DETAILED ACTION
An Office Action was mailed 08/05/2025.
Applicant filed a response on 12/01/2025, amended claim 4, canceled claims 1-3 and 6-9, and added claims 10-21.
Claims 4-5 and 10-21 are pending. Claims 4-5 and 10-12 are rejected. Claims 13-21 are withdrawn from consideration.
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 .
Election/Restrictions
Newly submitted claims 13-21 are directed to inventions that lacks unity with the invention originally claimed for the following reasons:
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
Group I, claim 13, drawn to a cosmetic.
Group II, claim 14, drawn to a rubber.
Group III, claim 15, drawn to a resin.
Group IV, claim 16, drawn to a dispersant.
Group V, claim 17, drawn to a machine part.
Group VI, claim 18, drawn to an electrical appliance.
Group VII, claim 19, drawn to an electronic device.
Group VII, claim 20, drawn to a medical product.
Group VIII, claim 21, drawn to a paint.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Claims 13-21 lack unity of invention because even though the inventions of these groups require the technical feature of:
A nanocellulose having an average fiber width of 1 to 200nm and provided by fibrillation of an oxidized cellulose that is an oxide of a cellulose raw material, wherein the oxidized cellulose has a structure in which carboxy groups have been introduced by an oxidation of hydroxyl groups at positions 2 and 3 of a glucopyranose ring, and the oxidized cellulose has a light transmittance of at least 80%, the light transmittance being measured by using an aqueous nanocellulose dispersion obtained by carrying out a fibrillation treatment on an aqueous dispersion of said oxidized cellulose present at a concentration of 0.1 mass% using a planetary centrifugal mixer and conditions of 10 minutes, a revolution rate of 2,000 rpm, and a rotation rate of 800 rpm,
this is not a special technical feature as it does not make a contribution over the prior art in view of Kamiya et al, WO 2020/027307 A1. EP 3831856 A1 is an English language equivalent to WO 2020/027307A1. EP 3831856 A1 (Kamiya) is referenced below.
Kamiya discloses an oxidized cellulose obtained by oxidizing a cellulose raw material without an N-oxyl compound such as TEMPO (Kamiya; [0001] and [0011]). The cellulose raw material is oxidized with hypochlorous acid or a salt thereof having an available chlorine content of 6-14% by mass, while adjusting the pH from 5.0-14.0 (Kamiya; [0024]). The method of mechanical fibrillation can be selected according to the purpose (Kamiya; [0048]).
In Example 1, sodium hypochlorite pentahydrate crystal having an available chlorine content of 42% by mass and water were stirred to achieve an available chlorine content of 14% by mass (Kamiya; [0056]). After warming and stirring using a stirrer, cellulose raw material was added and further stirred (Kamiya; [0057-0058]). The procedure was repeated in Example 2-16, wherein the amount of carboxyl groups of the oxidized cellulose is recorded in Table 1 (Kamiya; [0061] and page 7, Table 1). As is evidenced at ¶¶ [0017-0019] of Applicant’s specification, oxidation of cellulose with hypochlorous acid or a salt thereof results in oxidized cellulose having a structure in which carboxy groups have been introduced by an oxidation of hydroxyl groups at positions 2 and 3 of a glucopyranose ring as presently claimed.
The cellulose nanofibers produced in at least Examples 3 and 14 have a width of 10nm (Kamiya; [0063]). 10nm falls within the claimed average fiber width of 1 to 200nm.
In Reference Example 2, a 0.1% aqueous dispersion of oxidized cellulose obtained from Example 2 was subject to fibrillation until it became transparent, wherein the standard for transparency was a transmittance at 660nm of 90% or higher as subject to UV-VOS measurement (emphasis added) (i.e., a light transmittance of at least 80% as presently claimed) (Kamiya; [0077]). The instant specification at ¶ [0053] teaches that the light transmittance of the claimed oxidized cellulose is measured at 660nm. A softwood pulp was used as the cellulose raw material (Kamiya; [0056-0060]). The oxidized cellulose is fibrillated and nanoized to produce nanocellulose as claimed (Kamiya; [0046] and [0048]).
