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 .
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 1-3 and 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 claim 1, 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). Further, Cantiani teaches the composition is dried and blended into a powder with a range of particle sizes that facilitates redispersion (Cantiani, Col. 11, lines 12-19), i.e., the composition is a powder that is free flowing. Additionally, Cantiani 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), 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 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 Bostrom 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 derivatives, which are 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 Arguments
Applicant primarily argues:
“Specifically, Cantiani fails to teach free flowing compositions wherein the nonionic cellulose ether is selected from ethyl hydroxyethyl cellulose, methyl ethyl hydroxyethyl cellulose, hydroxyethyl cellulose, methyl hydroxyethyl cellulose, methyl hydroxypropyl cellulose, the hydrophobically modified derivatives thereof, and mixtures thereof.
Instead, Cantiani proposes combining nanofibrils with carboxycellulose (CMC) to produce a product that has high redispersibility. However, as described in the present specification, "the materials developed by Cantiani (US 6,231,657, being the same family as the presently cited US 6,224,663 B1) still suffer from various shortcomings, such as the fact that they cannot be dried to a (sufficiently) high % DM, which will cause them to be susceptible to microbiological attack, and/or require the presence of further additives (at significant amounts) and/or cannot be re-dispersed easily and/or do not regain the rheological properties of the original PCC or MFC to a satisfactory extent." (See Specification, page 3).
The inventors of present application, seeked to improve these shortcomings by Cantiani by using nonionic cellulose ethers instead of CMC. As can be seen in the specification, the compositions as claimed easily (re)dispersible in water and aqueous systems to regain much of the cellulose component's original rheological performance.”
Remarks, p. 5
The examiner respectfully traverses as follows:
Firstly, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant primarily argues that Cantiani does not expressly teach the claimed nonionic cellulose ether. This argument merely agrees with the basis for the rejection under 35 U.S.C. 103(a), which admits that Cantiani does not disclose the entire claimed invention. Rather, Bostrom is relied upon to teach claimed elements missing from Cantiani. See item #7 above.
Secondly, Cantiani teaches at least one additive that may be carboxycellulose or a natural polysaccharide (Cantiani, Abstract). Therefore, carboxycellulose is not required by Cantiani, and a person of ordinary skill in the art could choose to use the natural polysaccharides as taught by Cantiani.
Further, while applicant argues that Cantiani suffers from various shortcomings, such as the fact that they cannot be dried to a (sufficiently) high % DM, which will cause them to be susceptible to microbiological attack, and/or require the presence of further additives (at significant amounts) and/or cannot be re-dispersed easily and/or do not regain the rheological properties of the original PCC or MFC to a satisfactory extent, it is noted that “the arguments of counsel cannot take the place of evidence in the record”, In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965). It is the examiner’s position that the arguments provided by the applicant regarding the shortcomings of Cantiani must be supported by a declaration or affidavit. As set forth in MPEP 716.01(c), “the reason for requiring evidence in a declaration or affidavit form is to obtain the assurances that any statements or representations made are correct, as provided by 35 U.S.C. 24 and 18 U.S.C. 1001”.
Additionally, as Cantiani, in view of Bostrom teaches the combination of fibrillated cellulose and nonionic cellulose ether, it is clear that the shortcomings of Cantiani alone would be overcome.
Applicant further argues:
“Bostrom fails to remedy these deficiencies. Bostrom does NOT teach unmodified nonionic cellulose ethers. Rather, Bostrom teaches that base cellulose ethers (like EHEC, MHEC, HEC) must be FURTHER MODIFIED with specific hydrophobic-hydrophilic groups. As Bostrom explains, "[p]referred base cellulose ethers to which the group I or II is added in accordance with the invention include methyl hydroxyethyl cellulose, methyl hydroxypropyl cellulose, methyl cellulose, hydroxyethyl cellulose, ethyl hydroxyethyl cellulose." (See Bostrom, p. 6, lines 26-28). These base cellulose ethers are then reacted with an epoxide to add the hydrophobic-hydrophilic groups (Formula I or II).
The claims of the present application recite unmodified nonionic cellulose ethers such as "ethyl hydroxyethyl cellulose, methyl ethyl hydroxyethyl cellulose, hydroxyethyl cellulose, methyl hydroxyethyl cellulose, methyl hydroxypropyl cellulose." These are the BASE cellulose ethers that Bostrom uses as starting materials for further modification, not the final modified products of Bostrom. Bostrom's modified cellulose ethers contain specific hydrophobic- hydrophilic groups (Formula I or II containing phenyl and alkeneoxy groups) that are not present in the unmodified nonionic cellulose ethers recited in the present claims.
Furthermore, Bostrom does not teach or suggest combining any cellulose ether (modified or unmodified) with fibrillated cellulose. Bostrom does not address redispersibility of dried compositions at all. Bostrom is focused entirely on improving high shear viscosity and leveling in water-based paints. As Bostrom explains, "the modified cellulose ethers of the invention are superior in many properties, especially in thickening effect." (see Bostrom, p. 4, lines 1-15). Bostrom's cellulose ethers are designed to "not only thicken the water phase but also, due to the presence of group I, associate with hydrophobic surfaces of the water-base paint." Bostrom, p 4, lines 12-13.”
