such articles. Shoji as disclosed above teaches composition comprising polylactic acid and polyester elastomer to make injection molded or extruded products just like Hale. Shoji teaches use of carbodiimides, which reacts with polylactic acid and other polymers. Such reaction does not only compatibilizes the polymers but also crosslinks them without degradation [0110-0112]. Just because Shoji discloses carbodiimide as compatibilizer, the compound will still act as a crosslinker. WIth respect to claim 5 , content of polyester elastomer would be within a range of 0.25-10 parts which is less than claimed 400 parts. With respect to claim 6 ¸the polyester of Shoji under tradename Hytrel, which according to the product reference attached comprises polybutylene terephthalate and polyether being either ethylene oxide or propylene oxide depending on the specific grade. With respect to claims 8 and 9 , the highly polar polyester of Hale is polylactic acid (preferred) although polyhydroxybutyric acid can also be utilized . 07-21-aia AIA Claim s 1, 5, 6, 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over Obuchi (JP 2001-049098 translation provided) in view of Miyoshi (WO 2018/123150, US 2022/0325077 is utilized as translation) . With respect to claim 1 , Obuchi discloses composition for molded article [0043] such as films, sheets, hollow objects and the like, the composition comprising 100 parts of polylactic acid and 1-100 parts of a compound selected from polyester elastomers, polyamide elastomers, rosin or terpene. This rejection is relying on combination of polylactic acid and polyester elastomer (Abstract). Preferred molecular weight of polylactic acid is 10,000-1,000,000 [0028], wherein molecular weight of 10,000-100,000 encompasses maximum value 1. Polyester elastomer have molecular weight in a range of 30,000-300,000 [0034], wherein molecular weight of 100,000 – 300,000 encompasses maximum value 2. It is noted that while broad range encompasses instant claims, narrower range or preferred embodiment do not exclude or teach away in any fashion from the broader range. Consequently, maximum value 1 comprises area that is larger or at most equal to the area of value 2, because the content of elastomer is 1-100 parts per 100 parts of PLA. Composition of Obuchi does not explicitly teach cellulose fibers, but it does encompass additives such as organic filler. As such one of ordinary skill in the art would have to look to organic fillers which would still result in molded PLA article. Miyoshi discloses a molding composite [0082] utilized to make sheets [0225, 0228] comprising polyester such as PLA [0113] and cellulose fibers. Cellulose fibers can be in form of nanofiber or whisker, wherein fiber can be utilized in 100 parts per 100 parts of PLA [0030, 0090] In the light of the above disclosure, it would have been obvious to one having ordinary skill in the art at the time instant invention was filed to utilize cellulose fibers of Miyoshi as the organic fillers of Obuchi and thereby obtain claimed invention. Cellulose fillers would still render the composition of Obuchi as biodegradable. Obuchi would still be able to obtain molded article with improved strength and elongation [0159 of Miyoshi] because PLA has affinity with cellulose fibers. With respect to claim 5 , the content of polyester elastomer 1-100 parts per 100 parts of PLA encompasses claimed range of 400 or less. With respect to claim 6 , the polyester elastomer of Obuchi includes Hytrel tradenames which as seen from the Hytrel brochures attached comprises polybutylene terephthalate as a hard segment, and soft segments comprises polyethylene oxide and/or polypropylene oxide depending on specific grade. With respect to claims 8 and 9 , the polymer of Obuchi includes polylactic acid. With respect to claim 10 , cellulose fiber which meets the limitation of organic fiber of Miyoshi as depicted in rejection of claim 1 has diameter of less than 1 micron [0128] specifically 500 nm or less [0130] and with aspect ratio of at least 50, would result in length of 25,000 nanometers or 25 microns. Aspect ratio is at most 150, resulting in length of 75,000 nanometers of 75 microns . 