DETAILED ACTIONNotice 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 § 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.
Claims 16-21, 29 and 31 are rejected under 35 U.S.C. 103 as being unpatentable over Ottenhall (“Water purification using polyelectrolyte modified cellulose fibers and filters to adsorb bacteria") in view of Zheng (“Cellulose-fiber-based thermal insulation materials with fungal resistance, improved water resistance and reaction-to-fire properties”).
With regard to Claim 16, the phrase “for recovery and/or bioremediation of oil spills and/or hydrophobic hydrocarbons” is construed as an intended use and is not accorded patentable weight. See MPEP 2111.02.
Ottenhall teaches an absorbent composition comprising cellulosic material and at least one layer of a charged polymer adsorbed to said cellulosic material, wherein the charged polymer is polyvinylamine (PVAm) (Page 18, Cellulose fibers, TEMPO-oxidized cellulose fibers (referred to as TEMPO cellulose), coffee filter paper and Whatman filter paper were modified with multilayer adsorption of polyelectrolytes using the LbL adsorption method).
Ottenhall teaches the composition comprising optionally microorganisms combined with said polymer and/or cellulosic material (Page 20, The reduction tests, where the cellulose materials was incubated with bacteria in suspension, was performed to evaluate how well the modified materials adsorb and remove bacteria from water).
Ottenhall is silent to the cellulosic material comprising semi-chemical pulp, mechanical pulp, thermomechanical pulp (TMP) or chemithermomechanical pulp (CTMP).
Zheng teaches cellulosic material comprising semi-chemical pulp, mechanical pulp, thermomechanical pulp (TMP) or chemithermomechanical pulp (CTMP) (Abstract, Cellulose-fiber-based insulation foams were prepared from formulations containing bleached chemithermomechanical softwood pulp). Zheng explains that mechanical pulps are cheaper than chemical pulps and are environmentally friendly (Page 6, Introduction; Mechanical pulps are cheaper (approximately 50%) than chemical pulps and are produced in a high yield range of 85–95%...They have been considered to be an economic raw material for a value-added insulation product, because of their renewability, and environmental friendliness, which can utilize the over capacity of the pulp industry).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention for Ottenhall to teach cellulosic material comprising semi-chemical pulp, mechanical pulp, thermomechanical pulp (TMP) or chemithermomechanical pulp (CTMP), as taught in Zheng, since mechanical pulps are cheaper than chemical pulps and are environmentally friendly.
Furthermore, while Ottenhall does not explicitly disclose the composition exhibiting a higher affinity for oil or hydrophobic hydrocarbons than for water and configured to retain absorbed hydrocarbons, the composition is rendered obvious in view of Zheng, and thus would have the same properties. See MPEP 2112.01.
With regard to Claim 17, Ottenhall teaches the composition wherein the polyvinylamine (PVAm) includes unmodified PVAm or PVAm modified with straight or branched and optionally substituted alkyl chains (Page 15, Studies of LbL modification on cellulose have previously shown that it is possible to create a bacteria adsorbing cellulose fiber using multilayer adsorption of cationic polyvinalamine (PVAm) and anionic polyacrylic acid (PAA)).
With regard to Claims 18-20, Ottenhall teaches the composition comprising a first layer of polyvinylamine, a single layer of polyvinylamine, and multiple layers of consecutive cationic and anionic polyelectrolytes (Page 18, Three types of multilayer adsorption modifications were evaluated; 1 layer of PVAm (1 L), 3 layer modification PVAm-PAA-PVAm (3 L) and 5 layer modification PVAm-PAA-PVAm-PAA-PVAm (5 L)).
With regard to Claim 21, Ottenhall teaches the composition comprising microorganisms selected from bacteria, fungi and archaea (Page 20, The reduction tests, where the cellulose materials was incubated with bacteria in suspension, was performed to evaluate how well the modified materials adsorb and remove bacteria from water).
