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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous office action has been withdrawn pursuant to 37 CFR 1.114.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 30 March 2026 has been entered.
The Request for Continued Examination filed has been considered. The following information has been made of record in the RCE filed for the instant application:
1. Claims 4 and 13 have been canceled.
2. No new Claims have been added.
3. Claims 1, 10-12, 15, and 17-18 have been amended.
4. Remarks drawn to rejection under 35 USC 103.
Claims 1-3, 5-12 and 14-18 are pending in the case. Claims 8-9 and 17-18 have been withdrawn from consideration. Claims 1-3, 5-7, 10-12 and 14-16 are under prosecution.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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.
Claim(s) 1-3, 5-7, 10-12 and 14-16 are rejected under 35 U.S.C. 103 as being unpatentable over Vuorinen et al (WO 2019/238327 A1; cited in IDS filed 01/19/2023; of record) in view of Choi et al (Applied Surface Science, 2008, 255, 2466-2473; of record).
Vuorinen teaches a method of making a nanocellulose support wherein a dispersion of the nanocellulose is applied on a support and then the dispersion is dried (page 32, lines 15-32; method of claim 1-steps 1 and 2; support reads on container as in claim 1 step 1). The nanofibrillar cellulose may be formed as a layer on a support like paper, board, gauze or other nonwoven (page 34, lines 23-25; a planar shaped container as in claim 2). The nanofibrillar cellulose can be anionically modified (page 75, claim 1 of Vuorinen; limitation of claim 12). The coated product contains 0.1-20% of the nanofibrillar cellulose (page 37, line 1). The nanofibrillar cellulose is in water. Therefore, the nanofibrillar cellulose can be made as 0.01% to 5% solution in water (as in claims 5 and 14).
Vuorinen does not teach activating a hydroxyl group hidden inside the nanocellulose thin film by using electron beam irradiation to expose the hydroxyl group to an outside of the nanocellulose thin film such that a hydrophilicity of the nanocellulose thin film is increased as in claim 1, and does not teach the limitations of claims 6-7, the method of claim 10, and the limitations of claims 11, 15 and 16.
Choi teaches that irradiation of cellulose with electron beam improved the surface properties and preserves the fiber’s mechanical and thermal properties (Abstract; step 3 as in claim 1 and step 4 in claim 10). Therefore, electron beam irradiation of the nanocellulose of Vuorinen would activate an OH group hidden inside, and the nanocellulose solution would penetrate inot the nanocellulose thin film after the electron beam irradiation and push the air bubbles inside the nanocellulose thin film outward so as to remove the air bubbles as in claims 1 and 10. The fibers are placed in a polyethylene bag, which is in the presence of air and irradiated with the beam current being 4.95 mA and a transport velocity of 10m/min (page 2467, left col., part 2.1). One of ordinary skill in the art can adjust the process parameters as in claims 6-7 and 15-16 using this teaching of Choi.
Regarding claims 10 and 11, since Vuorinen teaches coating a surface with the nanocellulose and then irradiating it with electron beam, one of ordinary skill in the art can use the same method for making the nanocellulose support using the steps as in claim 10 by substituting the support of Vuorinen with the beads and dropping the bead in a container and dropping a surface treated nanocellulose solution into the container, drying the combination to get a nanocellulose film on the surface of the bead and then irradiating with the electron beam to modify the surface properties. It would be obvious to use the beads as in claim 11. It is well within the skill level of the artisan to use the steps recited in claim 10 to make the nanocellulose support based on the combined teachings of Vuorinen and Choi.
MPEP 2141 states, "The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "[R]ejections on obviousness cannot be sustained by mere conclusatory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.'" KSR, 550 U.S. at, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include: (A) Combining prior art elements according to known methods to yield predictable results; (B) Simple substitution of one known element for another to obtain predictable results; (C) Use of known technique to improve similar devices (methods, or products) in the same way; (D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results; (E) " Obvious to try " choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success; (F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention."
According to the rationale discussed in KSR above, the rationale in (G) above is seen to be applicable here since based on the prior art teachings nanocellulose is known to applied to a surface (Vuorinen), and electron beam irradiation improves the surface properties of the nanocellulose (Choi). Thus, it is obvious to combine prior art elements and arrive at the instant methods of producing nanocellulose support.
Thus, the claimed invention as a whole would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention over the combined teachings of the prior art. One of ordinary skill in the art would be motivated to look for nanocellulose coated products with improved properties for the uses taught by Vourinen (pages 3-5).
Response to Applicant’s Remarks
Applicant has traversed the rejection of claims 1-7 and 10-16 under 35 USC 103 of record arguing that Vuorinen discloses applying a nanocellulose dispersion and drying it to form a film. However, it does not describe or recognize the formation of hydrogen-bond-induced hidden hydroxyl groups within the film.
Choi fails to disclose such a structure. Choi relates to electron beam irradiation of cellulose materials but does not teach hydroxyl groups being closed by hydrogen bonding during drying or hidden inside a nanocellulose thin film.
As none of the cited art, individually or in combination, disclose or suggest at least the above-noted features of claims 1 and 10, applicant submits the inventions defined by claims 1 and 10, and dependents thereof are not rendered obvious
(Remarks-page 7).
Applicant’s arguments are not persuasive. Vuorinen teaches a method of making a nanocellulose support wherein a dispersion of the nanocellulose is applied on a support and then the dispersion is dried as in claim 1 and the limitations of claims 2, 5 and 14. Vuorinen’s method discloses steps 1 and 2 as in claim 1. This is also similar to steps 1-3 in claim 10. Since Vuorinen teaches the same steps recited in claims 1 and 10, the hydroxyl groups of the nanocellulose solution will be closed by hydrogen bonds during the drying process such that the hydroxyl groups are hidden inside the nanocellulose film.
Choi teaches irradiation of cellulose with electron beam. Even though there is no express teaching by Choi that electron beam irradiation of cellulose activates a hydroxyl group hidden inside the nanocellulose thin film by using electron beam irradiation to expose the hydroxyl group to an outside of the nanocellulose thin film such that a hydrophilicity of the nanocellulose thin film is increased, one of ordinary skill in the art will recognize and also have a reasonable expectation of success that electron beam irradiation of cellulose will activate a hydroxyl group hidden inside the nanocellulose thin film by using electron beam irradiation to expose the hydroxyl group to an outside of the nanocellulose thin film such that a hydrophilicity of the nanocellulose thin film is increased as claimed. The nanocellulose solution would also penetrate into the nanocellulose thin film after the electron beam irradiation and pushed air bubbles inside the nanocellulose thin film outward so as to remove the air bubbles as in claims 1 and 10. Applicant has just argued that such a teaching is not seen in Vuorinen and Choi but has not shown convincingly that the electron beam irradiation of cellulose of Vuorinen will not activate a hydroxyl group hidden inside the nanocellulose thin film to expose the hydroxyl group to an outside of the nanocellulose thin film such that a hydrophilicity of the nanocellulose thin film is increased, and the nanocellulose solution would also penetrate into the nanocellulose thin film after the electron beam irradiation and pushed air bubbles inside the nanocellulose thin film outward so as to remove the air bubbles as in claims 1 and 10.
The combined teachings of the cited references do render the instant claims obvious. The rejection is maintained.
Conclusion
1. Elected claims 1-3, 5-7, 10-12 and 14-16 (Group I) are rejected.
2. Claims 8-9 and 17-18 (Group II) are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a non-elected invention, there being no allowable generic or linking claim.
3. Claims 4 and 13 have been canceled.
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/GANAPATHY KRISHNAN/Primary Examiner, Art Unit 1693