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 § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-3, 5-14 are rejected under 35 U.S.C. 103 as being unpatentable over
Wang, et. al, Transparent, anisotropic biofilm with aligned bacterial cellulose nanofibers, Adv. Funct. Mater.2018, 28, 1707491, in the view of Shin et. al., (KR101973758, herein Shin, a machine translation is being used for citation purposes), as evidenced by Hess et. al., (US20190055373, herein Hess).
Regarding Claims 1-3, 5-8, 13, Wang teaches bacterial cellulose (BC) fibrilsbased transparent film [P1707491 (1 of 10), Right Column, Para. 3] with layered structure [P1707491 (3 of 10), Right Column, Para. 1], indicate multilayer structure and transparent film. Wang teaches the wet-drawn samples were placed in between layers of filter papers and hot pressed at 60 °C for 24 h [P1707491 (9 of 10), Left Column, Para. 1], which indicate the multilayer structured transparent film is formed by filtration and drying, wherein, the press weight and temperature act as the driving force to remove the water.
Wang teaches the cellulose nanofibrils are composed of an aligned bundle of subfibrils [P1707491 (2 of 10), Left Column, Para. 2], indicates the nanocellulose consisting of one or more individual subfibrils.
Wang teaches BC nanofibrils with high crystallinity [P1707491 (2 of 10), Left Column, Para. 2], indicate the crystalline portion and an amorphous portion constituting a crystal system of bacterial nanocellulose. Wang teaches subfibrils with a diameter of 2–4 nm [P1707491 (1 of 10), Abstract], wherein, the evidence ref_Hess further proves the bacterial nanocellulose have the dimension of 4-10 nm diameter and 1000-3000 nm length [0085].
Wang does not explicitly teach i) the bacterial nanocellulose is formed by electron beam irradiation and mechanical treatment on wet bacterial cellulose; ii) the cellulose nanofibers (CNF) have a carboxylate group; However, such limitations are product-by-process limitations. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) [See MPEP 2113]. In the present case, Shin teaches the product formation, via oxidizing a cellulose-based material by irradiating it with an electron beam; adding an electron beam irradiated cellulose material to water to prepare an aqueous solution and stirring [0035-36] for manufacturing cellulose nanofibers [0037], which read on the electron beam irradiation and mechanical treatment on wet bacterial cellulose, further lead to the nanocellulose formation from cellulose, wherein, the cellulose nanofibers having a carboxylate content [0052]; and the nanocellulose are treated with alkali [0057, 65] acting as oxidizing agent [0057] and bleaching process [0082] can accelerate the oxidation of cellulose-based materials by electron beam irradiation [0083] both lead to further generation of the carboxyl groups [0052], as taught by Shin, appears to be the same as that produced by the product-by-process limitations. Wang and Shin are both considered to be analogous to the claimed invention because they are reasonably pertinent to the problem faced by the inventor, that of the nanocellulose based transparent materials formation. It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Wang to add the teachings of Shin and provide the a) oxidizing a cellulose-based material by irradiating it with an electron beam b) adding an electron beam irradiated cellulose material to water to prepare an aqueous solution and stirring [0035-36] for manufacturing cellulose nanofibers [0037], the cellulose nanofibers having a carboxylate content [0052]; and the nanocellulose are treated with alkali [0065] and bleaching process [0082] into nanocellulose based composite formation. Doing so would further achieve the optimized manufacturing process of “new, environmentally friendly, and sustainable method for manufacturing cellulose nanofibers that can be applied in various ways to high value-added products, thereby providing industrial sustainability of cellulose nanofibers.” [0062] as taught by Shin.
Regarding mechanical property, transparency, transmittance, oxygen barrier property, moisture barrier property, UV barrier property, swelling ratio, the Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Wang and Shin teach all of the claimed ingredients in the claimed amounts, and Wang and Shin collectively teach the composition as being made by a substantially similar process as set forth above. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. mechanical property, transparency, oxygen barrier property, moisture barrier property, UV barrier property, swelling ratio, would necessarily arise from a composition with all the claimed ingredients in the claimed amounts. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Wang and Shin collectively teach the transparent film, which is capable of being alkali-treated and bleached, and further increase mechanical and transparency. Therefore, the transparent film is alkali-treated and bleached is selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). MPEP 2144.07.
Regarding Claims 9-11, Regarding zeta potential, light transmittance, degree of polymerization, the Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Wang and Shin teach all of the claimed ingredients in the claimed amounts, and Wang and Shin teach the composition as being made by a substantially similar process as set forth above. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. zeta potential, light transmittance, degree of polymerization, would necessarily arise from a composition with all the claimed ingredients in the claimed amounts. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Regarding Claim 12, Wang teaches the cellulose nanofibrils are composed of an aligned bundle of subfibrils [P1707491 (2 of 10), Left Column, Para. 2], indicates it’s a linear fiber structure.
