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 .
Response to Amendment
The Amendment filed May 28, 2026 has been entered. Claims 1, 3-5, and 7-8 remain pending in the application. Claims 2 and 6 were previously canceled. Claims 1 and 4 were amended and support for the amendments are found in the original Specification. Claim 8 is newly added and support can be found in the Specification as originally filed.
Claim Rejections - 35 USC § 112(a)
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, 3-5 and 7-8 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 written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. More specifically, Claims 1 and 4 recite “the hydroxy acid salt is configured to act as a buffer”. The only support for hydroxy acid salt acting as a buffer is found in ¶ 0080 of the instant Specification, which states “However, when a hydroxy acid salt is used in combination, the hydroxy acid salt serves as a buffer, a hydroxy acid is generated from the hydroxy acid salt, neutralization of ammonia and generation of ammonia proceed, and carbamation proceeds.” There is no support for configuring the hydroxy acid salt. Rather, the support is for the presence of hydroxy acid salt that provides the buffering property. In other words, the instant Specification provides no support for configuring the hydroxy acid salt in any manner, much less as a buffer. It is suggested that Applicant amend the limitation to recite “the hydroxy acid salt acts as a buffer” as supported in the instant Specification [¶ 0080]. For the purposes of examination, Claims 1 and 4 will be interpreted to read as “the hydroxy acid salt acts as a buffer”.
Claims 3, 5 and 7-8 are rejected for being dependent on a rejected base claim.
Claim Rejections - 35 USC § 112(b)
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, 3-5 and 7-8 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.
Claim 1 recites “the hydroxy acid salt is configured to act as a buffer”. This is indefinite because it is unclear what the scope of ‘configured’ is intended to include. In other words, how is the hydroxy acid salt configured differently than normal? If the applicant intended to mean simply the hydroxy acid salt itself is a buffer, the claim would recite “the hydroxy acid salt acts as a buffer”. As the term ‘configured’ is present, it changes the meaning of the claim in an indefinite manner. Similarly, Claim 4 recites “configured”. For the purposes of examination, Claims 1 and 4 will be interpreted to read as “the hydroxy acid salt acts as a buffer”.
Claims 3, 5 and 7-8 are rejected for being dependent on a rejected base claim.
Claim Rejections - 35 USC § 103
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.
Claims 1, 3-5, and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Tsujii et al., (US2020/115471 (A1); cited in the IDS submitted on 08/31/2022; hereafter as “Tsujii ‘471”) in view of Tsujii et al., (US 2018/0362405 A1; hereafter as “Tsujii ‘405”).
Tsujii ‘471 teaches a production method of a fine cellulose fiber [Claim 5], corresponding to the claimed method for manufacturing a fibrous cellulose of Claim 1, comprising:
Performing a heat treatment on a mixture of a plant raw material and urea or a urea derivative [Claim 5], corresponding to subjecting a cellulose raw material and at least one of urea and a derivative of urea to a heat treatment of Claim 1;
Said fine cellulose fiber with substitution of the hydroxy groups with carbamate groups [Claim 2; Table 1; ¶ 0064-0065], corresponding performing a carbamation process to replace part or all of hydroxyl groups of the cellulose raw material with carbamate groups of Claim 1;
performing a miniaturization treatment of the plant raw material [Claim 5], wherein miniaturization is equivalent to defibration [Example 1; Paragraph 0126], corresponding to defibrating the cellulose raw material of Claim 1;
fine cellulose fiber diameter of no less than 1 nm and no greater than 15 µm (0.001-15 µm) [Paragraph 0022], which overlaps the claimed range in which an average fiber width is 0.1 µm or more of Claim 1; and
wherein the heat treatment is performed under an acidic condition [Claim 7], such as with citric acid [Paragraph 0068], corresponding to wherein the heat treatment is performed under a condition that organic acid ions are added of Claim 1, and a hydroxy acid of Claim 1.