07-22-aia AIA Claim s 2 and 3 are rejected under 35 U.S.C. 103 as being unpatentable over Obuchi (JP 2001-049098 translation provided) in view of Miyoshi (WO 2018/123150, US 2022/0325077 is utilized as translation) as applied to claim s 1, 5, 6, 8-10 above, and further in view of Shoji (US 2011/0224385) (Shoji’385) . Discussion of Obuchi and Miyoshi from paragraph 2 of this office action is incorporated here by reference. Obuchi as disclosed above teaches polylactic acid composition which is utilized to make molded articles such as sheets, films or hollow tubes. Obuchi is silent with respect to the component which is otherwise necessary for molded articles to main molded. With respect to claims 2 and 3 , Shoji’385 discloses molding composition [0011], comprising polylactic acid [0147] which can be used along or in combination with another polymer such as polyhydroxybutyric acid. PLA is also the polymer of Obuchi. Shoji discloses use of crosslinking agent which is carbodiimide (Abstract). The carbodiimide compound of Shoji does not form free isocyanates which eliminates formation of smell [0009] as it reacts with polyester. In the light of the above disclosure, it would have been obvious to one having ordinary skill in the art at the time instant invention was filed to utilize carbodiimide compound of Shoji to crosslink the composition of Obuchi. In addition to eliminating smell associated with isocyanate, use of such carbodiimide will prevent reaction between free isocyanate and hydroxyl group. The reaction between isocyanate group and hydroxyl group is much faster resulting in competition for the hydroxyl group. This competition reduces the extent of carbondiimide-mediated crosslinking and introduces additional crosslinking sites via urea formation. Consequently, presence of free isocyanate will affect density and nature of crosslinking which in turn affect mechanical properties . 07-22-aia AIA Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Hale (US 2005/0154114) in view of Shoji (US 2015/0105521) as applied to claim s 1-3, 5, 6, 8, 9 above, and further in view of Onoue (US 2014/0155528) . Discussion of Hale and Shoji’521 from paragraph 1 of this office action is incorporated here by reference. The difference between the present invention and Hale is the content of cellulose fibers in a molded article where the resin is polylactic acid. With respect to claim 4 , Onoue discloses composition comprising polylactic acid and impact polymers [0033] which composition is utilized to make molded articles having good impact resistance [0001] much like the articles of Hale. It is also well established in the art that the properties sought in the molded articles can be achieved by adjusting content of the additives such as fillers or flame retardants. The articles of Onoue include sheets, films and tubes, which are the same articles as those of Hale [0142]. Onoue utilizes cellulose fibers [0128] as a reinforcing fillers and their content can be 0.1- 200 parts relative to the content of polylactic acid [0130]. The extent to which sheets, films or tubes can be reinforced depends on their intended use [0144-0145]. For example, sheet materials of Onoue [0145] will require different amount of reinforcing filler as bottles [0147], which is something one of ordinary skill in the art would understand, in which case the content of cellulose fiber would have to exceed or be equal to the content of the polymeric component. In the light of the above disclosure, it would have been obvious to one having ordinary skill in the art at the time instant invention was filed to adjust the content of the reinforcing cellulose ester in order to achieve mechanical properties and impact resistance of the article for which the composition is intended. Lack of proper reinforcement would result in premature failure and compromised article integrity . 07-22-aia AIA Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Obuchi (JP 2001-049098) in view of Miyoshi (WO 2018/123150, US 2022/0325077 as applied to claim s 1, 5, 6, 8-10 above, and further in view of Onoue (US 2014/0155528) . Discussion of Obuchi and Miyoshi from paragraph 2 of this office action is incorporated here by reference. The difference between the present invention and Obuchi is the content of cellulose fibers in a molded article where the resin is polylactic acid. With respect to claim 4 , Onoue discloses composition comprising polylactic acid and impact polymers [0033] which composition is utilized to make molded articles having good impact resistance [0001] much like the articles of Hale. It is also well established in the art that the properties sought in the molded articles can be achieved by adjusting content of the additives such as fillers or flame retardants. The articles of Onoue include sheets and films, which are the same articles as those of Obuchi. Onoue