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 .
The amendment filed 26 June 2025 has been received, entered and considered. The following information has been made of record in the instant amendment:
1. Claims 3-4, 10, and 14 have been canceled.
2. New Claims 25-26 have been added.
3. Claims 1, 5-6, 15-16, 18-19 and 21 have been amended.
4. Remarks drawn to claim objections and rejections under 35 USC 112, 102 and 103.
The following objection(s)/rejection(s) has/have been overcome:
5. The objection to claim 19 has been overcome by amendment.
6. The rejection of Claim 16 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, has been withdrawn in view of the amendment.
7. The rejection of Claim(s) 1-3, 5-6, 9, 11, 13 and 15 under 35 U.S.C. 102(a)(2) as being anticipated by Kroner et al (WO 2014/202354 A1; cited in IDS filed 05/23/2022), and the rejection of Claim(s) 1-2, 5-6, 9, 11, 13 and 15 under 35 U.S.C. 102(a)(2) as being anticipated by Heiskanen et al (WO 2011/051882 A1; cited in IDS filed 05/23/2022) have been withdrawn in view of the amendment. Both references do not expressly teach the liquid mixture having a pH of 7.2 or more.
8. The rejection of Claim(s) 2-3, 5-9, 11-13 and 16-24 under 35 U.S.C. 103 as being unpatentable over Kroner et al (WO 2014/202354 A1; cited in IDS filed 05/23/2022) in view of Keunecke et al (US 5,906,926) has been withdrawn and is replaced by the obviousness rejection set forth below. The rejection of claim 3 has been rendered moot by cancelation.
9. The rejection of Claim 3 on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-3, 6-8, and 15-17 of U.S. Patent No. 12,060,441 B2 (‘441) in view of Keunecke et al (US 5,906,926) has been rendered moot by cancelation.
Claims 1-2, 5-9, 11-13 and 15-26 are pending in the case.
The following rejections are necessitated by Applicant's amendment filed 26 June 2025 wherein the limitations in pending claims 1, 5-6, 15-16, 18-19 and 21 have been amended. Limitations regarding cotton and pH have been added.
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 1-2, 5-6, 15, 19, 22-24 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.
Amended claim 1 recites ‘cotton comprising cellulose’. At para 0027 in the specification, cotton is taught as an example of cellulose. It is not clear what applicant intends by cotton comprising cellulose. Claim 1 and dependents 2, 5-6, 15 and 22-24 are examined as drawn to cotton or cellulose.
Amended claim 19 recites that the mechanical device is cooled while mechanically working the mixture to maintain the temperature at or below 1000C. If the temperature is below 1000C it means that the mixture may be maintained at any temperature below 100oC, which can be 00C or at ambient temperatures. It is not clear why the mechanical device needs to be cooled if it is to be maintained at 00C or even at ambient temperatures. The claim intent is still not clear.
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.
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.
Claim(s) 1-2, 5-9, 11-13 and 15-26 are rejected under 35 U.S.C. 103 as being unpatentable over Kroner et al (WO 2014/202354 A1; cited in IDS filed 05/23/2022; of record) in view of Heiskanen et al (WO 2011/051882 A1; cited in IDS filed 05/23/2022; of record and necessitated by amendment) and further in view of Keunecke et al (US 5,906,926; of record).
Kroner teaches a method of microfibrillating cellulose, which is same as pretreating cellulose, by subjecting an aqueous mixture containing 30-70 % by weight of cellulose to mechanical shearing it (page 3, lines 4-11; page 3, line 41 through page 4, line 13; limitations of claims 1-2, 5-6 and 15). The mechanical shearing can be done using a twin-screw extruder (page 4, lines 34-35; as in claims 9, 11, 13).