Regarding the cellulose fiber diameter, one of ordinary skill in the art at the time the invention was made would have considered the invention to have been obvious because the range taught by Tsujii ‘471 for the cellulose fiber diameter (0.001-15 µm) overlaps the instantly claimed range (> 0.1 µm) and is therefore considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, MPEP 2144.05.
Regarding Claims 1 and 7, Tsujii ‘471 teaches the heat treatment is performed under acidic conditions with acid compounds such as citric acid [Paragraph 0068] thereby reading on the organic acid ions as required by the instant Claim 1, and corresponding to the citric acid of Claim 7.
However, Tsujii ‘471 does not explicitly teach organic acid ions are added in an amount from 0.001 mmol to 10.0 mmol with respect to 1 g of the urea and the derivative of urea of Claim 1.
Nevertheless, Tsujii ‘471 teaches the heat treatment is performed under acidic condition with acid compounds such as citric acid and further teaches the acidic conditions allows the reaction with the carbamate groups to proceed more effectively [Paragraph 0068]. As such, the amount of organic acid compounds will affect the substitution of the carbamate groups. Therefore, the amount of acid ions with the respect to the amount of urea can be optimized to reach the desired substitution of carbamate. The case law has held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Thus, it would have been obvious to one having ordinary skill in the art at the time of the invention was made to adjust the relative amount of the compounds for the intended application via a routine optimization, thereby obtaining the present invention.
However, Tsujii ‘471 is silent to the hydroxy acid salt and further silent to a ratio of the hydroxy acid salt to the hydroxy acid is 10 parts to 1,000 parts by mass with respect to 100 parts by mass of the hydroxy acid of Claim 1, the hydroxy acid salt is configured to act as a buffer during the carbamation process of Claim 1, and the citrate of Claim 7.
Nevertheless, Tsujii ‘405 teaches a method of producing a resin composition containing cellulose fibers, a fibrillation aid and a resin [Claim 6]. Tsujii ‘405 further teaches said fibrillation aid may comprise organic acid and an organic acid salt such as sodium citrate [Claim 15; Paragraphs 0135-136; Table 19], wherein sodium citrate corresponds to the hydroxy acid salt of Claim 1, and the citrate of Claim 7.
Tsujii ‘405 also offers the motivation that their method results in cellulose fibers that are dispersed in the resin in a manner that improves the bonding between the cellulose and resin, therefore strengthening the mechanical properties and lessening thermal deformation of the resin [Paragraphs 0096-0097].
Tsujii ‘471 and Tsujii ‘405 are considered to be analogous art as the claimed invention, as all are in the same field of methods of producing cellulose resin compositions through heat treatment and defibration.
Therefore, it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the hydroxy acid salt of Tsujii ‘405 to improve the mechanical properties and lessen thermal deformation of the fibrous cellulose of Tsujii ‘471, thereby arriving at the claimed invention.
Regarding the addition ratio of hydroxy acid to the hydroxy acid salt, Tsujii ‘471 and Tsujii ‘405 both teach the organic acid with a hydroxyl group thereby reading on the hydroxy acid required by the instant claim. Tsujii ‘405 further teaches the organic acid salt with a hydroxyl group thereby reading on the hydroxy acid salt also required by the instant claim. Therefore, the amount of acid ions can be optimized to reach the desired mechanical properties of the resin as taught by Tsujii ‘405 and Tsujii ‘471. The case law has held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Thus, it would have been obvious to one having ordinary skill in the art at the time of the invention was made to adjust the relative amount of the compounds for the intended application via a routine optimization, thereby obtaining the present invention.
