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 .
Election/Restrictions
Applicant’s election without traverse of claims 1-4 in the reply filed on 01/06/2026 is acknowledged.
Claims 5-8 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 01/06/2026.
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.
Claim(s) 1-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kamiya et al. (WO2018230354; Google Patents 01/24/2026).
Regarding claim 1, Kamiya et al. teaches a method for producing cellulose nanofibers comprising oxidizing a cellulose raw material with hypochlorous acid or a salt thereof which meets the limitation of a nanocellulose that is an oxide of a cellulose raw material (page 2, paragraphs 6-18). Kamiya et al. teaches method for producing cellulose nanofibers without N-oxyl compounds which meets the limitation wherein the nanocellulose substantially does not comprise a N-oxyl compound (page 2, paragraphs 5-10). Kamiya et al. teaches widths from 2 nm to 100nm which overlaps with an average fiber width of from at least 1 nm to not more than 200 nm (page 3; paragraphs 10-14). As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Kamiya et al. teaches production method of the present invention will be described below using sodium hypochlorite as an example of the hypochlorous acid or the salt thereof which meets the limitation of a hypochlorous acid or a salt thereof (page 2, paragraphs 10-20).
Kamiya et al. does not teach the property of zeta potential, however, paragraph 46 of Applicant’s specification states “fiber width and zeta potential of the nanocellulose can be adjusted to desired values by adjusting, e.g., the reaction time, reaction temperature, and stirring conditions for the oxidation reaction”. Paragraph 45 of Applicant’s specification states “reaction temperature in the oxidation reaction is preferably 15° C. to 100° C.” and Kamiya et al. teaches reaction temperature of 15° C to 40° C (page 3, paragraph 3). Paragraph 45 of Applicant’s specification states “reaction time for the oxidation reaction can be established in accordance with the degree of development of the oxidation, but about 15 minutes to 50 hours is preferred” and Kamiya et al. teaches reaction time of about 15 minutes to about 6 hours (page 3, paragraphs 3-5). Paragraph 37 of Applicant’s specification states “available chlorine concentration in the reaction solution of the hypochlorous acid or salt thereof is preferably 6 to 43 mass %” and Kamiya et al. teaches having an available chlorine concentration of from 14% by mass to 43% by mass (page 2, paragraphs 10-20). It is clear the cellulose nanofibers taught by Kamiya et al. would possess the claimed zeta potential because the claimed nanocellulose fiber and cellulose nanofibers taught by Kamiya et al. are produced by identical or substantially identical processes. 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 2, Kamiya et al. teaches widths of cellulose nanofibers are from 2 nm to 100 nm which overlaps with wherein the average fiber width is from at least 1 nm to not more than 5 nm (page 3; paragraphs 10-14). As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 3, Kamiya et al. teaches widths of cellulose nanofibers are from 2 nm to 100 nm and length of fiber length of the cellulose nanocrystals is from about 100 nm to about 1,000 nm and produces and aspect ratio of 1 to 500 which overlaps with , wherein the nanocellulose has an aspect ratio of from at least 20 to not more than 150 (page 3; paragraphs 10-14). As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 4, Kamiya et al. does not teach wherein a mixture made by mixing the nanocellulose with water to give a solids concentration of 0.1 mass % has a light transmittance of at least 95%. It is clear the cellulose nanofibers taught by Kamiya et al. would produce the claimed light transmittance in water with a solids concentration of 0.1 mass % because the claimed nanocellulose fiber and cellulose nanofibers taught by Kamiya et al. are produced by identical or substantially identical processes. 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).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim1-4 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-23 of copending Application No. 18/269,320 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claimed product is made by a process that is identical or substantially identical to the process claimed by copending Application No. 18/269,320.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-4 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of copending Application No. 18/036,467 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claimed product is made by a process that is identical or substantially identical to the process claimed by copending Application No. 18/036,467.
.This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-4 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/026,469 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both the pending application and copending Application No. 18/026,469 claim “nanocellulose comprises an oxide of a cellulose raw material by a hypochlorous acid or a salt thereof, is substantially free of a N-oxyl compound, and satisfies following (I) and/or (II): (I) zeta potential is −30 mV or less; and (II) light transmittance in a mixed solution in which the nanocellulose and water are mixed and which has a solid content concentration of 0.1 mass % is 95% or more.”
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-4 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of copending Application No. 18/014,550 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claimed product is made by a process that is identical or substantially identical to the process claimed by copending Application No. 18/014,550.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-4 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of U.S. Patent No. 11,713,360. Although the claims at issue are not identical, they are not patentably distinct from each other because the claimed product is made by a process that is identical or substantially identical to the process claimed by U.S. Patent No. 11,713,360.
Conclusion
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/GUINEVER S GREGORIO/Primary Examiner, Art Unit 1732 01/24/2026