utilizes cellulose fibers [0128] as a reinforcing fillers and their content can be 0.1- 200 parts relative to the content of polylactic acid [0130]. The extent to which sheets, films or tubes can be reinforced depends on their intended use [0144-0145]. For example, sheet materials of Onoue [0145] will require different amount of reinforcing filler as bottles [0147], which is something one of ordinary skill in the art would understand, in which case the content of cellulose fiber would have to exceed or be equal to the content of the polymeric component. In the light of the above disclosure, it would have been obvious to one having ordinary skill in the art at the time instant invention was filed to adjust the content of the reinforcing cellulose ester in order to achieve mechanical properties and impact resistance of the article for which the composition is intended. Lack of proper reinforcement would result in premature failure and compromised article integrity . Double Patenting 08-33 AIA 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. 08-35 AIA Claim s 1-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1-7 of copending Application No. 15/544,541 (‘541) . Although the claims at issue are not identical, they are not patentably distinct from each other because : Claim 1 of ‘541 discloses composition comprising cellulose fibers, polyester-based elastomer, a highly polar elastomer and flame retardant, wherein flame retardant is encompassed by term “comprising” of the instant claim 1. Claim1 of ‘541 is much broader in scope as it includes any molecular weight for both polar polyester and elastomer, encompassing instant claim 1. Claim 2 of ‘541 is the same as claim 5. Claim 3 of ’541 is the same as instant claim 6. Claim 4 of ‘541 is the same as instant claim 7. Claim 5 of ‘541 is the same as instant claim 8. Claim 6 of ‘541 is the same as instant claim 9. Claim 7 of ‘541 is the same as instant claim 10. With respect to instant claims 2 and 3, co-pending application ‘541 uses term “comprising” which includes crosslinking components of instant claims 2 and 3. Wherein specification can be utilized as a dictionary to learn the meaning or extend of term “comprising” in accordance with MPEP 804 . This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. 08-35 AIA Claim s 1-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1-7 of copending Application No. 18/545,064 (‘064) . Although the claims at issue are not identical, they are not patentably distinct from each other because : Claim 1 of ‘064 recited composition comprising polyester-based elastomer, a highly polar polyester and cellulose fiber. Claim 1 of ‘064 also includes instant claim 4. With respect to the molecular weight and maximum values 1 and 2, claims of ‘064 are much broader in scope encompassing instantly claimed molecular weights and maximum values. Claim 2 of ‘064 is the same as instant claim 5. Claim 3 of ‘064 is the same as instant claim 6. Claim 4 of ‘064 is the same as instant claim 7. Claim 5 of ‘064 is the same as instant claim 8. Claim 6 of ‘064 is the same as instant claim 9. Claim 7 of -064 is the same as instant claim 10. With respect to instant claims 2 and 3, co-pending application ‘064 uses term “comprising” which includes crosslinking components of instant claims 2 and 3. Wherein specification can be utilized as a dictionary to learn the meaning or extend of term “comprising” in accordance with MPEP 804 . 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 KATARZYNA I KOLB whose telephone number is (571)272-1127. The examiner can normally be reached M-F. 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, Mark Eashoo can be reached at 5712701046. 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. /KATARZYNA I KOLB/Primary Examiner, Art Unit 1767 June 10, 2026 Application/Control Number: 18/756,155 Page 2 Art Unit: 1767 Application/Control Number: 18/756,155 Page 3 Art Unit: 1767 Application/Control Number: 18/756,155 Page 4 Art Unit: 1767 Application/Control Number: 18/756,155 Page 5 Art Unit: 1767 Application/Control Number: 18/756,155 Page 6 Art Unit: 1767 Application/Control Number: 18/756,155 Page 7 Art Unit: 1767 Application/Control Number: 18/756,155 Page 8 Art Unit: 1767 Application/Control Number: 18/756,155 Page 9 Art Unit: 1767 Application/Control Number: 18/756,155 Page 10 Art Unit: 1767 Application/Control Number: 18/756,155 Page 11 Art Unit: 1767 Application/Control Number: 18/756,155 Page 12 Art Unit: 1767
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