Regarding the hydroxy acid salt acting as a buffer, the presence of hydroxy acid and hydroxy acid salt together in a mixture would expectedly function as a buffer, even if the prior art does not call the hydroxy acid and hydroxy acid salt combination a buffer or recognize the added benefit of using the hydroxy acid and hydroxy acid salt together as a buffer. In this case, however, Tsuji ‘471 does disclose the added benefit of controlling the pH during heat treatment as would expectedly occur with the added buffer: “heat treatment step is preferably performed under an acidic condition. This can allow the reaction with the carbamate groups to proceed more effectively. The upper limit of the pH is preferably 6….the lower limit of the pH is … more preferably 3”[Tsuji ‘471, ¶ 0068]. Since Tsuji ‘471 in view of Tsuji ‘405 teach the same hydroxy acid and hydroxy acid salt in the same fibrous cellulose produced by the same method as required by the instant claim, as set forth in the rejection above, the fibrous cellulose composition of Tsuji ‘471 and Tsuji ‘405 would be expected to result in the same buffering capabilities as required by the instant claims. Case law has held that claiming of a new use, new function or unknown property which is expectedly present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). The courts have stated that a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "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." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position. In the alternative that the above disclosure is insufficient to anticipate the above listed claims, it would be obvious to one of ordinary skill that Tsuji ‘471 has the same motivation (to more efficiently perform carbamation [Tsuji ‘471, ¶ 0068; instant Specification, ¶ 0077]) to use the same ingredients (hydroxy acid and hydroxy acid salt [Tsuji ‘405, Claim 4; instant Claim 1 ]) for the same method (control pH to be in an acidic range from 4-6 [Tsuji ‘471, ¶ 0068; instant Specification, ¶ 0077]) used at the same time (during heat treatment during the carbamation process [Tsuji ‘471, ¶ 0068; instant Specification, ¶ 0077]) to produce the same product (fibrous cellulose homogenously dispersed in resin [Tsuji ‘471, ¶ 0015; instant Specification, ¶ 0002]) with the same qualities (high flexural elongation [Tsuji ‘471, ¶ 0155; instant Specification, ¶ 0002]) as the instantly claimed invention.
Regarding Claim 3, Tsujii ‘471 teaches average length of the cellulose fibers is no less than 1 µm and no greater than 5,000 μm [Paragraph 0039] which overlaps with the claimed average fiber length of 0.10 mm or more (equivalent to 100 µm or more).
One of ordinary skill in the art at the time the invention was made would have considered the invention to have been obvious because the range taught by Tsujii ‘471 for the cellulose fiber length (1-5,000 µm) overlaps the instantly claimed range (> 100 µm) and is therefore considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, MPEP 2144.05.
Tsujii ‘471 does not explicitly teach wherein the organic acid ions are added such that a replacement ratio with a carbamate group is 1.0 mmol/g or more of Claim 3.
Nevertheless, Tsujii ‘471 teaches the heat treatment is performed under acidic condition with acid compounds such as citric acid [Paragraph 0068] thereby reading on the organic acid ions as required by the instant claim, and further teach the acidic conditions allows the reaction with the carbamate groups to proceed more effectively. As such, the amount of organic acid compounds will affect the replacement ratio of the carbamate groups. Therefore, the amount of substitution of hydroxyl groups to carbamate groups can be optimized to reach the desired replacement ratio. The case law has held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Thus, it would have been obvious to one having ordinary skill in the art at the time of the invention was made to adjust the relative amount of organic acid ions for the intended application via a routine optimization, thereby obtaining the present invention.
Regarding Claim 4, Tsujii ‘471 teaches method of preparation of fine cellulose fibers and dispersion of the fine cellulose fibers into a resin [Paragraph 0091], corresponding to method for manufacturing a fibrous cellulose composite resin of Claim 4. Tsujii ‘471 teaches said method comprises:
Defibrating and kneading the thermal treated plant raw material and a resin [Paragraph 0091], corresponding to defibrating a cellulose raw material and kneading the defibrated cellulose raw material with a resin of Claim 4;
Performing heat treatment on a mixture of a plant raw material and urea [Paragraph 0092], corresponding to subjecting the cellulose raw material and urea to a heat treatment of Claim 4;
fine cellulose fiber with substitution of hydroxy groups with carbamate groups in the cellulose fiber [Claim 2; Table 1], corresponding to performing a carbamation process replacing hydroxyl groups of the cellulose raw material with carbamate groups of Claim 4 ;
cellulose fiber diameter of no less than 1 nm (0.001 µm) and no greater than 15 µm [Paragraph 0022], which overlaps the claimed average fiber width is 0.1 µm or more of Claim 4;
wherein the heat treatment is performed under an acidic condition [Claim 7], corresponding to wherein the heat treatment is performed under a condition that organic acid ions are added of Claim 4; and
citric acid [Paragraph 0068], corresponding to the hydroxy acid of Claim 4.