With regard to Claims 29 and 31, Ottenhall teaches the composition wherein the polyvinylamine (PVAm) is unmodified polyvinylamine (PVAm), and wherein the polyvinylamine (PVAm) is combined with at least one of polyacrylamide, polyacrylic acid (PAA), polymethacrylic acid, chitosan, cationic gelatin, poly DADMAC, polyallylamine, polyethylenimine, anionic nanocellulose, sodium lignin sulfonate, sodium polyacrylate, anionic polyacrylamide, anionic glyoxalated polyacrylamide, poly-(sodium styrene sulphonate) and poly(vinylphosphonic acid) (Page 18, Three types of multilayer adsorption modifications were evaluated; 1 layer of PVAm (1 L), 3 layer modification PVAm-PAA-PVAm (3 L) and 5 layer modification PVAm-PAA-PVAm-PAA-PVAm (5 L)).
Claims 16-21, 29 and 31 are rejected under 35 U.S.C. 103 as being unpatentable over Ottenhall (“Water purification using polyelectrolyte modified cellulose fibers and filters to adsorb bacteria") in view of Ban et al. (US 2013/0139980 A1).
With regard to Claim 16, the phrase “for recovery and/or bioremediation of oil spills and/or hydrophobic hydrocarbons” is construed as an intended use and is not accorded patentable weight. See MPEP 2111.02.
Ottenhall teaches an absorbent composition comprising cellulosic material and at least one layer of a charged polymer adsorbed to said cellulosic material, wherein the charged polymer is polyvinylamine (PVAm) (Page 18, Cellulose fibers, TEMPO-oxidized cellulose fibers (referred to as TEMPO cellulose), coffee filter paper and Whatman filter paper were modified with multilayer adsorption of polyelectrolytes using the LbL adsorption method).
Ottenhall teaches the composition comprising optionally microorganisms combined with said polymer and/or cellulosic material (Page 20, The reduction tests, where the cellulose materials was incubated with bacteria in suspension, was performed to evaluate how well the modified materials adsorb and remove bacteria from water).
Ottenhall is silent to the cellulosic material comprising semi-chemical pulp, mechanical pulp, thermomechanical pulp (TMP) or chemithermomechanical pulp (CTMP).
Ban teaches cellulosic material comprising semi-chemical pulp, mechanical pulp, thermomechanical pulp (TMP) or chemithermomechanical pulp (CTMP) (Paragraph 0029, The treatable pulp can include, for example, Kraft pulp, dissolving pulp, fluff pulp, semichemical pulps (e.g., bleached chemothermomechanical pulp or BCTMP), sulfite pulp, soda pulp, organosols pulp, polysulfide pulp, or other pulps, and any combinations thereof).
It would have been obvious to one of ordinary skill in the art to substitute mechanical pulp for chemical pulp, because these compounds are disclosed in the reference and in the instant specification (Paragraph 0015) as being suitable for use as a cellulosic material. One of ordinary skill in the art could have substituted one compound for the other with a predictable result of producing an absorbent composition for recovery and/or bioremediation of oil spills and/or hydrophobic hydrocarbons. See MPEP 2143.I.B.
Furthermore, while Ottenhall does not explicitly disclose the composition exhibiting a higher affinity for oil or hydrophobic hydrocarbons than for water and configured to retain absorbed hydrocarbons, the composition is rendered obvious in view of Ban, and thus would have the same properties. See MPEP 2112.01.
With regard to Claim 17, Ottenhall teaches the composition wherein the polyvinylamine (PVAm) includes unmodified PVAm or PVAm modified with straight or branched and optionally substituted alkyl chains (Page 15, Studies of LbL modification on cellulose have previously shown that it is possible to create a bacteria adsorbing cellulose fiber using multilayer adsorption of cationic polyvinalamine (PVAm) and anionic polyacrylic acid (PAA)).
With regard to Claims 18-20, Ottenhall teaches the composition comprising a first layer of polyvinylamine, a single layer of polyvinylamine, and multiple layers of consecutive cationic and anionic polyelectrolytes (Page 18, Three types of multilayer adsorption modifications were evaluated; 1 layer of PVAm (1 L), 3 layer modification PVAm-PAA-PVAm (3 L) and 5 layer modification PVAm-PAA-PVAm-PAA-PVAm (5 L)).