From the teachings of Kroner one of ordinary skill in the art will have a reasonable expectation of success in using a mixture from 70-75% by weight of solids content as in claim 2. This also applies to the use of various types of cotton/cellulose as in claims 5-6, the use of the other mechanical mixing devices as in claims 9 and 12 in the claimed method. The artisan would also find it obvious to feed the mixture continuously as in claim 7, use the devices as in claims 8 and 12, cool the mixing device as in claim 19, and pass the mixture through the extruder one or more times as in claim 20 in view of Kroner. The artisan would do the process limitations in claims 7, and 18-20 for the purpose of optimization.
Kroner does not teach pH of 7.2 or more for the liquid mixture as in claim 1, and the limitations of claims 16-17 and 21-26.
Heiskanen teaches pretreatment of cellulose comprising feeding cellulose fibers with a solid content of above 50 wt% through an extruder. The extruder can be a conical extruder (page 4, lines 10-20; page 4, line 30 through page 5, line 15; page 10, lines 3-9; page 10, line 32 through page 11, line 8; limitations of claims 1-2, 9, 11, 13 and 15). The raw material that can be used is cotton (page 9, lines 2-3; as in claim 1). From the teachings of Heiskanen one of ordinary skill in the art will find it obvious to use the other cotton materials as in claims 5-6.
Heiskanen also does not expressly teach a pH value of 7.2 or more as in claim 1 and the limitations of claims 16-17.
Keunecke teaches a method of making cellulose carbamate wherein preliminary activation of the cellulose (same as pretreating cellulose) is done via treatment with 10-20 wt% aqueous sodium hydroxide solution (col. 2, lines 45-50). The mixture should be at a pH in excess of 7 and pH 10 as in claims 1, 16-17, 25, and method of claim 26. The mixture is then reacted with urea and heated at 145o to obtain cellulose carbamate (Examples 3 and 6 at cols. 9 and 10; limitation of claim 21 and part of the limitation of claims 22 and 26 regarding temperature). Keunecke also teaches that the cellulose-urea mixture is converted to cellulose carbamate by heating the mixture to 80 to 180oC, preferably at least till the end of the conversion to 130 to 180oC (col. 4, lines 37-40). In view of this teaching the artisan would heat the cellulose-urea mixture to the temperature range as in claim 22 in order to make sure the reaction of the cotton/cellulose with urea is maximized. The cellulose carbamate obtained is recovered and dried (col. 4, lines 55-60, as in claim 23 and part of claim 24). The artisan can adjust the temperature at which the carbamate is dried as in claim 24 so that the product is completely dry without any degradation. It would be obvious to the artisan to apply mechanical working of the mixture comprising shear mixing as in claim 26 in view of the teachings of Kroner and Heiskanen. The artisan would have a reasonable expectation of success for doing the same.
According to Keunecke preliminary activation of the cellulose and then reaction with urea gives a product with uniform substitution and distribution of carbamate groups and ensures good stability and suitable mechanical properties (col. 2, lines 1-7). Keunecke also teaches that alkaline treatment of cellulose pulp produces a pulp with controlled reactivity towards urea and controlled polydispersity (col. 3, lines 4-6). In view of this one of ordinary skill in the art would adjust the pH value of the mixture containing liquid to be in the range as in claims 1, 16 and 17 for the purpose of optimization.
MPEP 2144.05 states that, “Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.”); In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) (Claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions.). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997).
Thus, the claimed invention as a whole would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention over the combined teachings of the prior art.
MPEP 2141 states, "The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "[R]ejections on obviousness cannot be sustained by mere conclusatory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.'" KSR, 550 U.S. at, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include: (A) Combining prior art elements according to known methods to yield predictable results; (B) Simple substitution of one known element for another to obtain predictable results; (C) Use of known technique to improve similar devices (methods, or products) in the same way; (D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results; (E) " Obvious to try " choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success; (F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention."
According to the rationale discussed in KSR above, the rationale in (G) above is seen to be applicable here since based on the prior art teachings, the method of cellulose pretreatment using the claimed steps and further reacting it with urea to make cellulose carbamate is known in the art. Thus, it is obvious to arrive at the claimed method in view of the combined teachings of the prior art.