Regarding the cellulose fiber diameter of Claim 4, one of ordinary skill in the art at the time the invention was made would have considered the invention to have been obvious because the range taught by Tsujii ‘471 for the cellulose fiber diameter (0.001-15 µm) overlaps the instantly claimed range (> 0.1 µm) and is therefore considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, MPEP 2144.05.
Tsujii ‘471 does not explicitly teach organic acid ions are added in an amount from 0.001 mmol to 10.0 mmol with respect to 1 g of the urea and the derivative of urea of Claim 4.
Nevertheless, Tsujii ‘471 teaches the heat treatment is performed under acidic condition with acid compounds such as citric acid [Paragraph 0068] thereby reading on the organic acid ions as required by the instant claim, and further teach the acidic conditions allows the substitution to carbamate groups to proceed more effectively. As such, the amount of organic acid compounds will affect the substitution of the carbamate groups. Therefore, the amount of acid ions with the respect to the amount of urea can be optimized to reach the desired substitution of carbamate. The case law has held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Thus, it would have been obvious to one having ordinary skill in the art at the time of the invention was made to adjust the relative amount of the compounds for the intended application via a routine optimization, thereby obtaining the present invention.
Tsujii ‘471 is silent to a hydroxy acid salt and a ratio of the hydroxy acid salt to the hydroxy acid is 10 parts to 1,000 parts by mass with respect to 100 parts by mass of the hydroxy acid of Claim 4, and the hydroxy acid salt is configured to act as a buffer during the carbamation process of Claim 4.
Nevertheless, Tsujii ‘405 teaches a method of producing a resin composition containing cellulose fibers, a fibrillation aid and a resin [Claim 6]. Tsujii ‘405 further teaches said fibrillation aid may comprise organic acid and an organic acid salt such as sodium citrate [Claim 15; Paragraphs 0135-136; Table 19], wherein sodium citrate corresponds to the hydroxy acid salt of Claim 4.
Tsujii ‘405 also offers the motivation that their method results in cellulose fibers that are dispersed in the resin in a manner that improves the bonding between the cellulose and resin, therefore strengthening the mechanical properties and lessening thermal deformation of the resin [Paragraphs 0096-0097].
Therefore, it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the hydroxy acid salt of Tsujii ‘405 to improve the mechanical properties and lessen thermal deformation of the fibrous cellulose of Tsujii ‘471, thereby arriving at the claimed invention.
Regarding the addition ratio of hydroxy acid to the hydroxy acid salt, Tsujii ‘471 and Tsujii ‘405 both teach the organic acid with a hydroxyl group thereby reading on the hydroxy acid required by the instant claim. Tsujii ‘405 further teaches the organic acid salt with a hydroxyl group thereby reading on the hydroxy acid salt also required by the instant claim. Therefore, the amount of acid ions can be optimized to reach the desired mechanical properties of the resin as taught by Tsujii ‘405 and Tsujii ‘471. The case law has held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Thus, it would have been obvious to one having ordinary skill in the art at the time of the invention was made to adjust the relative amount of the compounds for the intended application via a routine optimization, thereby obtaining the present invention.
