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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 May 8, 2026 has been entered.
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 and 4-5 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.
Regarding claim 1, the claim has been amended to require that “the cellulose nanofibers… are obtained only by fibrillating fibers of cellulose contained in wood.” The instant Specification contemplates the fibrillation of wood and/or pulp (e.g., [0030]), and thus it is unclear whether the phrase “contained in wood” is intended to require that the cellulose nanofibers are fibrillated directly from wood, or fibrillated from a previously-isolated cellulose product which merely originated from wood. One having ordinary skill in the art would, accordingly, be unable to determine the full metes and bounds of the claimed composition.
For the sake of examination, claim 1 will be interpreted as requiring that the cellulose nanofibers originate from wood, but are not necessarily supplied within the claimed composition as a raw wood product (i.e., the claim is interpreted as including a cellulosic product which originated from wood but which does not substantially contain other components of wood such as lignin or hemicellulose).
Regarding claims 4-5, the claims are rendered indefinite because they depend, either directly or indirectly, on claim 1 which is independent as described above.
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 1 is rejected under 35 U.S.C. 103 as being unpatentable over Takaoka (US 20160032086 A1).
Regarding claim 1, Takaoka teaches a rubber composition ([0001]) wherein:
The rubber may comprise a chloroprene rubber ([0083])
The composition further comprises short fibers ([0024]) which may comprise wood cellulose and wood pulp fibers ([0026]) with number average fiber lengths in a preferred range of 100 nm to 5 µm ([0026]), which reads on the claimed “cellulose nanofibers,” and which reads on the claimed limitation requiring “cellulose fibers contained in wood.”
The rubber composition undergoes a vulcanizing process to afford a vulcanized rubber composition ([0020]) which may be in the form of a sheet ([0112]) which reads on the claimed “vulcanized sheet”
The amount of short fibers preferably ranges from 0.1 to 10 parts by mass based on 100 parts by mass of the rubber component ([0084]), which overlaps the compositional limitation of “100 parts by weight of a chloroprene rubber and from 1.2 to 3.0 parts by weight of cellulose nanofibers,” establishing a prima facie case of obviousness.
Takaoka differs from claim 1 because, while it does teach tensile stress improvements due to cellulose fiber incorporation under ASTM D412 at 300% elongation (called M300, [0119]), it is silent with regard to the vulcanized rubber composition being characterized as having an M100 tensile stress increased by 1.5 MPA or more per part by weight of the cellulose nanofibers used. Nevertheless, Takaoka as applied above results in a film formed from a composition that is structurally identical to the claimed composition, produced with the same components, cured to form a product via a similar curing process, and which also shows similar trends of materials properties (i.e., the M300 tensile stress results). Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. The claimed tensile stress increase will therefore necessarily be present in Takaoka as applied above.
Takaoka teaches that the cellulose nanofibers should be modified by adding substituents onto the cellulose nanofibers’ hydroxyl groups ([0041]), but specifies that there are no limitations on the substituents introduced onto said hydroxyl groups ([0042]); therefore, neither carboxylate nor carboxylic acid groups are required to be substituted onto the cellulose nanofibers. Furthermore, Takaoka teaches a series of acceptable substituents which do not consist of carboxylates or carboxylic acids, including methyl, ethyl, and propyl substituents ([0042]). Finally, Takaoka teaches the fibrillation of the cellulose fibers ([0054]), but only describes fibrillation as being performed by mechanical methods ([0066] and [0067]), which reads on the claimed “fibrillated only by mechanical treatment without chemical treatment.” Claim 1 as amended requires that the claimed cellulose nanofibers “are obtained only by fibrillating fibers of cellulose contained in wood.” Claims are given their broadest reasonable interpretation consistent with the Specification (see MPEP 2111). Per the Specification, the cellulose nanofibers require mechanical fibrillation to qualify to fit within the claimed composition (e.g., [0026], which indicates that fibrillation may only be mechanical and may therefore be absent chemical treatment). Accordingly, no mention within the specification is made to negatively limit any other manipulations to the cellulose nanofibers. Thus, an interpretation of the phrase “are obtained only by fibrillating fibers of cellulose contained in wood” which assumes that fibrillation is the only process which may be affected onto the cellulose nanofibers would be inconsistent with the specification. This limitation therefore essentially requires that fibrillations is required to obtain the cellulose nanofibers. Furthermore, Claim 1 requires that the cellulose nanofibers are fibrillated only by mechanical treatment without chemical treatment. This limitation is recognized as a product-by-process limitation. Product-by-process limitations only restrict the claim by the structure implied by the process steps (See MPEP 2113.I.). Therefore, these limitations only limit the cellulose fibers by requiring that they are fibrillated. As described above, the teachings of Takaoka include fibrillation of the cellulose fibers.