With regard to Claim 21, Ottenhall teaches the composition comprising microorganisms selected from bacteria, fungi and archaea (Page 20, The reduction tests, where the cellulose materials was incubated with bacteria in suspension, was performed to evaluate how well the modified materials adsorb and remove bacteria from water).
With regard to Claims 29 and 31, Ottenhall teaches the composition wherein the polyvinylamine (PVAm) is unmodified polyvinylamine (PVAm), and wherein the polyvinylamine (PVAm) is combined with at least one of polyacrylamide, polyacrylic acid (PAA), polymethacrylic acid, chitosan, cationic gelatin, poly DADMAC, polyallylamine, polyethylenimine, anionic nanocellulose, sodium lignin sulfonate, sodium polyacrylate, anionic polyacrylamide, anionic glyoxalated polyacrylamide, poly-(sodium styrene sulphonate) and poly(vinylphosphonic acid) (Page 18, Three types of multilayer adsorption modifications were evaluated; 1 layer of PVAm (1 L), 3 layer modification PVAm-PAA-PVAm (3 L) and 5 layer modification PVAm-PAA-PVAm-PAA-PVAm (5 L)).
Claims 16-21, 29-31, and 35 are rejected under 35 U.S.C. 103 as being unpatentable over Ottenhall (“Water purification using polyelectrolyte modified cellulose fibers and filters to adsorb bacteria") in view of Tan et al. (WO 2018/051275 A2).
With regard to Claim 16, the phrase “for recovery and/or bioremediation of oil spills and/or hydrophobic hydrocarbons” is construed as an intended use and is not accorded patentable weight. See MPEP 2111.02.
Ottenhall teaches an absorbent composition comprising cellulosic material and at least one layer of a charged polymer adsorbed to said cellulosic material, wherein the charged polymer is polyvinylamine (PVAm) (Page 18, Cellulose fibers, TEMPO-oxidized cellulose fibers (referred to as TEMPO cellulose), coffee filter paper and Whatman filter paper were modified with multilayer adsorption of polyelectrolytes using the LbL adsorption method).
Ottenhall teaches the composition comprising optionally microorganisms combined with said polymer and/or cellulosic material (Page 20, The reduction tests, where the cellulose materials was incubated with bacteria in suspension, was performed to evaluate how well the modified materials adsorb and remove bacteria from water).
Ottenhall is silent to the cellulosic material comprising semi-chemical pulp, mechanical pulp, thermomechanical pulp (TMP) or chemithermomechanical pulp (CTMP).
Tan teaches cellulosic material comprising semi-chemical pulp, mechanical pulp, thermomechanical pulp (TMP) or chemithermomechanical pulp (CTMP) (Page 5, Paragraph 0019; The pulp of the method comprises a kraft pulp, a sulfite pulp, a mechanical pulp, a semichemical pulp, a semi-mechanical pulp, a chemi-mechanical pulp, a fluff pulp, a tissue pulp, a dissolving pulp, a recycled pulp, a biorefinery pulp, or a deinked pulp).
It would have been obvious to one of ordinary skill in the art to substitute mechanical pulp for chemical pulp, because these compounds are disclosed in the reference and in the instant specification (Paragraph 0015) as being suitable for use as a cellulosic material. One of ordinary skill in the art could have substituted one compound for the other with a predictable result of producing an absorbent composition for recovery and/or bioremediation of oil spills and/or hydrophobic hydrocarbons. See MPEP 2143.I.B.
Furthermore, while Ottenhall does not explicitly disclose the composition exhibiting a higher affinity for oil or hydrophobic hydrocarbons than for water and configured to retain absorbed hydrocarbons, the composition is rendered obvious in view of Tan, and thus would have the same properties. See MPEP 2112.01.