Regarding the hydroxy acid salt acting as a buffer, the presence of hydroxy acid and hydroxy acid salt together in a mixture would expectedly function as a buffer, even if the prior art does not call the hydroxy acid and hydroxy acid salt combination a buffer or recognize the added benefit of using the hydroxy acid and hydroxy acid salt together as a buffer. In this case, however, Tsuji ‘471 does disclose the added benefit of controlling the pH during heat treatment as would expectedly occur with the added buffer: “heat treatment step is preferably performed under an acidic condition. This can allow the reaction with the carbamate groups to proceed more effectively. The upper limit of the pH is preferably 6….the lower limit of the pH is … more preferably 3”[Tsuji ‘471, ¶ 0068]. Since Tsuji ‘471 in view of Tsuji ‘405 teach the same hydroxy acid and hydroxy acid salt in the same fibrous cellulose produced by the same method as required by the instant claim, as set forth in the rejection above, the fibrous cellulose composition of Tsuji ‘471 and Tsuji ‘405 would be expected to result in the same buffering capabilities as required by the instant claims. Case law has held that claiming of a new use, new function or unknown property which is expectedly present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). The courts have stated that a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "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." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position. In the alternative that the above disclosure is insufficient to anticipate the above listed claims, it would be obvious to one of ordinary skill that Tsuji ‘471 has the same motivation (to more efficiently perform carbamation [Tsuji ‘471, ¶ 0068; instant Specification, ¶ 0077]) to use the same ingredients (hydroxy acid and hydroxy acid salt [Tsuji ‘405, Claim 4; instant Claim 1 ]) for the same method (control pH to be in an acidic range from 4-6 [Tsuji ‘471, ¶ 0068; instant Specification, ¶ 0077]) used at the same time (during heat treatment during the carbamation process [Tsuji ‘471, ¶ 0068; instant Specification, ¶ 0077]) to produce the same product (fibrous cellulose homogenously dispersed in resin [Tsuji ‘471, ¶ 0015; instant Specification, ¶ 0002]) with the same qualities (high flexural elongation [Tsuji ‘471, ¶ 0155; instant Specification, ¶ 0002]) as the instantly claimed invention.
Regarding Claim 5, Tsujii ‘471 teaches the heat treatment is performed under an acidic condition [Claim 7].
However, Tsujii ‘ 471 is silent to wherein the fibrous cellulose composite resin comprises an acid-modified resin, a part or all of the carbamate groups are ionically bonded to acid groups of the acid- modified resin, and the acid-modified resin has an acid value of 0.5 to 100 mgKOH/g and an MFR of 2000 g/10 minutes (190°C/2.16 kg) or less.
Nevertheless, the fibrous cellulose composite resin of Tsujii ‘471 is treated with an acid, and thereby reads on an acid-modified resin of Claim 4. Furthermore, the properties of said acid-modified resin such as the ionic bonding of carbamate groups to the acid groups of the acid-modified resin, acid value and MFR are functions of the composition of the acid-modified resin and the method by which it is made. Since Tsujii ‘471 teaches the same acid-modified resin formed by the same method as required by the instant claim, as set forth in the rejection above, the resin composition of Tsujii ‘471 would be expected to result in the same ionic bonding, acid value and MFR as required by the instant claims. Case law has held that claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). The courts have stated that a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "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." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position. In the alternative that the above disclosure is insufficient to anticipate the above listed claims, it would have nonetheless been obvious to the skilled artisan to produce the claimed ionic bonding, acid value and MFR properties, as the reference teaches each of the claimed ingredients (fibrous cellulose resin, urea, and organic acid) for the same utility (making fibrous cellulose compositions) and for the same purpose (to producing a resin).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Tsujii et al., (US2020/115471 (A1); cited in the IDS submitted on 08/31/2022; hereafter as “Tsujii ‘471”) in view of Tsujii et al., (US 2018/0362405 A1; hereafter as “Tsujii ‘405”) and Nagai et al. (CN 108473780 A; English translation incorporated herein; hereafter as “Nagai”).
Tsuji ‘471 and Tsuji ‘405 teach the method for manufacturing a fibrous cellulose, carbamation process, urea, urea derivative, heat treatment, defibrating, hydroxy acid, and hydroxy acid salt of Claim 1 as disclosed above and incorporated herein by reference.
Tsuji ‘471 teaches use of a dispersant [¶ 0083].
However, Tsuji ‘471 and Tsuji ‘405 do not explicitly teach wherein the dispersant comprises an aromatic compound having an amine group and/or a hydroxy group of Claim 8.