Although Kamiya does not explicitly disclose wherein the “light transmittance being measured by using an aqueous nanocellulose dispersion obtained by carrying out a fibrillation treatment on an aqueous dispersion of said oxidized cellulose present at a concentration of 0.1 mass% using a planetary centrifugal mixer and conditions of 10 minutes, a revolution rate of 2,000 rpm, and a rotation rate of 800 rpm” as presently claimed, it is noted that the present claims are drawn to a product and not drawn to a method of making. Thus, “[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). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process, and given that Kamiya meets the requirements of the claimed product, i.e., an oxidized cellulose that is an oxide of a cellulose raw material, wherein the oxidized cellulose has a structure in which carboxy groups have been introduced by an oxidation of hydroxyl groups at positions 2 and 3 of a glucopyranose ring, and wherein an aqueous nanocellulose dispersion obtained by carrying out a fibrillation treatment on an aqueous dispersion of said oxidized cellulose present at a concentration of 0.1 mass% has a light transmittance of at least 80%, Kamiya clearly meets the requirements of the present claim.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 13-21 are withdrawn from consideration as being directed to a nonelected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Claim Rejections - 35 USC § 102/103
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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.
Claims 4-5 and 10-21 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Kamiya et al, WO 2020/027307 A1.
Kamiya et al, WO 2020/027307 A1 was cited in the IDS filed 04/04/2023. EP 3831856 A1 is an English language equivalent to WO 2020/027307A1. EP 3831856 A1 (Kamiya) is referenced in the below rejection.
Regarding claim 4, Kamiya discloses an oxidized cellulose obtained by oxidizing a cellulose raw material without an N-oxyl compound such as TEMPO (Kamiya; [0001] and [0011]). The cellulose raw material is oxidized with hypochlorous acid or a salt thereof having an available chlorine content of 6-14% by mass, while adjusting the pH from 5.0-14.0 (Kamiya; [0024]). The method of mechanical fibrillation can be selected according to the purpose (Kamiya; [0048]).
In Example 1, sodium hypochlorite pentahydrate crystal having an available chlorine content of 42% by mass and water were stirred to achieve an available chlorine content of 14% by mass (Kamiya; [0056]). After warming and stirring using a stirrer, cellulose raw material was added and further stirred (Kamiya; [0057-0058]). The procedure was repeated in Example 2-16, wherein the amount of carboxyl groups of the oxidized cellulose is recorded in Table 1 (Kamiya; [0061] and page 7, Table 1). As is evidenced at ¶¶ [0017-0019] of Applicant’s specification, oxidation of cellulose with hypochlorous acid or a salt thereof results in oxidized cellulose having a structure in which carboxy groups have been introduced by an oxidation of hydroxyl groups at positions 2 and 3 of a glucopyranose ring as presently claimed.
In Reference Example 2, a 0.1% aqueous dispersion of oxidized cellulose obtained from Example 2 was subject to fibrillation until it became transparent, wherein the standard for transparency was a transmittance at 660nm of 90% or higher as subject to UV-VOS measurement (emphasis added) (i.e., a light transmittance of at least 80% as presently claimed) (Kamiya; [0077]). The instant specification at ¶ [0053] teaches that the light transmittance of the claimed oxidized cellulose is measured at 660nm. A softwood pulp was used as the cellulose raw material (Kamiya; [0056-0060]). The oxidized cellulose is fibrillated and nanoized to produce nanocellulose as claimed (Kamiya; [0046] and [0048]).