With regard to Claim 17, Ottenhall teaches the composition wherein the polyvinylamine (PVAm) includes unmodified PVAm or PVAm modified with straight or branched and optionally substituted alkyl chains (Page 15, Studies of LbL modification on cellulose have previously shown that it is possible to create a bacteria adsorbing cellulose fiber using multilayer adsorption of cationic polyvinalamine (PVAm) and anionic polyacrylic acid (PAA)).
With regard to Claims 18-20, Ottenhall teaches the composition comprising a first layer of polyvinylamine, a single layer of polyvinylamine, and multiple layers of consecutive cationic and anionic polyelectrolytes (Page 18, Three types of multilayer adsorption modifications were evaluated; 1 layer of PVAm (1 L), 3 layer modification PVAm-PAA-PVAm (3 L) and 5 layer modification PVAm-PAA-PVAm-PAA-PVAm (5 L)).
With regard to Claim 21, Ottenhall teaches the composition comprising microorganisms selected from bacteria, fungi and archaea (Page 20, The reduction tests, where the cellulose materials was incubated with bacteria in suspension, was performed to evaluate how well the modified materials adsorb and remove bacteria from water).
With regard to Claims 29 and 31, Ottenhall teaches the composition wherein the polyvinylamine (PVAm) is unmodified polyvinylamine (PVAm), and wherein the polyvinylamine (PVAm) is combined with at least one of polyacrylamide, polyacrylic acid (PAA), polymethacrylic acid, chitosan, cationic gelatin, poly DADMAC, polyallylamine, polyethylenimine, anionic nanocellulose, sodium lignin sulfonate, sodium polyacrylate, anionic polyacrylamide, anionic glyoxalated polyacrylamide, poly-(sodium styrene sulphonate) and poly(vinylphosphonic acid) (Page 18, Three types of multilayer adsorption modifications were evaluated; 1 layer of PVAm (1 L), 3 layer modification PVAm-PAA-PVAm (3 L) and 5 layer modification PVAm-PAA-PVAm-PAA-PVAm (5 L)).
With regard to Claim 30, Ottenhall is silent to the composition comprising microorganisms selected from fungi or archaea.
Tan teaches the composition comprising microorganisms selected from fungi or archaea (Pages 28-29, In some embodiments, the hyperthermostable cellulase and/or hemicellulases are from bacteria, fungi, or Archaea, or any combination (mixture) thereof). Tan explains that cellulase enzyme treatment of pulps improves properties such as drainage and tensile strength (Pages 1-2, Paragraph 0005; It is generally understood by the skilled artisan in the art that cellulase enzymes, sometimes in combination with proper hemicellulase enzymes related to the furnish to be treated, work to hydrolyze the hydrated fiber surface ("gel") layers, such as caused by refining or mechanical actions, thus improving drainage and freeness…cellulase enzymes, by proper formulations or dosing, may work on the fiber surface, causing external fiber surface fibrillations, therefore improving bonding or tensile strength).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention for Ottenhall to teach the composition comprising microorganisms selected from fungi or archaea, as taught by Tan, since cellulase enzyme treatment of pulps improves properties such as drainage and tensile strength.
With regard to Claim 35, the phrase “for recovery and/or bioremediation of oil spills and/or hydrophobic hydrocarbons” is construed as an intended use and is not accorded patentable weight. See MPEP 2111.02.
Ottenhall teaches an absorbent composition comprising cellulosic material and at least one layer of a charged polymer adsorbed to said cellulosic material, wherein the charged polymer is polyvinylamine (PVAm) (Page 18, Cellulose fibers, TEMPO-oxidized cellulose fibers (referred to as TEMPO cellulose), coffee filter paper and Whatman filter paper were modified with multilayer adsorption of polyelectrolytes using the LbL adsorption method).
Ottenhall is silent to the cellulosic material comprising semi-chemical pulp, mechanical pulp, thermomechanical pulp (TMP) or chemithermomechanical pulp (CTMP).