Nevertheless, Nagai teaches adhesive cellulose resins comprising dispersants such as dispersants containing aromatic carboxylic acids [Claim 6; ¶ 0084, 0225], thereby reading on wherein the dispersant comprises an aromatic compound having a hydroxy group of Claim 8.
Nagai offers the motivation that resins are preferably combined with a dispersant to impart excellent dispersibility to the final product [¶ 0120].
Tsujii ‘471, Tsujii ‘405, and Nagai are considered to be analogous art as the claimed invention, as all are in the same field of methods of producing cellulose resin compositions with dispersant.
Therefore, it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the aromatic carboxylic acid dispersant of Nagai with the method of Tsuji ‘471 and Tsuji ‘405, with the motivation to improve dispersibility, thereby arriving at the claimed invention.
Response to Arguments
Applicant's arguments filed May 28, 2026 have been fully considered but they are not persuasive.
Applicant argues (1) neither of the cited references, teach, disclose, or suggest the combination of both a hydroxy acid and a hydroxy acid salt in the claimed amounts so that the hydroxy acid salt functions as a buffer during the carbamation process. However, attention is directed to the disclosure above, wherein Tsujii ‘471 teaches the production method of fibrous cellulose [Tsujii ‘471, Claim 5], heat treatment of a cellulose raw material and urea or a urea derivative [Tsujii ‘471, Claim 5], replacing hydroxyl groups with carbamate groups [Tsujii ‘471, Claim 2], miniaturization [Tsujii ‘471, Claim 5], heat treatment under acidic conditions [Tsujii ‘471, Claim 7], citric acid [Tsujii ‘471, Paragraph 0068], and a fine cellulose fiber diameter [Tsujii ‘471, Paragraph 0022], and Tsujii ‘405 teaches a hydroxy acid salt [Claim 4]. Tsujii ‘405 also offers the motivation to use the hydroxy acid salt because their method results in cellulose fibers that are dispersed in the resin in a manner that improves the bonding between the cellulose and resin, therefore strengthening the mechanical properties and lessening thermal deformation of the resin [Tsuji ‘405, Paragraphs 0096-0097]. While neither reference teaches all the claimed elements in one embodiment, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant argues (2) that the control of acidification is not a problem recognized by either of the cited references, therefore there would be no motivation for a person having ordinary skill in the art to combine the teachings of the cited references. However, while Tsuji ‘471 and Tsuji ‘405 do not teach the hydroxy acid and hydroxy acid salt as buffers, they nonetheless teach the claimed components which would be expected to similarly function as a buffer even if they do not explicitly disclose so. The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. Also, the instant Specification discloses during heat treatment a pH of 4-7 is preferable because the carbamation is efficiently performed [instant Specification, ¶ 0077]. Similarly, Tsuji ‘471 teaches the heat treatment is preferably performed under acidic conditions with a pH between 3-6 to allow the reaction with the carbamate groups to proceed more effectively [Tsuji ‘471, ¶ 0068]. Tsuji ‘471 has the same motivation (to more efficiently perform carbamation [Tsuji ‘471, ¶ 0068; instant Specification, ¶ 0077]) to use the same ingredients (hydroxy acid and hydroxy acid salt [Tsuji ‘405, Claim 4; instant Claim 1 ]) for the same method (control pH to be in an acidic range from 4-6 [Tsuji ‘471, ¶ 0068; instant Specification, ¶ 0077]) used at the same time (during heat treatment during the carbamation process [Tsuji ‘471, ¶ 0068; instant Specification, ¶ 0077]) to produce the same product (fibrous cellulose homogenously dispersed in resin [Tsuji ‘471, ¶ 0015; instant Specification, ¶ 0002]) with the same qualities (high flexural elongation [Tsuji ‘471, ¶ 0155; instant Specification, ¶ 0002]) as the instantly claimed invention. This is contrary to argument (2). Thus, applicant’s argument is not persuasive.
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.
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/DORIS LING/Examiner, Art Unit 1764
/ROBERT C BOYLE/Primary Examiner, Art Unit 1764
Prosecution Insights