Although Kamiya does not explicitly disclose wherein the “light transmittance being measured by using an aqueous nanocellulose dispersion obtained by carrying out a fibrillation treatment on an aqueous dispersion of said oxidized cellulose present at a concentration of 0.1 mass% using a planetary centrifugal mixer and conditions of 10 minutes, a revolution rate of 2,000 rpm, and a rotation rate of 800 rpm” as presently claimed, it is noted that the present claims are drawn to a product and not drawn to a method of making. Thus, “[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). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process, and given that Kamiya meets the requirements of the claimed product, i.e., an oxidized cellulose that is an oxide of a cellulose raw material, wherein the oxidized cellulose has a structure in which carboxy groups have been introduced by an oxidation of hydroxyl groups at positions 2 and 3 of a glucopyranose ring, and wherein an aqueous nanocellulose dispersion obtained by carrying out a fibrillation treatment on an aqueous dispersion of said oxidized cellulose present at a concentration of 0.1 mass% has a light transmittance of at least 80%, Kamiya clearly meets the requirements of the present claim.
Further, it is noted that Comparative Production Example 2 of the instant specification (herein referred to as the “spec”) replicates Example 2 of Kamiya, differing in that the resulting oxidized product of Kamiya has a carboxyl groups content of 2.26 mmol/g (Kamiya; page 7, Table 1, Example 2), while Comparative Production Example 2 of the spec has a carboxyl group content of 1.12 mmol/g (spec; [0069]). It is unclear why the resulting products are different or how this difference affects the overall results.
Regarding claim 5, Kamiya is relied upon as disclosing the limitations of claim 4 as discussed above. The oxidized cellulose of Example 2 was obtained using sodium hypochlorite pentahydrate (i.e., a salt of hypochlorous acid) (Kamiya; [0056-0059]).
Regarding claim 10, Kamiya is relied upon as disclosing the limitations of claim 4 as discussed above. Kamiya discloses dispersing the oxidized cellulose of Examples 1 and 6 water (Kamiya; [0075]). The dispersions were fibrillated until nano level was achieved and produced transparent liquids, i.e., liquids having a transparency of 90% or higher (Kamiya; [0075-0076] and [0077]). The oxidation product of Example 2 was also dispersed in water (Kamiya; [0077]).
Regarding claim 11, Kamiya is relied upon as disclosing the limitations of claim 4 as discussed above. The cellulose nanofibers produced in at least Examples 3 and 14 have a width of 10nm (Kamiya; [0063]). 10nm falls within the claimed average fiber width of 1 to 200nm. Kamiya, therefore, anticipates oxidized cellulose having average fiber widths as claimed.
Regarding claim 12, Kamiya is relied upon as disclosing the limitations of claim 11 as discussed above.
Kamiya teaches dispersing the nanocellulose the oxidized cellulose of Examples 1 and 6 water, and fibrillating until nano level was achieved, thus producing nanocellulose dispersions. The dispersions have a transparency of 90% or higher (Kamiya; [0075-0076] and [0077]). The oxidation product of Example 2 was also dispersed in water (Kamiya; [0077]).
Claims 4-5 and 10-12 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Matsuki et al, “Nanocellulose Production via One-Pot Formation of C2 and C3 Carboxylate Groups Using Highly Concentrated NaClO Aqueous Solution,” ACS Sustainable Chemistry & Engineering (herein referred to as “ACS”).
Regarding claims 4-5 and 10-12, ACS discloses a one-pot oxidation reaction of cellulose from wood pulp using a highly concentrated solution of sodium hypochlorite pentahydrate, followed by mechanical treatment to form nanocellulose by gentle mechanical disintegration. The resulting nanocellulose showed high optical transparency, average height and length of 2.7-3.2 and 173-398 nm respectively, and oxidation of the hydroxy groups at the C2 and C3 positions of the glucose units (ACS; Abstract).
Softwood bleached kraft pulp (i.e., cellulose raw material) is oxidized with NaClO (i.e., a salt of hypochlorous acid of claim 5) (ACS; page 17801; “Materials” and “Oxidation of Pulp with NaClO”).
The resulting oxidized product was added to pure water to give a suspension (i.e., an oxidized cellulose dispersion of claim 10). A mechanical homogenizer equipped with a 20 mm-diameter shaft was used to process the pulp, followed by disintegration using an ultrasonic homogenizer (ACS; page 17801, “Nanofibrillation”).