Regarding Claim 14, Wang and Shin collectively the bacterial nanocellulose transparent film as set forth in claim 1, Wang is silent on wherein a suspension of the bacterial nanocellulose is re-dried to a powder through a spray dryer, the powder of the dried bacterial nanocellulose is redispersed from a powder to a dispersion. However, Shin teaches a step of drying the dispersion of step (e) to obtain a powder may be further included [0124], and the dispersion is from (d) preparing a dispersion and (e) a step of stirring the dispersion [0122-123], wherein, the above drying is performed by spray drying, dispersion stability can be maintained even when redispersed in an aqueous system. [0140] collectively read on the re-dried and re-disperse processes. Wang and Shin are both considered to be analogous to the claimed invention because they are reasonably pertinent to the problem faced by the inventor, that of the nanocellulose based transparent materials formation. It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Wang to add the teachings of Shin and provide the a step of drying the dispersion of step (e) to obtain a powder may be further included [0124], and the dispersion is from (d) preparing a dispersion and (e) a step of stirring the dispersion [0122-123], wherein, the above drying is performed by spray drying, dispersion stability can be maintained even when redispersed in an aqueous system. [0140] into the nanocellulose development and further apply into the composition development. Doing so would further achieve the desired property of the manufactured cellulose nanofibers have dispersion stability, and indicates that the cellulose nanofibers can be manufactured into powder and stored and transported, thereby increasing their usability. [0144] as taught by Shin.
Response to Arguments
Applicant’s arguments, filed 2/2/2026, with respect to the rejection(s) of claim(s) 1 under 35 USC § 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Wang, et. al, Transparent, Anisotropic Biofilm with Aligned Bacterial Cellulose Nanofibers, Adv. Funct. Mater.2018, 28, 1707491, and Shin et. al., (KR101973758, herein Shin, a machine translation is being used for citation purposes).
In this case, the applicant’s arguments are directed toward the amendment to independent claim 1, which has been addressed by the new rejection set forth above.
In response to the “unexpected results”, is not persuasive.
In fact, when Examples BC-NC-E100, BC-NC-E100, BC-NC-E100 are considered as a whole, they establish results associated with the ranges, respect to the claimed ranges provided for comparison.
Claim 13 is open to the content of the cellulose nanofibers (CNF) have a diameter of 2 nm to 40 nm and a length of 500 nm to 20 μm. However, BC-NC-E100, BC-NC-E100, BC-NC-E100 only show specific narrow range of the nanocellulose width as 6.5-9.9 nm and length as 1.8-2.9 μm. Hence, these examples with narrow ranges are not commensurate in scope with the claim with much broad ranges of width 2 nm to 40 nm and length of 500 nm to 20 μm, therefore insufficient to establish non-obviousness.
Whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support. In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. See MPEP 716.02(d).
In response to the “The Shin prior art discloses that alkaline treatment and bleaching increase carboxyl group formation (Shin paragraphs [0057], [0065], [0082]). However, Shin targets wood-derived cellulose and does not suggest at all that such treatments simultaneously improve mechanical properties and transparency of a transparent film composed solely of bacterial nanocellulose”, is not persuasive.
First, in the rejection applied previously and above, Shin is not being relied upon for the specific bacteria cellulose selection, in contrast, Shin is relied upon merely for teaching that that produced by the product-by-process limitations as set forth above.
Second, the Evidence Ref_ Rosson, et al. Applications of regenerated bacterial cellulose: a review. Cellulose 31, 10165–10190 (2024) teaches bacterial cellulose and plant cellulose have an identical chemical structure consisting of β-D-glucose units connected via (1–4) glycosidic bonds with the chemical formula (C6H10O5)n [P10166; Left Column; Para. 2]. Shin further provides clear teaching that the oxidizing a cellulose-based material by irradiating it with an electron beam; adding an electron beam irradiated cellulose material to water to prepare an aqueous solution and stirring [0035-36] for manufacturing cellulose nanofibers [0037], which read on the electron beam irradiation and mechanical treatment on wet bacterial cellulose, further lead to the nanocellulose formation from cellulose, wherein, the cellulose nanofibers having a carboxylate content [0052]; and the nanocellulose are treated with alkali [0057, 65] acting as oxidizing agent [0057] and bleaching process [0082] can accelerate the oxidation of cellulose-based materials by electron beam irradiation [0083] both lead to further generation of the carboxyl groups [0052] are suitable for cellulose with same chemical structure to the cellulose of Wang, and therefore one having ordinary skill in the art would be motivated to apply the processing method from Shin to the cellulose of Wang. This motivation would not require the complete adoption of every teaching of Shin with respect to wood or bacteria-based cellulose, but would merely indicate to one having ordinary skill in the art that said the product-by-process is suitable for the intended purpose. The incorporation therefore would have been obvious.
Third, Shin not only teaches the most nanocellulose is obtained from wood, but also teaches nanocellulose can also be produced from bacteria such as Acetobacter xylinum [0009]. Moreover, Shi does not exclude the bacteria cellulose from the cellulose selection.
Hence, Shin does not teach away the instant application.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented
in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee 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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Zhen Liu whose telephone number is (703)756-4782. The examiner can normally be reached Monday-Friday 9:00 am - 5:00 pm.
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/Z.L./
Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767
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