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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on January 28, 2026 has been entered.
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 16-22, 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 Claim 22, while Ottenhall does not explicitly disclose the composition having a higher affinity for oil than water, the composition is rendered obvious in view of Zheng, and thus would have the same properties. See MPEP 2112.01.
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 16-22, 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 Claim 22, while Ottenhall does not explicitly disclose the composition having a higher affinity for oil than water, the composition is rendered obvious in view of Ban, and thus would have the same properties. See MPEP 2112.01.
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 16-22 and 29-31 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 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 Claim 22, while Ottenhall does not explicitly disclose the composition having a higher affinity for oil than water, the composition is rendered obvious in view of Tan, and thus would have the same properties. See MPEP 2112.01.
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.
Response to Arguments
Applicant's arguments filed January 28, 2026 have been fully considered but they are not persuasive.
On page 8 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 amended claim recites that the composition itself possesses selective oil affinity and hydrocarbon retention behavior. These properties are intrinsic performance characteristics, not aspirational statements of use, and therefore must be considered in both claim construction and the obviousness analysis”. 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. Thus, the Examiner maintains that Ottenhall in view of Zheng, Ban, and Tan still discloses the composition as claimed (see Claim 16 rejections).
In response to Applicant’s argument on page 8 that “the Examiner's reliance on MPEP 2111.02 is misplaced in view of amended claim 16”, the Examiner contends that despite the new limitation introduced in Claim 16, the phrase “for recovery and/or bioremediation of oil spills and/or hydrophobic hydrocarbons” is still an intended use. 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.
In response to Applicant’s argument on page 9 that “Under controlling precedent, such functional limitations must be given full patentable weight in claim construction and in the obviousness analysis”, 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. Thus, the Examiner maintains that Ottenhall in view of Zheng, Ban, and Tan still discloses the composition as claimed (see Claim 16 rejections).
In response to Applicant’s argument on page 10 that “an unrecognized property that may be inherent to a single reference cannot be properly applied to a combination of references”, the Examiner respectfully disagrees with this assertion and contends that a composition can be rendered obvious in view of a combination of references. Furthermore, 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.
In response to Applicant’s argument on page 10 that “obviousness cannot be predicated on what is not known at the time an invention is made, even if the inherency of a certain feature is later established”, 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.
In response to Applicant’s argument on page 10 that “The outstanding Office Action also does not cite experimental data, comparative testing, or technical reasoning demonstrating that such properties are unavoidable consequences of the cited structures”, the Examiner contends that the rejection of Claim 16 provides technical reasoning in that the composition is rendered obvious over the combination of references.
Furthermore, 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.
In response to Applicant’s argument on page 10 that “structural similarity alone does not establish inherency of functional behavior”, it is 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.
Conclusion
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.
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/ABDUL-RAHMAN YUSUF WALEED SMARI/Examiner, Art Unit 1736
/ANTHONY J ZIMMER/Supervisory Patent Examiner, Art Unit 1736