The NMR spectra demonstrated that the NaClO oxidation cleaved the C2-C3 bond of anhydroglucose units and converted the secondary hydroxy groups to carboxy groups (i.e., the oxidized cellulose has a structure in which carboxy groups have been introduced by an oxidation of hydroxyl groups at positions 2 and 3 of a glucopyranose ring) (ASC; page 17802, para 2).
Nanocellulose dispersions were prepared (claim 12), and the nanocellulose oxidized for 2 and 6 hours reached a light transmittance at 660nm ˃97% (i.e., a light transmittance of at least 80% as claimed) (ACS; page 17803, para 2) and Fig 5). The fibrillated nanocellulose that was oxidized for 2 and 6 hours had average lengths of 181 and 173nm, and heights of 2.8 and 2.7nm respectively (i.e., falling within the claimed average fiber widths of 1 to 200nm of claim 11) (ACS; page 17803, para 2 and Table 2).
Although ACS does not explicitly disclose wherein the “light transmittance being measured by using an aqueous nanocellulose dispersion obtained by carrying out a fibrillation treatment on an aqueous dispersion of said oxidized cellulose present at a concentration of 0.1 mass% using a planetary centrifugal mixer and conditions of 10 minutes, a revolution rate of 2,000 rpm, and a rotation rate of 800 rpm” as presently claimed, it is noted that the present claims are drawn to a product and not drawn to a method of making. Thus, “[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). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process, and given that ACS meets the requirements of the claimed product, ACS clearly meets the requirements of the present claim.
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.
Claims 4-5 and 10-12 are alternatively rejected under 35 U.S.C. 103 as obvious over Kamiya.
Regarding claim 4, Kamiya teaches an oxidized cellulose obtained by oxidizing a cellulose raw material without an N-oxyl compound such as TEMPO (Kamiya; [0001] and [0011]). The cellulose raw material is oxidized with hypochlorous acid or a salt thereof having an available chlorine content of 6-14% by mass, while adjusting the pH from 5.0-14.0 (Kamiya; [0024]). The method of mechanical fibrillation can be selected according to the purpose (Kamiya; [0048]).
In Example 1, sodium hypochlorite pentahydrate crystal having an available chlorine content of 42% by mass and water were stirred to achieve an available chlorine content of 14% by mass (Kamiya; [0056]). After warming and stirring using a stirrer, cellulose raw material was added and further stirred (Kamiya; [0057-0058]). The procedure was repeated in Example 2-16, wherein the amount of carboxyl groups of the oxidized cellulose is recorded in Table 1 (Kamiya; [0061] and page 7, Table 1). As is evidenced at ¶¶ [0017-0019] of Applicant’s specification, oxidation of cellulose with hypochlorous acid or a salt thereof results in oxidized cellulose having a structure in which carboxy groups have been introduced by an oxidation of hydroxyl groups at positions 2 and 3 of a glucopyranose ring as presently claimed.
The oxidized cellulose is dispersed in water and fibrillated into nano level to obtain a transparent solution, i.e., wherein the standard for transparency was a transmittance at 660nm of 90% or higher (Kamiya; [0046], [0048], [0075-0077]).
Although Kamiya does not explicitly teach wherein the “light transmittance being measured by using an aqueous nanocellulose dispersion obtained by carrying out a fibrillation treatment on an aqueous dispersion of said oxidized cellulose present at a concentration of 0.1 mass% using a planetary centrifugal mixer and conditions of 10 minutes, a revolution rate of 2,000 rpm, and a rotation rate of 800 rpm” as presently claimed, it is noted that the present claims are drawn to a product and not drawn to a method of making. Thus, “[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). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process, and given that Kamiya meets the requirements of the claimed product, Kamiya clearly meets the requirements of the present claim.
