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 § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1 and 4-5 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
As amended, claim 1 now requires that the claimed cellulose nanofibers “are not chemically treated.” However, the instant Specification does not properly support this limitation. As referenced in the Applicant’s remarks dated November 17, 2025, the instant disclosure’s discussion of chemical modification occurs at paragraph [0025], wherein the “cellulose fibrillating treatment may be one mainly by mechanical treatment or one by chemical treatment of imparting functional groups in combination with mechanical treatment to fibrillate fibers into thinner single nano level fibers while agglomeration of the cellulose nanofibers is suppressed.” Furthermore, in paragraph [0026], the instant disclosure states “cellulose nanofibers may be cellulose nanofibers obtained by fibrillation only by mechanical treatment without chemical treatment, having amphiphilicity. By the cellulose nanofibers not chemically treated and having no carboxylate nor carboxylic acid, the state of dispersion of the cellulose nanofibers in the rubber tends to be favorable…”
The above sections refer to fibrillation processes which are optionally free of chemical treatment steps; however, these passages specifically refer to chemical treatment during fibrillation, and do not broadly implicate the chemical modification/treatment of the fibers at any other stage besides fibrillation. By contrast, claim 1 is drafted to separately indicate both chemical treatment during fibrillation (see “fibrillated only by mechanical treatment without chemical treatment” in lines 11-12 of claim 1) and broader, perhaps all-encompassing chemical treatment (see “the cellulose nanofibers contain no carboxylate nor carboxylic acid, are not chemically treated…” in lines 10-11). The instant disclosure does not point out or contemplate chemical modification (or lack thereof) in a broader context besides within the step of fibrillation; therefore, while the limitation which requires no chemical modification during fibrillation is properly supported, the limitation which requires no chemical modification whatsoever, is not.
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 newly added limitation requiring that the claimed cellulose nanofibers are “not chemically treated” renders the claim indefinite because it is unclear what chemical structures are included or excluded from the claimed composition. For instance, while carboxylate and carboxylic acid moieties are explicitly excluded from the cellulose nanofibers and the cellulose nanofibers are required to be fibrillated by a purely mechanical means (c.f. lines 10-12 of claim 1), the instant Specification teaches an example of a mechanical fibrillation process which involves a “counter collision” method (see [0026] of instant Specification) and the resulting fibers are indicated as having amphiphilicity, which is indicated as meaning that they have both hydrophilic and hydrophobic moieties (i.e., chemical functional groups). One having ordinary skill in the art would therefore be unable to ascertain what functional groups are or are not included within the claimed composition’s cellulose nanofibers. Furthermore, “chemical treatment” is not clearly defined in the context of the instant disclosure; furthermore, in Example 1 of the instant Specification ([0040]), an aqueous solution containing the claimed cellulose nanofibers is mixed with diluted acetic acid to a pH of 6.5 ([0040]). It is unclear if this process step is intended to fall under the purview of “chemical treatment.”
Where a claim is subject to more than one interpretation and at least one interpretation would render the claim unpatentable over the prior art, an appropriate course of action is for the examiner to enter two rejections: (A) a rejection based on indefiniteness under 35 U.S.C. 112, second paragraph; and (B) a rejection over the prior art based on the interpretation of the claims which renders the prior art applicable. See, e.g., Ex parte Ionescu, 222 USPQ 537 (Bd. App. 1984). See MPEP 2173.06.
In this case, claim 1 may be reasonably interpreted such that the phrase “are not chemically treated” requires that no carboxylic acid or carboxylate moieties are present in the cellulose nanofibers. The claims will be interpreted as such hereinbelow, for the purpose of examination.
Regarding claims 4 and 5, the claims are rendered indefinite because they depend, either directly or indirectly, on claim 1 which is indefinite as described above.
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 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 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, the limitation of “are fibrillated only by mechanical treatment” only limits 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.
Response to Arguments
Applicant's arguments filed November 17, 2025 have been fully considered but they are not persuasive.
Applicant argues that the teachings of Takaoka fail to disclose each and every limitation of the claimed composition. However, as described above, the newly added limitation requiring that the cellulose nanofibers are not chemically treated is not supported by the instant Disclosure and are therefore constitute new matter under 35 USC 112(a) as described above.
Applicant’s remaining arguments are directed towards an affidavit executed by Naoyuki Ishida, which the Applicant utilizes to assert that the claimed materials characteristcs are not inherently present within the teachings of Takaoka. However, the evidence provided concerns formulations crafted from cellulose nanofibers which have been modified by TEMPO – an oxidizer which forms carboxyl groups within the cellulose fibers (c.f. Takaoka at [0049]). However, within the 35 USC 103 rejections above (and in previous office actions), Takaoka is relied upon for its teachings which include cellulose nanofibers which have not been oxidized to include carboxy groups. The data provided in the affidavit merely shows that compositions which fall outside of the scope of the claimed composition does not inherently possess the claimed characteristics.
Takaoka does teach cellulose nanofibers which contain carboxyl groups, but additionally teaches cellulose nanofibers which do not contain carboxyl groups. The presence of compositions within Takaoka which fall outside of the claimed composition does not refute the existence of compositions within Takaoka which fall within the claimed composition. The compositions within Takaoka which fall within the claimed composition will inherently possess the claimed characteristics regardless of the characteristics of compositions within Takaoka which fall outside of the claimed composition. The experimental data provided in the aforementioned affidavit is therefore unpersuasive in rebutting the inherency rejection applied above, and in previous Office Actions.
Conclusion
THIS ACTION IS MADE FINAL. 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 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.
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, Robert Jones can be reached at 571-270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JOSHUA CALEB BLEDSOE/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762