DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This application is a national stage entry under 35 U.S.C. §371 of International Application No. PCT/JP2021/047600 filed 12/22/2021.
Acknowledgment is made of applicant's claim for foreign priority under 35 U.S.C. §119(a)-(d) by Application No. JP 2021-001427 and JP 2021-065420 filed 1/7/2021 and 4/7/2021, which papers have been placed of record in the file.
Claims 1-13 are pending.
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.
Claims 1-6, 8-13 are rejected under 35 U.S.C. 103 as being unpatentable over Laukkanen et al. (WO 2011/151523).
Regarding claim 1: Laukkanen is directed to a process for stabilization of particulate materials, comprising:
Providing an unconsolidated particulate material comprising a weight fraction of at least 50% mineralized particles in a size range of <1 μm to 2mm, i.e. finer that medium fine sand, medium fine sand, fine sand (p. 4 Laukkanen), the unconsolidated particle has a geotechnical water content water content of from 10wt% to 1000wt%. Specifically, Example 1 comprises adding 4.0 ml of an aqueous solution of microfibrillated cellulose (MFC) to 25 grams of dry soil material, wherein MFC is an aqueous dispersion of 0.05% or 0.10% fibrillated cellulose. It follows the geotechnical water content is about 16 wt% geotechnical water content.
The unconsolidated particulate material is mixed 0.1% MFC dispersion (equivalent to wt% on a dry weight basis of a fibrillated cellulose).
The fibrillated cellulose comprises a weight fraction of at least 75% cellulose fibrils having an aspect ratio of length to width of ≥ 20 in a fibrillated cellulose fibrils fraction. Specifically, the aspect ratio is very high, including a length of more than 1 micrometer and diameter of 2-12 nm (p. 5 Laukkanen) and
Emplacing the admixed material at a site to provide a stabilized material over a stabilization time. Specifically, the treated soils are used to erosion stabilization (p. 11 Laukkanen).
Laukkanen doesn’t specifically mention the shear strength of the particulate material, nor the stabilized material at a stabilization time endpoint. However, the composition produced in Laukkanen is substantially identical to the composition produced in the instant invention.
Case law holds that 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). MPEP 2112.01(I).
Hence, Laukkanen suggests a composition having a shear strength of the particulate material, as well as the stabilized material at a stabilization time endpoint, within the scope of the claims. Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
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, since one skilled in the art would not understand how to obtain the claimed properties with only the claimed reactants, claimed amounts, and substantially similar process of making.
Regarding claim 2: The mineralized particles include 100% in a size range of <1 μm to 2mm. The diameter (width) of the MFC includes less than 1 μm (p. 5 Laukkanen). Hence, 100% of the particles include a diameter of MFC that falls within the mineralized particles in a size range of <1 μm.
Regarding claim 3: Laukkanen doesn’t specifically recite a stabilization time. However, Laukkanen teaches process can be used to stabilize soil material and control erosion. Therefore the claimed stabilization time are result effective variable. Case law holds that “discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.” See MPEP 2144.05(II). In the present case, one skilled in the art could have easily selected a stabilization time less than 1 year depending on the soil to be stabilized. Therefore it would have been obvious to one skilled in the art at the time the invention was filed to have arrived at a process comprising a stabilization time within the scope of the claims.
Regarding claim 4: Example 1 comprises predispersing the fibrillated cellulose in an aqueous medium prior to mixing with the unconsolidated particulate matter.
Regarding claim 5: Laukkanen doesn’t mention when a water retention value of the fibrillated cellulose.
However, the fibrillated cellulose produced in Laukkanen is substantially identical to the Laukkanen produced in the instant invention, as discussed previously.
Case law holds that 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). MPEP 2112.01(I).
Hence, Laukkanen suggests a fibrillated cellulose having a water retention value within the scope of the claims. Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
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, since one skilled in the art would not understand how to obtain the claimed properties with only the claimed reactants, claimed amounts, and substantially similar process of making.
Regarding claim 6: The stabilized material in Example 1 comprises 16 wt% geotechnical water.
Regarding claim 8: Laukkanen doesn’t mention when a specific gravity of the fibrillated cellulose.
However, the fibrillated cellulose produced in Laukkanen is substantially identical to the Laukkanen produced in the instant invention, as discussed previously.
Case law holds that 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). MPEP 2112.01(I).
Hence, Laukkanen suggests a fibrillated cellulose having a surface area or specific gravity within the scope of the claims. Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
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, since one skilled in the art would not understand how to obtain the claimed properties with only the claimed reactants, claimed amounts, and substantially similar process of making.
Regarding claim 9: The mineral particles comprise clay and sand (silicate) (p. 4 Laukkanen).
Regarding claim 10: The fibrillated cellulose can be produced from a pulp that is a grinder, comminutor, homogenizer, fluidizer, micro- or macrofluidizer and/or ultrasonic disintegrator (equivalent to a fibrillated cellulose produced from pulp that is a thermomechanical pulp).
Regarding claim 11: The working examples utilize a sulfate pulp manufactured from birch (equivalent to a chemical pulp) (p. 12 Laukkanen).
Regarding claim 12: The pulp is produced from cellulose including hardwood, or softwood (p. 4 Laukkanen).
Regarding claim 13: Laukkanen doesn’t mention the admixed material dries more rapidly than unconsolidated particulate matter.
However, the admixed material produced in Laukkanen is substantially identical to the admixed material produced in the instant invention, as discussed previously.
Case law holds that 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). MPEP 2112.01(I).
Hence, Laukkanen suggests an admixed material that dries more rapidly than unconsolidated particulate matter. Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
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, since one skilled in the art would not understand how to obtain the claimed properties with only the claimed reactants, claimed amounts, and substantially similar process of making.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Laukkanen as applied to claim 1 above, and further in view of Heiskanen et al. (US 2023/0243099).
Regarding claim 7: Laukkanen describes the MFC is a high surface area (p. 5 Laukkanen), although falls short of disclosing any values.
Heiskanen is directed to a method for producing paper comprising microfibrillated cellulose. Heiskanen characterizes a high surface area MFC is from 50-200 m2/g ([0050] Heiskanen). One skilled in the art would have been motivated to have selected a MFC within the scope of the claims since Heiskanen discloses high surface area MFC include a surface are from 50-200 m2/g as taught by Heiskanen. Therefore, it would have been obvious to one skilled in the art at the time the invention was filed to have selected a MFC having a surface area within the scope of claim 7.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT T BUTCHER whose telephone number is (571)270-3514. The examiner can normally be reached Telework M-F 9-5 Pacific Time Zone.
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/ROBERT T BUTCHER/Primary Examiner, Art Unit 1764