Regarding claim 5, Kamiya is relied upon as teaching the limitations of claim 4 as discussed above. The oxidized cellulose of Example 2 was obtained using sodium hypochlorite pentahydrate (i.e., a salt of hypochlorous acid) (Kamiya; [0056-0059]).
Regarding claim 10, Kamiya is relied upon as teaching the limitations of claim 4 as discussed above. Kamiya teaches dispersing the oxidized cellulose of Examples 1 and 6 water (Kamiya; [0075]). The dispersions were fibrillated until nano level was achieved and produced transparent liquids, i.e., liquids having a transparency of 90% or higher (Kamiya; [0075-0076] and [0077]). The oxidation product of Example 2 was also dispersed in water (Kamiya; [0077]).
Regarding claim 11, Kamiya is relied upon as teaching the limitations of claim 4 as discussed above. The cellulose nanofibers produced in at least Examples 3 and 14 have a width of 10nm (Kamiya; [0063]). 10nm falls within the claimed average fiber width of 1 to 200nm.
Although Kamiya does not explicitly teach the transparency of Examples 3 and 14, the oxidized cellulose of Example 14 has an amount of carboxyl groups (mmol/g) of 0.6 (Kamiya; page 7, Table 1). Kamiya discloses that when the amount of carboxyl groups was 0.55 mmol/g or more, the liquid became almost transparent (Kamiya; [0076]). Therefore, it is clear that the nanofibrillated oxidized cellulose of Kamiya having an amount of carboxyl groups of 0.55 mmol/g or more would meet the claimed average fiber width and transparency.
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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
Regarding claim 12, Kamiya is relied upon as teaching the limitations of claim 11 as discussed above.
Kamiya teaches dispersing the oxidized cellulose of Examples 1 and 6 in water, and fibrillating until nano level was achieved, thus producing nanocellulose dispersions. The dispersions have a transparency of 90% or higher (Kamiya; [0075-0076] and [0077]). The oxidation product of Example 2 was also dispersed in water (Kamiya; [0077]).
Claims 4-5 and 10-12 are alternatively rejected under 35 U.S.C. 103 as obvious over ACS.
Regarding claims 4-5 and 10-12, ACS teaches a one-pot oxidation reaction of cellulose from wood pulp using a highly concentrated solution of sodium hypochlorite pentahydrate, followed by mechanical treatment to form nanocellulose by gentle mechanical disintegration. The resulting nanocellulose showed high optical transparency, average height and length of 2.7-3.2 and 173-398 nm respectively, and oxidation of the hydroxy groups at the C2 and C3 positions of the glucose units (ACS; Abstract).
Softwood bleached kraft pulp (i.e., cellulose raw material) is oxidized with NaClO (i.e., a salt of hypochlorous acid of claim 5) (ACS; page 17801; “Materials” and “Oxidation of Pulp with NaClO”).
The resulting oxidized product was added to pure water to give a suspension (i.e., an oxidized cellulose dispersion of claim 10). A mechanical homogenizer equipped with a 20 mm-diameter shaft was used to process the pulp, followed by disintegration using an ultrasonic homogenizer (ACS; page 17801, “Nanofibrillation”).
The NMR spectra demonstrated that the NaClO oxidation cleaved the C2-C3 bond of anhydroglucose units and converted the secondary hydroxy groups to carboxy groups (i.e., the oxidized cellulose has a structure in which carboxy groups have been introduced by an oxidation of hydroxyl groups at positions 2 and 3 of a glucopyranose ring) (ASC; page 17802, para 2).
Nanocellulose dispersions were prepared (claim 12), and the nanocellulose oxidized for 2 and 6 hours reached a light transmittance at 660nm ˃97% (i.e., a light transmittance of at least 80% as claimed) (ACS; page 17803, para 2) and Fig 5). The fibrillated nanocellulose that was oxidized for 2 and 6 hours had average lengths of 181 and 173nm, and heights of 2.8 and 2.7nm respectively (i.e., falling within the claimed average fiber widths of 1 to 200nm of claim 11) (ACS; page 17803, para 2 and Table 2).