Tan teaches cellulosic material comprising semi-chemical pulp, mechanical pulp, thermomechanical pulp (TMP) or chemithermomechanical pulp (CTMP) (Page 5, Paragraph 0019; The pulp of the method comprises a kraft pulp, a sulfite pulp, a mechanical pulp, a semichemical pulp, a semi-mechanical pulp, a chemi-mechanical pulp, a fluff pulp, a tissue pulp, a dissolving pulp, a recycled pulp, a biorefinery pulp, or a deinked pulp).
It would have been obvious to one of ordinary skill in the art to substitute mechanical pulp for chemical pulp, because these compounds are disclosed in the reference and in the instant specification (Paragraph 0015) as being suitable for use as a cellulosic material. One of ordinary skill in the art could have substituted one compound for the other with a predictable result of producing an absorbent composition for recovery and/or bioremediation of oil spills and/or hydrophobic hydrocarbons. See MPEP 2143.I.B.
However, Ottenhall is further silent to the composition comprising archaea combined with said polymer and/or cellulosic material.
Tan teaches the composition comprising archaea combined with said polymer and/or cellulosic material (Pages 28-29, In some embodiments, the hyperthermostable cellulase and/or hemicellulases are from bacteria, fungi, or Archaea, or any combination (mixture) thereof). Tan explains that cellulase enzyme treatment of pulps improves properties such as drainage and tensile strength (Pages 1-2, Paragraph 0005; It is generally understood by the skilled artisan in the art that cellulase enzymes, sometimes in combination with proper hemicellulase enzymes related to the furnish to be treated, work to hydrolyze the hydrated fiber surface ("gel") layers, such as caused by refining or mechanical actions, thus improving drainage and freeness…cellulase enzymes, by proper formulations or dosing, may work on the fiber surface, causing external fiber surface fibrillations, therefore improving bonding or tensile strength).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention for Ottenhall to teach the composition comprising microorganisms selected from fungi or archaea, as taught by Tan, since cellulase enzyme treatment of pulps improves properties such as drainage and tensile strength.
Furthermore, while Ottenhall does not explicitly disclose the composition exhibiting a higher affinity for oil or hydrophobic hydrocarbons than for water and configured to retain absorbed hydrocarbons, the composition is rendered obvious in view of Tan, and thus would have the same properties. See MPEP 2112.01.
Response to Arguments
Applicant's arguments filed May 20, 2026 have been fully considered but they are not persuasive. Furthermore, new grounds of rejection are made of claim 35 under 35 U.S.C. 103 over Ottenhall (“Water purification using polyelectrolyte modified cellulose fibers and filters to adsorb bacteria") in view of Tan et al. (WO 2018/051275 A2).
On page 7 of Applicant’s arguments, regarding the rejection under 35 U.S.C. 103 over Ottenhall in view of Zheng, Applicant argues that “One of ordinary skill in the art would not simply substitute the chemical pulp of Ottenhall for the mechanical pulp of Zheng due to the mechanical pulp being cheaper than the chemical pulp” and that “one of ordinary skill in the art would be concerned about the different properties of the different pulps and not the different prices”. First, the Examiner notes that arguments presented by the applicant cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965) and In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984), see MPEP 716.01(c).II. Second, the Examiner notes that the obviousness rationale used also cited the environmental impact of mechanical pulps, which can be construed as a “property” of the pulp (Page 6, Introduction; Mechanical pulps… have been considered to be an economic raw material for a value-added insulation product, because of their renewability, and environmental friendliness, which can utilize the over capacity of the pulp industry).
