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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 8/15/2025 has been entered.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1, 3 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sakai et al. (JP 2018-154699A) in view of Tanaka et al. (WO 2018/110525).
US 2021/0222367 is being used as an English equivalent to WO 2018/110525 since it is a national stage entry of the international application.
Regarding claim 1: Sakai et al. teach adding 1.0 to 10.0 mass% of glycerin to improve cellulose fiber dispersibility [0042-0045].
Sakai et al. fail to teach the claimed alcohol compound.
However, Tanaka et al. teach that pentaerythritol can be used interchangeably with glycerin as an alcohol to disperse cellulose fibers [0009, 0018, 0086].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use pentaerythritol as taught by Tanaka et al. in place of the glycerin in Sakai et al. to provide flexibility and dispersibility of the composition. It is a simple substitution of one known element for another to obtain predictable results.
Regarding claim 3: Sakai et al. teach adding other additives [0060]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add an antioxidant [0060] to the composition of Sakai et al.
Regarding claim 9: Since the composition is the same as claimed it will inhibit coloring of a molded article at the claimed temperature. The courts have stated that 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. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sakai et al. (JP 2018-154699A) and Tanaka et al. (WO 2018/110525) as applied to claim 1 and 3 above further in view of Shiramizu et al. (2015/0031804).
US 2021/0222367 is being used as an English equivalent to WO 2018/110525 since it is a national stage entry of the international application.
Sakai et al. fail to specify the type of antioxidant.
However, Shiramizu et al. teach using a phosphorus based or a phenol based antioxidant in a cellulose nanofiber composition [0082].
Since Sakai et al. is silent on the antioxidant type, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a phosphorus based or a phenol based antioxidant as taught by Shiramizu et al. as the antioxidant in Sakai et al.
Response to Arguments
Applicant's arguments filed 8/15/2025 have been fully considered but they are not persuasive.
The Applicant has made the argument that glycerin is an essential component in Sakai et al. This is not persuasive because glycerin is an optional additive in Sakai et al. Inventive examples 3, 8, and 9 do not contain glycerin [Table 1]. Sakai et al. teach that one or more additives selected from glycerin, sorbitol, and polyvinyl acetamide-based compound for dispersibility [0008]. Tanaka et al. teach that pentaerythritol can be used interchangeably with glycerin as an alcohol to disperse cellulose fibers [0009, 0018, 0086]. Furthermore, the pentaerythritol can be used in addition to the sorbitol or polyvinyl acetamide-based compound since Sakai et al. teach using a combination of compounds.
The compounds under consideration have the following structures:
Glycerin
PNG
media_image1.png
81
220
media_image1.png
Greyscale
,
Sorbitol
PNG
media_image2.png
105
250
media_image2.png
Greyscale
, and
Pentaerythritol
PNG
media_image3.png
78
220
media_image3.png
Greyscale
.
The structures above are very similar, and very related alcohols. Given the great similarity and the fact that Tanaka et al. teach that pentaerythritol can be used interchangeably with glycerin as an alcohol to disperse cellulose fibers, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to sue pentaerythritol in place of glycerin in the composition of Sakai et al. to provide flexibility and dispersibility of the composition. It is a simple substitution of one known element for another to obtain predictable results.
Conclusion
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN USELDING whose telephone number is (571)270-5463. The examiner can normally be reached on M-F 8am to 6:30pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached on 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN E USELDING/ Primary Examiner, Art Unit 1763