Although ACS does not explicitly teach wherein the “light transmittance being measured by using an aqueous nanocellulose dispersion obtained by carrying out a fibrillation treatment on an aqueous dispersion of said oxidized cellulose present at a concentration of 0.1 mass% using a planetary centrifugal mixer and conditions of 10 minutes, a revolution rate of 2,000 rpm, and a rotation rate of 800 rpm” as presently claimed, it is noted that the present claims are drawn to a product and not drawn to a method of making. Thus, “[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). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process, and given that ACS meets the requirements of the claimed product, ACS clearly meets the requirements of the present claim.
Applicant cannot rely upon the certified copy of the foreign priority application to overcome this rejection because a translation of said application has not been made of record in accordance with 37 CFR 1.55. When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216.
Response to Arguments
1) Applicant’s arguments, see Remarks, pages 5-8, filed 12/01/2025, with respect to 35 U.S.C. 102(a)(1), or alternative 35 U.S.C. 103 rejection of claims 4-5 over WO 2011/118476 A1 (Katsukawa) have been fully considered and are persuasive. The rejections over Katsukawa have been withdrawn.
Specifically, Katsukawa discloses oxidizing cellulose with TEMPO, in the presence of sodium bromide and sodium hypochlorite, which results in oxidation at the C6-position of the glucose unit as is evidenced by Fig 1 (Remarks, page 6). Similarly, provided evidentiary reference Goi et al, US 2016/0200964 A1, discloses that oxidizing cellulose in the presence of TEMPO and a co-oxidizing agent results in selective oxidation at the C6 positioned hydroxyl group of the glucose unit, wherein sodium hypochlorite is a preferred co-oxidizing agent (Goi; [0035], [0041] and [0048]). The attached evidentiary reference, Wang et al, CN 10978972A, further provides evidence that the oxidation system TEMPO/NaBr/NaClO results in oxidation of the phenolic hydroxyl group at the C6 position of cellulose (Wang; Figure 1 and Example 1 of English translation). ACS as relied upon above discloses that the C6 hydroxy groups of anhydroglucose units can be oxidized with TEMPO (ACS; page 17800, para 1). NMR spectra demonstrated that NaClO oxidation cleaved the C2-C3 bond of anhydroglucose units and converted the secondary hydroxy groups to carboxy groups (ASC; page 17802, para 2).
The claims, as amended, require that the oxidized cellulose has a structure in which carboxy groups have been introduced by an oxidation of hydroxyl groups at positions 2 and 3 of a glucopyranose ring. Because the oxidation methods of Katsukawa use TEMPO, it is clear from the evidence of record that the oxidation products of Katsukawa do not meet the presently claimed oxidation products.
2) With respect to 35 U.S.C. 102(a)(1), or alternative 35 U.S.C. 103 rejection over Kamiya, Applicant's arguments filed 12/01/2025 have been fully considered but they are not persuasive.
Applicant primarily argues:
“Kamiya fails to meet the requirements of the claimed product (as amended).
In this regard, the claimed oxidized cellulose has a light transmittance of at least 80% when it is measured under the claimed condition(s).
The instant application indicates that in order to increase the light transmittance (easily fibrillated), the oxidation reaction of the cellulose raw material needs to be developed efficiently.
See Specification, paragraphs [0052] and [0055]…”
Remarks, page 9.
From paragraph [0052], Applicant highlights:
“The present oxidized cellulose can be thoroughly fibrillated even using mild fibrillation conditions … and exhibits a high light transmittance.”
Remarks, page 9.
Examiner respectfully traverses that Kamiya fails to meet the requirements of the claimed product because Kamiya teaches that the method of fibrillation can be selected as appropriate, such as using a variety of known mixers and agitators (Kamiya; [0048]). Kamiya also discloses light transmittance (transparency) of 90% or higher (Kamiya; [0076-0077]).