Applicant further argues that “Mechanical pulp for filters does not provide the required purity because lignin and extractives remain in the pulp. Thus, the chemical pulp of Ottenhall cannot be substituted for mechanical pulp without rendering Ottenhall inoperable for its intended purpose. If a proposed modification would render the cited reference being modified unsatisfactory for its intended purpose, then there is no suggestion or motivation to make the proposed modification. In re Gordon, 733 F.2d 900, 221 USPQ 1125 (Fed. Cir. 1984)”. The Examiner respectfully disagrees with these assertions, and notes that Zheng uses bleached chemithermomechanical pulp (Abstract, Cellulose-fiber-based insulation foams were prepared from formulations containing bleached chemithermomechanical softwood pulp; see Claim 16 rejection over Zheng), which is a type of mechanical pulp. In Applicant’s arguments, Applicant argues that “especially in bleached chemical pulps, the lignin has been removed” and that “bleached chemical pulp is the purest pulp of all the different paper pulps and therefore the pulp used for filters because filters require high purity”. Therefore, the Examiner contends that the bleached chemithermomechanical pulp of Zheng would not render Ottenhall inoperable for its intended purpose.
On pages 8-9 of Applicant’s arguments, regarding the rejections under 35 U.S.C. 103 over Ottenhall in view of Zheng, Ban, and Tan, Applicant argues that the four references “fail to disclose or suggest the importance of high affinity of the absorbent for oil or hydrophobic hydrocarbons” and thus Ottenhall and Zheng, Ban, or Tan “are therefore not combinable”. The Applicant further argues that “One of ordinary skill in the art would not consult Ottenhall (cleaning of water by filtering water comprising impurities) and Zheng (cellulose-fiber-based thermal insulation foam materials, i.e., belonging to the group of materials for building and comprising fire retardants) since their disclosures are of no interest. These two cited references are therefore not combinable”. Applicant uses similar arguments for Ban and Tan: “The same reasoning also applies to Ban et al. '980… The same reasoning also applies to Tan et al. '275”. The Examiner respectfully disagrees.
Regarding the argument that Ottenhall, Zheng, Ban, and Tan “fail to disclose or suggest the importance of high affinity of the absorbent for oil or hydrophobic hydrocarbons”, the Examiner notes that the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). In In re Crish, 393 F.3d 1253, 1258, 73 USPQ2d 1364, 1368 (Fed. Cir. 2004), see MPEP 2112. Further, the Examiner notes that prima facie obviousness is not rebutted by mere recognition of latent properties in the prior art. In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979). "The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious." Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). See MPEP 2145.II. Furthermore, arguments presented by the applicant cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965) and In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984), see MPEP 716.01(c).II. Thus, the Examiner maintains that Ottenhall in view of Zheng, Ban, and Tan still renders obvious the composition as claimed (see Claim 16 rejections).
Regarding Ottenhall in view of Zheng, the Examiner asserts that the references of Ottenhall and Zheng still teach pulp. Ottenhall teaches cellulose fibers comprising chemical pulp, and Zheng teaches bleached chemithermomechanical softwood pulp (see Claim 16 rejection). Even if these components are used for a different purpose than what is intended by Applicant (MPEP 2111.02), the Examiner holds that the limitations as claimed are still met by Ottenhall in view of Zheng. Furthermore, arguments presented by the applicant cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965) and In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984), see MPEP 716.01(c).II.
Regarding Ottenhall in view of Ban, the Examiner asserts that the references of Ottenhall and Ban still teach pulp. Ottenhall teaches cellulose fibers comprising chemical pulp, and Ban teaches several types of pulp, including bleached chemithermomechanical pulp (see Claim 16 rejection). Even if these components are used for a different purpose than what is intended by Applicant (MPEP 2111.02), the Examiner holds that the limitations as claimed are still met by Ottenhall in view of Ban. Furthermore, arguments presented by the applicant cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965) and In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984), see MPEP 716.01(c).II.
Regarding Ottenhall in view of Tan, the Examiner asserts that the references of Ottenhall and Tan still teach pulp. Ottenhall teaches cellulose fibers comprising chemical pulp, and Tan teaches several types of pulp, including mechanical, semichemical, and chemi-mechanical pulps (see Claim 16 rejection). Even if these components are used for a different purpose than what is intended by Applicant (MPEP 2111.02), the Examiner holds that the limitations as claimed are still met by Ottenhall in view of Tan. Additionally, arguments presented by the applicant cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965) and In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984), see MPEP 716.01(c).II.