Remarks, p. 6
The examiner respectfully traverses as follows:
While the applicant argues that Bostrom does not teach unmodified nonionic cellulose ethers, the claims recite,
“nonionic cellulose ethers selected from ethyl hydroxyethyl cellulose, methyl ethyl hydroxyethyl cellulose, hydroxyethyl cellulose, methyl hydroxyethyl cellulose, methyl hydroxypropyl cellulose, the hydrophobically modified derivatives thereof, and mixtures thereof” (emphasis added).
As Bostrom teaches the base cellulose ethers that are further modified with hydrophobic groups, Bostrom teaches hydrophobically modified derivatives of the cellulose ethers as recited in the claims. It is further noted, the present claims not only do not recite “unmodified nonionic cellulose ethers”, but the present claims do not exclude “ethyl hydroxyethyl cellulose, methyl ethyl hydroxyethyl cellulose, hydroxyethyl cellulose, methyl hydroxyethyl cellulose, methyl hydroxypropyl cellulose” being modified cellulose.
Further, it is noted that while Bostrom does not disclose all the features of the present claimed invention, Bostrom is used as a teaching reference, namely to teach the use of hydrophobically modified derivatives of nonionic cellulose ether to be the nonionic cellulose polysaccharides in Cantiani, in order to have a superior thickening effect (Bostrom, p. 4, lines 12-13), and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather this reference teaches a certain concept, and in combination with the primary reference, discloses the presently claimed invention.
Applicant further argues:
“Even assuming, in arguendo, that a skilled person would combine Cantiani with Bostrom, there would be no reasonable expectation of success in achieving the claimed invention. Bostrom's modified cellulose ethers are specifically designed for paint applications and contain particular hydrophobic-hydrophilic groups (Formula I or II) that are tailored for associating with hydrophobic surfaces in paints. A skilled person would have no expectation that combining Cantiani's nanofibrils with Bostrom's modified cellulose ethers would provide a dried composition that is easily redispersible in water, as these properties are neither taught nor suggested by Bostrom.”
Remarks, p. 6
The examiner respectfully traverses as follows:
Firstly, while the applicant argues that Bostrom uses the modified cellulose ethers in paint, Bostrom is only used as teaching reference in order to teach using hydrophobically modified cellulose ethers as the nonionic cellulose polysaccharides of Cantiani. It is noted that the "test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference... Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art", In re Keller, 642 F.2d 413,208 USPQ 871,881 (CCPA 1981) and that "combining the teachings of references does not involve an ability to combine their specific structures", In re Nievelt, 482 F.2d 965, 179 USP 224, 226 (CCPA).
Further, it is the examiner’s position that the combination of Cantiani and Bostrom would have a reasonable expectation of success as Cantiani teaches the final product is readily redispersable in water and that it uses nonionic polysaccharides (Cantiani, Abstract; Col. 7, lines 20-23), and Bostrom teaches the use of the specific hydrophobically modified nonionic polysaccharides that increase the thickening effect (Bostrom, p. 4, lines 12-13).
Applicant further argues:
“Claim 1 as amended recites "a free-flowing composition," which requires the
composition to be in the form of a dried powder that can be poured from a container in a continuous flow. Neither Cantiani nor Bostrom teaches or suggests a free-flowing composition. Cantiani's compositions cannot be dried to a sufficiently high dry matter content while maintaining redispersibility. Bostrom is directed to liquid paint formulations and does not address free-flowing powder compositions at all. Claim 2 further requires the weight ratio from 90/10 to 10/90, which is also not addressed by the Examiner.”
Remarks, p. 7
The examiner respectfully traverses as follows:
Firstly, it is the examiner’s position that the composition of Cantiani, in view of Bostrom, is a free-flowing composition as Cantiani teaches the composition to be a dried powder prior to redispersing in water (Cantiani, Col. 3, lines 38-42).
Secondly, it is noted that while Bostrom does not disclose all the features of the present claimed invention, Bostrom is used as a teaching reference, namely to teach the use of hydrophobically modified derivatives of nonionic cellulose ether to be the nonionic cellulose polysaccharides in Cantiani, in order to have a superior thickening effect (Bostrom, p. 4, lines 12-13), and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather this reference teaches a certain concept, and in combination with the primary reference, discloses the presently claimed invention.
Thirdly, applicant argues that Cantiani’s composition cannot be dried to a sufficiently high dry matter content while maintaining redispersibility in order to be free-flowing. However, it is noted that “the arguments of counsel cannot take the place of evidence in the record”, In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965). It is the examiner’s position that the arguments provided by the applicant regarding the ability of Cantiani’s composition to be free-flowing must be supported by a declaration or affidavit. As set forth in MPEP 716.01(c), “the reason for requiring evidence in a declaration or affidavit form is to obtain the assurances that any statements or representations made are correct, as provided by 35 U.S.C. 24 and 18 U.S.C. 1001”.
Finally, applicant states that the examiner did not address the weight ratio claimed in claim 2, however, the examiner stated the weight ratio of nonionic cellulose ether to fibrillated cellulose is 30/70 or less. See item #10 in the Office Action mailed 10/17/2023 or item #9 above.
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 Catriona Corallo whose telephone number is (571)272-8957. The examiner can normally be reached Monday-Friday, 8am-5pm.
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, Ching-Yiu Fung can be reached at (571)270-5713. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/C.M.C./Examiner, Art Unit 1732
/CORIS FUNG/Supervisory Patent Examiner, Art Unit 1732
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