Thus, the claimed invention as a whole would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention over the combined teachings of the prior art. One of ordinary skill in the art would prefer to use an art tested method which is known to be used for cotton/cellulose pretreatment and conversion of the pretreated cotton/cellulose to cellulose carbamate. In addition, Keunecke teaches the advantage of pretreating cellulose as set forth above.
Response to Applicant’s Remarks
Applicant has traversed the rejection of claims under 35 USC 103 of record arguing that all of the claims mentioned include the features of independent claim 1. Kroner does not teach or suggest all of the features of amended independent claim 1. Therefore claims 2, 5-9, 11-13 and 16-24 are in a condition for allowance. New claim 25 recites added hydroxide ions. None of the references teach or suggest this feature. None of the references also teach or suggest the features of independent claim 26. Claim 26 recites water as the liquid. This is not taught by Keunecke. Applicant quotes col. 2, lines 25-40 and argues that in view of the teachings any existing water in Keunecke is either evaporated or exchanged by a liquid organic medium before reaction of activated cellulose is carried out with urea. This differs from the present invention which is water based. (pages 8-9-Remarks).
Applicant’s arguments are not persuasive. In view of the amendment the obviousness rejection above is made of record.
Kroner teaches aqueous mixture of cellulose with solid content, and Heiskanen teaches pretreatment cellulose with solid content and both teach mechanical mixing of the mixture. Keunecke teaches a method of making cellulose carbamate wherein preliminary activation of the cellulose (same as pretreating cellulose) is done via treatment with 10-20 wt% aqueous sodium hydroxide solution. The mixture should be at a pH in excess of 7 and pH 10 as in claims 1, 16-17, and 25. The mixture is then reacted with urea and heated at 145o to obtain cellulose carbamate. Keunecke teaches that only part of the water is evaporated and that too optionally. This means the water need not be evaporated at all. One of ordinary skill in the art will perform the reaction in water. This will save an additional step of exchanging water with an organic solvent and also reduce the cost.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
The USPTO Internet website contains Terminal Disclaimer forms which may be used. Please visit www.uspto.gov/forms/. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers refer to http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-2, 5-9, 11-13 and 15-26 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-3, 6-8, and 15-17 of U.S. Patent No. 12,060,441 B2 (‘441) in view of Kroner et al (WO 2014/202354 A1; cited in IDS filed 05/23/2022; of record and newly cited necessitated by amendment) in view of Heiskanen et al (WO 2011/051882 A1; cited in IDS filed 05/23/2022; of record and necessitated by amendment) and further in view of Keunecke et al (US 5,906,926; of record)
Although the claims at issue are not identical, they are not patentably distinct from each other because:
Instant Claim 1 is drawn to a method of pretreatment of cellulose comprising providing a mixture having a solid content, said mixture comprising cotton comprising cellulose and a liquid and mechanically working the mixture to open the fibril structures of the cellulose using a mechanical mixing device wherein the initial solid content is at least 50% and the solid content does not exceed 90 wt%, and wherein the liquid mixture has a pH value of 7.2 or more. Dependent claims 2, 5-9, 11-13 and 15-25 recite limitations drawn to solids content, types of cellulose and mechanical device used, pH of the mixture, temperature, addition of urea and heating the mixture to a specific temperature range to form cellulose carbamate and isolating and drying the carbamate and added hydroxide ions. Independent claim 26 is drawn to a method of producing cellulose carbamate.
Claim 1 of ‘441 is drawn to a method of producing cellulose carbamate via the steps of mixing cellulose and urea, heating the mixture at a specific temperature range, recovering the carbamate and washing it. Dependent claims 2-3, 6-8 and 15-17 recite limitations drawn to urea solution being aqueous temperature and time of heating, recovering the carbamate, mechanically working the mixture and initial solid content of at least 25 wt%.
