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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 9/18/2025 has been entered.
Claim Rejections - 35 USC § 103
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.
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.
Claims 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Cantiani et al. (US 6,224,663 B1) (Cantiani) in view of Bostrom et al. (EP 390240 B1) (Bostrom), and in view of evidence by McMullen et al. (“Physiochemical Properties of Cellulose Ethers”, 2022) (McMullen).
Regarding claims 1 and 4, Cantiani teaches a composition comprising essentially amorphous nanofibrils and at least one additive including a natural polysaccharide (Cantiani, Abstract), wherein the term “essentially amorphous” is intended to refer to nanofibrils whose degree of crystallinity is less than or equal to 50% (Cantiani, Col. 3, lines 59-61) (i.e., a composition comprising fibrillated cellulose, wherein the fibrillated cellulose comprises amorphous and crystalline regions). Cantiani further teaches the natural polysaccharide includes nonionic cellulose derivatives (Cantiani, Col. 7, lines 20-23).
However, Cantiani does not explicitly teach the nonionic cellulose derivatives are nonionic cellulose ether.
With respect to the difference, Bostrom teaches water soluble nonionic cellulose ethers used in water-based paints (Bostrom, Title; p. 4, lines 14-15), wherein the cellulose ethers are modified with hydrophobic groups, and wherein the preferred base cellulose ethers include methyl hydroxyethyl cellulose, methyl hydroxypropyl cellulose, hydroxyethyl cellulose, and ethyl hydroxyethyl cellulose (Bostrom, p. 3, lines 57-58; p. 4, lines 1-2; p. 6, lines 26-28) (i.e., claim 4), which are polysaccharides as evidenced by McMullen (McMullen, Abstract; p. 1, Paragraphs 1 and 3).
As Bostrom expressly teaches, the modified cellulose ethers of the present invention are superior in many properties, especially thickening effect (Bostrom, p. 4, lines 12-13).
Bostrom is analogous art as it is drawn to cellulose compositions that modify viscosity (Bostrom, p. 4, lines 14-15).
In light of the motivation of using the hydrophobically modified cellulose ethers as disclosed by Bostrom, it therefore would have been obvious to one of ordinary skill in the art to modify the nonionic cellulose polysaccharides of Cantiani by using the hydrophobically modified cellulose ether of Cantiani in order to have a superior thickening effect, and thereby arrive at the claimed invention.
Given that Cantiani, in view of Bostrom, discloses the composition that overlaps the presently claimed composition, including nonionic polysaccharides such as nonionic cellulose derivatives, it therefore would be obvious to one of ordinary skill in the art, to use the nonionic cellulose derivative, which is both disclosed by Cantiani, in view of Bostrom, and encompassed within the scope of the present claims and thereby arrive at the claimed invention.
Regarding claim 2, Cantiani, in view of Bostrom, teaches the composition of claim 1, wherein the content of additive, i.e., nonionic cellulose ether, is less than or equal to 30% by weight relative to the weight of nanofibrils and of additive (Cantiani, Abstract) (i.e., 30% nonionic cellulose ether/ (30% nonionic cellulose ether + 70% nanofibrils) which means the ratio of nonionic cellulose ether to fibrillated cellulose is 30/70 or less), which overlaps with the range of the presently claimed.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 3, Cantiani, in view of Bostrom, teaches the composition of claim 1, wherein the composition is fibrillated cellulose and the additive (Cantiani, Abstract), i.e., nonionic cellulose ether, and therefore would be entirely comprised of fibrillated cellulose and nonionic cellulose ether (i.e., composition consists of more than 50% by weight of fibrillated cellulose and nonionic cellulose ether).
Regarding claim 5, Cantiani, in view of Bostrom, teaches the composition of claim 1, wherein as Cantiani, in view of Bostrom, teaches a composition that is substantially identical to the claimed composition, it would inherently result in thixotropic compositions when dispersed in an aqueous medium.
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). See MPEP 2112.01 (I).
Response to Argument
In response to applicants’ amendment to claim 1, the previous claim objection is withdrawn from the record.
In response to the amendment regarding “the fibrillated cellulose comprises amorphous and crystalline regions” and based on applicant’s remarks filed on page 5 regarding 35 U.S.C. 103 rejection over Bakeev, it is agreed that Bakeev would not meet the present claims. However, the amendment necessitates a new set of rejection as set forth above using Cantiani in view of Bostrom.
Conclusion
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/C.M.C./Examiner, Art Unit 1732
/CORIS FUNG/Supervisory Patent Examiner, Art Unit 1732