On page 9 of Applicant’s arguments, regarding the rejections under 35 U.S.C. 103 over Ottenhall in view of Zheng, Ban, and Tan, Applicant argues that the phrase “for recovery and/or bioremediation of oil spills and/or hydrophobic hydrocarbons” should be given patentable weight because “the Federal Circuit stated that ‘clear reliance on the preamble during prosecution to distinguish the claimed invention from the prior art transforms the preamble into a claim limitation because such reliance indicates use of the preamble to define, in part, the claimed invention’”.
The Examiner maintains that the phrase “for recovery and/or bioremediation of oil spills and/or hydrophobic hydrocarbons” is still construed an intended use and is not accorded patentable weight. As set forth in 2111.02.II, “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). Thus, the Examiner asserts that the intended use recited in the preamble of Claim 16 does not impart specific structure to the claimed product. The disclosure as filed does not link the intended use to any specific structure that is not taught by the prior art.
On page 10 of Applicant’s arguments, Applicant argues that “the properties of a composition are more difficult to render obvious when multiple references are being used to disclose multiple features. In Par Pharmaceutical, Inc. v. TWi Pharmaceuticals, Inc., 773 F.3d 1186, 1192 (Fed. Cir. 2014), the Federal Circuit stated, ‘A party must ... meet a high standard in order to rely on inherency to establish the existence of a claim limitation in the prior art in an obviousness analysis – the limitation at issue necessarily must be present, or the natural result of the combination of elements explicitly disclosed by the prior art.’ The rationale in the outstanding Office Action does not meet this inherency standard of a ‘natural result.’” The Examiner respectfully disagrees.
The Examiner notes that prima facie obviousness is not rebutted by mere recognition of latent properties in the prior art. In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979). "The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious." Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). See MPEP 2145.II. Further, the Examiner notes that the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). In In re Crish, 393 F.3d 1253, 1258, 73 USPQ2d 1364, 1368 (Fed. Cir. 2004), see MPEP 2112. Furthermore, the Examiner notes that arguments presented by the applicant cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965) and In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984), see MPEP 716.01(c).II.
The Examiner further contends that it is also unclear how the structure rendered obvious would have different properties from the structure as claimed. Once a reference teaching a product appearing to be substantially identical is made the basis of a rejection, and the examiner presents evidence or reasoning tending to show inherency, the burden shifts to the applicant to show an unobvious difference. "[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C. 102, on ‘prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products." In re Best, 562 F.2d 1252, 1255, 195 USPQ 4380, 483-34 (CCPA 1977)), see MPEP 2112. Applicant has not clearly shown an unobvious difference between the instant invention and the prior art’s product. Thus, the Examiner maintains that Ottenhall in view of Zheng, Ban, and Tan still discloses the composition as claimed (see Claim 16 rejections).
On page 10 of Applicant’s arguments, regarding new claim 35, Applicant argues that “the invention as recited in claim 35 achieves unexpectedly superior results, whereby such results rebut any asserted prima facie case of obviousness” and that “Example 3 of the present specification proves that the combination of archaea and absorbent achieves unexpectedly superior results”.
As set forth in MPEP 716.02(b), the burden is on Applicant to establish that the results are unexpected and significant. “The evidence relied upon should establish ‘that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance.’” Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992). Further, "[A]ppellants have the burden of explaining the data in any declaration they proffer as evidence of non-obviousness." Ex parte Ishizaka, 24 USPQ2d 1621, 1624 (Bd. Pat. App. & Inter. 1992). The Examiner contends that Applicant has not proven “unexpectedly superior results” commensurate in scope with the claim.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ABDUL-RAHMAN YUSUF WALEED SMARI whose telephone number is (571)270-7302. The examiner can normally be reached M-Th 7:30-5, F 7:30-4.
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, Anthony Zimmer can be reached at 571-270-3591. 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.
/ABDUL-RAHMAN YUSUF WALEED SMARI/Examiner, Art Unit 1736
/ANTHONY J ZIMMER/Supervisory Patent Examiner, Art Unit 1736
Prosecution Insights