Claims 1-3, 6-8, and 15-17 of ‘441 differ from the instant claims in that the instant claims do not mix the cellulose and urea and then subject it to a mechanical mixing device as in ‘441. The instant claims are drawn to a method of pretreatment of cellulose comprising providing a mixture having a solid content, said mixture comprising cotton comprising cellulose and a liquid and mechanically working the mixture to open the fibril structures of the cellulose using a mechanical mixing device wherein the initial solid content is at least 50% and the solid content does not exceed 90 wt%, and wherein the liquid mixture has a pH value of 7.2 or more, and then reacting with urea.
The teachings of Kroner and Heiskanen are set forth above. Both teach mechanical mixing of a mixture of cellulose/cotton with a mechanical mixing device. From this teaching one of ordinary skill in the art will find it obvious to mix cellulose with urea in water and mechanically working it to open the fibril structure as in claim 26.
According to Keunecke preliminary activation of the cellulose and then reaction with urea gives a product with uniform substitution and distribution of carbamate groups and ensures good stability and suitable mechanical properties (col. 2, lines 1-7).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention that the cellulose and liquid mixture can be subjected to mechanical mixing first and then reacted with urea to make the carbamate as claimed or mix cellulose and urea in water and subject it to mechanical mixing and heat it as in claim 26 to form cellulose carbamate.
In the instant case ‘441 teaches making cellulose carbamate that applicant claims. Keunecke teaches the advantage of pretreating cellulose. Although the claims of '441 subject a mixture of cellulose and urea to mechanical mixing, one of ordinary skill in the art would readily recognize that the scheme taught by '441 could be modified in view of Kroner, Heiskanen and Keunecke to arrive at the claimed method with a reasonable expectation of success.
Thus, the claimed invention as a whole would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention over the combined teachings of the prior art. One of ordinary skill in the art would be motivated to modify the method of ‘441 in view of the advantages taught by Keunecke.
Response to Applicant’s Remarks
In view of the amendment and new claim 26 the obviousness-type double patenting rejection above is made of record.
Applicant has traversed the rejection of claims under double patenting of record arguing that the amendments to claim 1 render the instant claims patentably distinct from the claims of ‘441. Applicant has stated some key differences like mixture comprising cotton comprising cellulose, the mixture has an initial solid content of at least 50 wt% and solid content does not exceed 90 wt% and the liquid having a pH of 7.2 or more in the instant claims versus subjecting mixture to reduced pressure of no more than 350 mbar, releasing the pressure and washing cellulose carbamate with water to remove nitrogenous compounds in the claims of ‘441, and argue because of the key differences it would not be obvious to the artisan to modify ‘441 in view of Keunecke to arrive at the claimed method. Keunecke does not mention cotton, only cellulose pulp. For these reasons withdrawal of the rejection is requested. (pages 10-11 of Remarks).
In view of the amendment the double patenting rejection of record above is made of record.
As set forth above Kroner and Heiskanen teach activating cellulose using hydroxide via mechanical mixing and solid content. Heiskanen also teaches that the raw material that can be used are cotton. Para 0027 in the specification teaches cotton as an example of cellulose. Therefore, it is obvious to use cotton or cellulose in the claimed method. Keunecke teaches the use of alkali (NaOH) which has a high concentration and should have the pH as claimed. Since Keunecke teaches that water evaporation is optional and the claims comprise the recited steps, it would be obvious to the artisan to modify the method of ‘441 to arrive at the claimed invention.
The artisan would have a reasonable expectation that the process would work in the presence of water because Keunecke teaches adding urea to the mixture which still has water (after neutralization) at a temperature of 20 to 60oC for up to 6hrs. This should cause the urea to react with the activated cellulose to form the carbamate. Applicant has not stated how the differences affect the production of cellulose carbamate. Washing the carbamate with water is an extra step which does not affect the production of the carbamate using the claimed steps which are also suggested by the combined teachings of the prior art.
Conclusion
1. Pending claims 1-2, 5-9, 11-13 and 15-26 are rejected.
2. Claims 3-4, 10, and 14 have been canceled.
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.
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/GANAPATHY KRISHNAN/Primary Examiner, Art Unit 1693