Detailed Office Action
A pre-appeal decision was made on 2/5/2026 deciding to REOPEN prosecution.
Claims 15-23 and 26-36 are pending with claims 23 and 36 withdrawn from consideration.
Specification
The disclosure is objected to because of the following informalities:
In multiple location the applicant refers to “aqueous alkaline” [see e.g par 0134, 0279, 0283 of PGPUB]. This should state “aqueous alkaline solution”
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 15-22 and 26-35 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In claim 15 the applicant claims that “the cold-alkali soluble viscosity controlled cellulosic material is dissolvable in an aqueous alkaline having a NaOH content of 7 to *% at a temperature of -5 to -7 degrees C”.
This limitation has several issues:
Should say “aqueous alkaline solution”
Claim does not state the basis of 7 to 8%. Is this volumetric, molar, or mass%. For the purpose of examination the Examiner interprets the basis as mass percent,
Claim does not state how much cold alkali soluble viscosity controlled cellulosic material is added to how much solution.
Claim limitation does not state the dissolution time.
Claim limitation does not state what percent of cellulose needs to be dissolved.
Claims 16-22 and 26-35 depend from claim 11 and are similarly rejected.
Claim 15 recites the limitation "viscosity controlled cellulosic material” in line 4. There is insufficient antecedent basis for this limitation in the claim. This should be “the cold alkali soluble viscosity controlled cellulosic material”.
Claims 16-22 and 26-35 all appear to make the same antecedent basis error.
Claim 18 claims a percentage of fibers based on “length”. It is not clear to the Examiner what basis the applicant is using. Is the percentage of fibers based on number or weight-weighted basis? For example, if the fibers under 0.6 mm only weigh 5% of the total mass of the fibers but comprise 15% of the number count of fibers does it meet the claim or not meet the claim?
Allowable Subject Matter
Claims 30 and 31 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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 15-18, 20-22, 26-30 and 33-35 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over U.S. 2014/0274680 NONNI et al., hereinafter NONNI as evidenced by MIYAMOTO abstract.
As for claim 15, NONNI discloses a cellulose with a viscosity of 252 ml/g and a R18 of 78.6 both of which fall within the claimed range [Table 1 Example 3].
NONNI teaches the same cellulose with the same viscosity, R18, same brightness, same hemicellulose content, same pulp type (kraft), and same lignin content. It follows that the cellulose will have substantially the same result when dissolved in cold alkali. A material’s properties cannot be separated from its composition. MIYAMOTO abstract provides evidence that cellulose dissolves in NAOH at an 8 wt.% concentration at 263-300 K (-10.15 to 26.85 Celsius). It explains that the reducing ends of cellulose chains allow for the dissolution and as NONNI discloses substantially the same viscosity (and therefore chain length) it would be expected to have substantially the same dissolution.
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.
In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
"When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not."
In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
In the alternative the differences would be prima facie obvious.
"There is nothing inconsistent in concurrent rejections for obviousness under 35 U.S.C. 103 and for anticipation under 35 U.S.C. 102."
In re Best, 562 F.2d 1252, 1255 n.4, 195 USPQ 430, 433 n.4 (CCPA 1977).
As for claim 16, NONNI discloses a b rightness of 88.7 ISO which falls within the claimed range [0150].
As for claim 17, NONNI discloses viscosity of 252 ml/g [Table 1 Example 3].
As for claim 18, NONNI produces a bleached kraft pulp that is highly crystalline such that it can be used for MCC [0025].
As for claim 20, NONNI discloses 81.2 cellulose which falls within the claimed range [Table 1 Example 3].
As for claim 21, NONNI discloses a hemicellulose content of 16.3 which falls within the claimed range [Table 1 Example 3].
As for claim 22, NONNI discloses a cellulose with a R18 of 78.6 which falls within the claimed range [Table 1 Example 3].
As for claim 26, the pulp of NONNI is a bleached kraft pulp [0145-0150].
As for claim 27, NONNI discloses a fiber length of at least 2 mm which falls within the claimed range [0097]
As for claim 28, NONNI discloses a hemicellulose content of 16.3 which falls within the claimed range [Table 1 Example 3].
As for claim 29, NONNI discloses a cellulose with a R18 of 78.6 which falls within the claimed range [Table 1 Example 3].
As for claim 33, NONNI discloses after oxidation treatment the pulp has a kappa number of 2.9 [0147]. A kappa number of 2.9 is equivalent to about 0.44% lignin which falls within the claimed range. The subsequent bleaching stages will remove more lignin.
As for claim 34, the pulp of NONNI has undergone kraft followed by oxygen delignification, then multiple bleaching and extraction steps with multiple washing steps. It is the Examiners position that substantially all the extractives have been removed. In a similar example NONNI discloses an extractives content of 0.018%. It is the Examiners position that this recitation falls within the four corners of the patent application sufficient for anticipation. In the alternative it is prima facie obvious to increase the purity of a final product such that it would have less extractives [MPEP 2144.04 (VII)].
As for claim 35, NONNI discloses that the pulp can be used to manufacture viscose which is a regenerated cellulose [0120].
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANTHONY J CALANDRA whose telephone number is (571)270-5124. The examiner can normally be reached Monday-Friday 7:45 AM -4:15 PM.
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, Abbas Rashid can be reached at (571)270-7457. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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ANTHONY J. CALANDRA
Primary Examiner
Art Unit 1748
/Anthony Calandra/Primary Examiner, Art Unit 1748
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