3) From paragraph [0055] Applicant highlights:
“As a consequence, it is thought that the fibrillatability of the oxidized cellulose is enhanced in the present embodiment because the oxidation treatment reduces the number of hydrogen bonds in each microfibril to be cleaved by fibrillation and because repulsion between microfibrils is strengthened due to an increase in the carboxy group content accompanying the progress of the oxidation.”
Remarks, page 9.
Examiner respectfully traverses that this disclosure distinguishes from Kamiya because Kamiya teaches that when contents of carboxyl groups in oxidized cellulose is from 0.55 mmol/g to 3.0 mmol/g, fibrillation can be more easily performed (Kamiya; [0043]).
4) Applicant further argues:
“The instant application (at paragraph [0032]) also states that ‘[i]n order to efficiently develop the oxidation reaction of the cellulose raw material, the cellulose raw material + aqueous sodium hypochlorite solution mixture is preferably stirred during the oxidation reaction.’
Furthermore, the Production Examples of the present application employed a stirrer having a propeller stirring blade to proceed the oxidation. In contrast, Comparative Production Example 2 of the present application employed a magnetic stirrer to proceed the oxidation. Applicant submits that due to the difference in stirring methodology, the light transmittance of Examples is much higher than that of Comparative Example 2.
Similar to Comparative Example 2, the Examples of Kamiya employed a magnetic stirrer. As such, the light transmittance is expected to be much lower than 80%, as claimed. Thus, for at least these reasons, Kamiya fails to meet the requirements of the claimed product (as amended).”
Remarks, page 10.
Examiner respectfully traverses for the following reasons. Paragraph [0032] of the specification teaches both propeller blade stirring and magnetic stirring as appropriate. Kamiya teaches that the method of mixing is not limited (Kamiya; [0038]). Although Applicant asserts that the Examples of Kamiya employ a magnetic stirrer, there is no evidence of record showing that Kamiya uses a magnetic stirrer. Examiner notes the Examples of Kamiya generally recite “stirring with a stirrer” (Kamiya; [0057]).
In response to applicant's argument that Kamiya fails to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., “employing a stirrer having a propeller stirring blade”) 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).
Further, a single example (e.g., Comparative Example 2 of the specification) is not sufficient evidence to prove that Kamiya does not disclose or teach the claimed invention, as Kamiya discloses at least two additional oxidized nanocellulose Examples that meet the claimed light transmittance requirements (Kamiya; [0076], Examples 1 and 6).
5) Applicant lastly argues:
“Furthermore, nowhere does Kamiya disclose or suggest methodology to increase the light transmittance. Nowhere is there any evidence/information suggesting that the products of Kamiya could or should meet the requirements of the claimed product (as amended). In addition, there would have been no motivation (in the context of Kamiya) to modify the methodology of Kamiya in the manner necessary to arrive at the claimed features.”
Remarks, page 10.
Examiner respectfully disagrees because Kamiya does teach a methodology to increase light transmittance. Kamiya discloses that when the amount of carboxyl groups was 0.55 mmol/g or more, the liquid became almost transparent after ultrasonic homogenization or stirring (Kamiya; [0076]).
Therefore, Applicant’s Remarks have been fully considered, but are not deemed persuasive.
Upon updating the search with respect to the amended claims, a new grounds of rejection is made over ACS.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Banket et al, US 5414079, teaches an oxidized cellulose product from a cellulose material using a hypochlorite solution (Abstract and col. 2, lines 17-20). The oxidized cellulose can be used in films, dispersions, gels, pharmaceuticals, cosmetics and other products (Abstract).
Mori, WO 2020066537 A1, teaches a composite material comprising cellulose nanofiber and a resin (machine translation, page 1, lines 50-51). The CNF is produced by a solvothermal treatment of wood chips, followed by treatment with an aqueous solution of hypochlorous acid (machine translation, page 3, lines 26-29).
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 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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/CDL/Examiner, Art Unit 1732
/CORIS FUNG/Supervisory Patent Examiner, Art Unit 1732