Furthermore, the cationization taught by Takaoka is taught as a step which takes place before the fibrillation, not during the fibrillation. The fibrillation (that is, the mechanical breakdown of the fibers into smaller fibers) therefore occurs only by mechanical means.
As a final note, the teachings of Takaoka require the cationization of the cellulose fibers. Therefore, the ionization of the cellulose nanofibers will not result in the formation of carboxylate functional groups because carboxylate groups are anionic, not cationic. Thus, the fibers of Takaoka meet the claimed limitation requiring that the cellulose fibers contain “no carboxylate nor carboxylic acid.”
Takaoka further teaches that the cellulose nanofibers are typically provided in the form of an aqueous dispersion ([0037]), but is silent with regard to a 1 wt% aqueous solution having the claimed surface tension. Nevertheless, the cellulose nanofibers of Takaoka are structurally identical to the claimed cellulose nanofibers, having both the same fiber size and identification. Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. The claimed surface tension will therefore necessarily be present in Takaoka as applied above.
Claims 4 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Takaoka (US 20160032086 A1) in view of Kobayashi (US 20180327576 A1).
Regarding claim 4, Takaoka teaches all of the limitations of claim 1 as described above. Takaoka further teaches a method for manufacturing the rubber composition, comprising a mixing step involving the combination of the short fibers and chloroprene rubber to form a solution, which is subsequently dried to give the rubber composition ([0017]). However, Takaoka differs from claim 4 because it is silent with regard to the freeze-coagulation of the mixture.
In the same field of endeavor, Kobayashi teaches chloroprene rubber compositions ([0014]).Kobayashi further teaches that freeze coagulation followed by water washing and hot air drying is a common method for isolating chloroprene rubber (p. 2, ([0033]).It is prima facie obvious to apply a known technique to a known composition to yield predictable results. In the instant case, it would have been obvious to one of ordinary skill in the art to apply the freeze-coagulation and washing methods of Kobayashi to the dispersion of Takaoka as modified for the purpose of predictably coagulating the formulation as taught by the prior art.
Regarding claim 5, Takaoka as modified by Kobayashi teaches all of the limitations of claim 4, above, but is silent with regard to the viscosity of the dispersion being 1,000 mPa∙s or lower. Nevertheless, the dispersion of Takaoka as modified is structurally and compositionally identical to the claimed dispersion. Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. The claimed dispersion viscosity will therefore necessarily be present in Takaoka as modified and as applied to claim 4, above.
Claim 1 is alternatively rejected under 35 U.S.C. 103 as being unpatentable over Matsumoto (JP 2019073681 A, hereinafter referring to the attached ESPACENET translation).
Regarding claim 1, Matsumoto teaches a resin composition ([0001]) including 0.1 to 100 parts of fine cellulose and 100 parts of a resin ([0046]), wherein said resin may be a chloroprene rubber ([0026]). In each case, the amounts of fine cellulose and resin encompass or are identical to the respectively claimed amounts, establishing prima facie cases of obviousness. Matsumoto further contemplates the use of NanoForest S cellulose fibers ([0023]), which the instant Specification specifically indicates as suitable for the claimed invention (c.f. instant Specification at [0047]).
Matsumoto contemplates the improvement of M100 of at least 10% within the inventive composition ([0055]), but is silent with regard to the specifically claimed M100 improvement 0f 1.5 MPa or more per part by weight of cellulose. Nevertheless, Matsumoto teaches a composition which optionally contains both chloroprene rubber and NanoForest S cellulose particles within the claimed amounts. Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. The claimed M100 characteristic will therefore necessarily be present in Matsumoto as applied above.
