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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 January 30, 2026 has been entered.
Response to Amendment
The Amendment filed January 16, 2026 has been entered. Claims 1, 3-5, and 7 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 claims and Specification. Claim 7 is newly added and support can be found in the Specification as originally filed.
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], corresponding to replacing 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 condition 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, 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 a 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.
Furthermore, 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 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 a 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;
substitution of hydroxy groups with carbamate groups in the cellulose fiber [Claim 2; Table 1], corresponding to 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.
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.
Furthermore, 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 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).
Response to Arguments
Applicant's arguments filed January 16, 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 of the hydroxy acid to control acidification and ensure neutralization and generation of ammonia to control the carbamation process. However, attention is directed to the disclosure above, wherein Tsujii ‘471 teaches the production method of fibrous cellulose [Claim 5], heat treatment of a cellulose raw material and urea or a urea derivative [Claim 5], replacing hydroxyl groups with carbamate groups [Claim 2], miniaturization [Claim 5], heat treatment under acidic conditions [Claim 7], citric acid [Paragraph 0068], and a fine cellulose fiber diameter [Paragraph 0022], and Tsujii ‘405 teaches a hydroxy acid salt [Claim 4]. 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). Furthermore, while the references are silent to controlling acidification, 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. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Thus, applicant’s argument is not persuasive.
Applicant argues (2) Tsujii ‘471 is completely silent regarding the use of a hydroxy acid salt as a source of organic acid ions, much less “a hydroxy acid salt of the hydroxy acid” as required by the amended claims. However, attention is directed to the disclosure above wherein Tsujii ‘405, not Tsujii ‘471, teaches a hydroxy acid salt [Claim 4]. 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. Thus, applicant’s argument is not persuasive.
Applicant argues (3) Tsujii ‘405 is silent regarding the problem of over-acidification during a carbamation process if an organic acid is utilized in the absence of a buffering agent. However, it is noted that the features upon which applicant relies (i.e., the problem of over-acidification) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Thus, applicant’s argument is not persuasive.
Applicant argues (4) Tsujii ‘405 contains a merely a passing mention of a carbamation process, and does not teach, disclose, or suggest the specific combination of hydroxy acid and hydroxy acid salt, as well as their relative quantities, as required by the amended claims 1 and 4. However, the carbamation process is not claimed subject matter so the prior art is not required to teach said subject matter in order to anticipate or render obvious the claimed invention. Secondly, while Tsujii ‘405 does not explicitly teach, disclose, or suggest the specific combination of hydroxy acid and hydroxy acid salt as well as their relative quantities, the prior art is not required to teach all the claimed elements together in one embodiment. Tsujii ‘471 in view of Tsujii ‘405 teach the claimed elements with sufficient specificity that one of ordinary skill in the art would arrive at the claimed combination. Moreover, one of ordinary skill in the art at the time of the claimed invention would have found it “obvious to try” the specific combination of hydroxy acid and hydroxy acid salt as the teaching represents a finite number of identified, predictable combinations. KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398 (2007). Thus, applicant’s argument is not persuasive.
Conclusion
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/DORIS LING/Examiner, Art Unit 1764
/ARRIE L REUTHER/Supervisory Primary Examiner, Art Unit 1764