Matsumoto is silent regarding the claimed surface tension characteristic; however as described above, Matsumoto teaches the use of NanoForest S cellulose nanofibers which are contemplated within the instant Specification as useful for the claimed composition. It is therefore reasoned that NanoForest S, which is present within Matsumoto, will inherently possess the claimed surface tension characteristic.
Finally, Matsumoto teaches that the cellulose nanofibers are obtained by mechanical micronization ([0013]), and merely states that chemical modification may be conducted (i.e., chemical treatment is not required, [0013]); therefore, the composition of Matsumoto meets the claimed limitation requiring no carboxylate nor carboxylic acid, and meets the limitations requiring that the cellulose fibers are obtained only by fibrillating fibers by only mechanical means.
Claims 4 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Matsumoto (JP 2019073681 A, hereinafter referring to the attached ESPACENET translation) in view of Kobayashi (US 20180327576 A1).
Regarding claim 4, Matsumoto teaches all of the limitations of claim 1 as described above. Matsumoto further teaches a method for manufacturing the rubber composition, comprising a mixing step involving the combination of the cellulose and resin ([0040]), followed by drying to give the rubber composition ([0041]). However, Matsumoto differs from claim 4 because it is silent with regard to the freeze-coagulation of the mixture.
In the same field of endeavor, Kobayashi teaches chloroprene rubber compositions ([0014]).Kobayashi further teaches that freeze coagulation followed by water washing and hot air drying is a common method for isolating chloroprene rubber (p. 2, ([0033]).It is prima facie obvious to apply a known technique to a known composition to yield predictable results. In the instant case, it would have been obvious to one of ordinary skill in the art to apply the freeze-coagulation and washing methods of Kobayashi to the dispersion of Matsumoto as modified for the purpose of predictably coagulating the formulation as taught by the prior art.
Regarding claim 5, Matsumoto as modified by Kobayashi teaches all of the limitations of claim 4, above, but is silent with regard to the viscosity of the dispersion being 1,000 mPa∙s or lower. Nevertheless, the dispersion of Matsumoto as modified is structurally and compositionally identical to the claimed dispersion. Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. The claimed dispersion viscosity will therefore necessarily be present in Matsumoto as modified and as applied to claim 4, above.
Response to Arguments
Applicant's arguments filed May 8, 2026 have been fully considered but they are not persuasive.
Applicant states that claim 1 has been amended to remove the recitation “are chemically treated” thus rendering the previously applied indefiniteness rejections moot. However, the amendments to claim 1 raise new indefiniteness issues as stated above.
Applicant next argues, with regard to the prior art rejections under 35 U.S.C. 103, that the amended claim requires mechanical fibrillation but excludes chemical fibrillation. However, as described previously, the fibrillation of the cellulose fibers within Takaoka is a separate process from the chemical treatment of Takaoka. Therefore, the cellulose fibers are not fibrillated by chemical treatment. Furthermore, as described above, the broadest reasonable interpretation of the current claims does not require that chemical modification be entirely absent from the cellulose nanofibers.
The Examiner has herein provided an additional, alternative rejection of the claims in view of Matsumoto, which further illustrates that the instant claims are unpatentable over the prior art. Matsumoto includes a chloroprene rubber composition containing the same cellulose nanofibers as claimed.
Applicant rebuts the Examiner’s discussion of the previous Declaration, stating that any type of chemical modification would set prior art cellulose nanofibers as separate from those as claimed; however, as described above and previously, the broadest reasonable interpretation of the claims includes fibers which have been chemically modified, with the proviso that said chemical modification does not fibrillate the fibers. Therefore, the cellulose nanofibers of Takaoka will inherently posses the claimed characteristics, as chemical modification does not fall outside of the purview of the claimed composition as long as said modification was not part of the fibrillation.
Applicant has submitted an additional declaration to indicate criticality of the claimed range of “1.2 to 3.0 parts by weight of cellulose nanofibers,” however the data includes comparative examples comprising 2.0 and 3.0 parts by weight of cellulose nanofibers but shows apparently insufficient handling efficiencies and/or tensile property increases. It is therefore unclear what is critical about said range.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHUA CALEB BLEDSOE whose telephone number is (703)756-5376. The examiner can normally be reached Monday-Friday 8:00 a.m. - 5:00 p.m. EST.
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/JOSHUA CALEB BLEDSOE/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
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