Detailed Office Action
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 on 5/22/2026 has been entered.
Claims 1, 7, and 16 have been amended. Claims 2 and 4 have been canceled. Claims 1, 3, and 5-17 are pending with claims 5-17 withdrawn from consideration.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 .
Response to Arguments
In light of amendment and argument the SPERGER reference has been withdrawn.
Applicant argues that the Examiner should withdraw STIGGSON as it does not recognize the blend of cotton and virgin dissolving pulp.
In response the applicant does not claim any specific concentrations in claim 1. Virgin dissolving pulp can be made out of cotton itself (i.e. cotton linters). Therefore the only difference between the mixture is the viscosity. The final viscosity of the pulp is indistinguishable from 100% recycled cotton pulp without the addition of blend ranges.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1 and 3 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
In claim 1 the applicant does not have support for excluding viscose, modal, and lyocell. The Examiner suggests the following alternative amendments which the applicant has support for and still overcomes the SPERGER reference: “fabric waste and cotton cellulosic fiber
Claim 3 depends from claim 1 and is similarly rejected.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1 and 3 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
As for claim 1 the applicant claims intrinsic viscosity in ml/g. The applicant does not specify the method/solvent used to test the intrinsic viscosity. The solvent used affects the measured viscosity “Comparison of Various Solvents for Determination of Intrinsic Viscosity and Viscometric Constants for Cellulose”. As the method of measuring the viscosity/solvent is not clear the claim fails to particularly point out its metes and bounds. For the purpose of examination the Examiner interprets the measurement as CED viscosity. For example STIGGSON, below, uses ISO 5351:2010 a CED viscosity method.
Claim 3 depends from claim 1 and is similarly rejected.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim Rejections - 35 USC § 103
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 1 and 3 are rejected under 35 U.S.C. 102(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over WO 2020/251463A1 STIGSSON, hereinafter STIGGSON.
STIGGSON was filed on 6/10/2020 which is prior to the earliest effect date of the instant invention of 8/11/2020.
As for claim 1, STIGGSON discloses a cellulosic material with an intrinsic viscosity of 150-250 ml/g [pg. 7 par. 6] which overlaps with sufficient specificity to the instant claimed range sufficient for anticipation or in the alternative makes a prima facie case of obviousness. The Examiner notes that the source of the cellulosic material is a product-by-process limitation [MPEP 2133], nevertheless, STIGGSON discloses that the source of the material is cellulosic waste [pg. 6 par. 4]. STIGGSON discloses waste cotton [pg. 6 par. 4]. The intended use of the preamble “for the production of regenerated cellulosic fiber” is non-limiting, nevertheless,
STIGGSON discloses the product is used to make a regenerated cellulose [pg. 10 par. 4, claim 1].
The Examiner notes that the source of the cellulosic material is a product-by-process limitation [MPEP 2113], nevertheless, STIGGSON discloses that the source of the material is cellulosic textiles [pg. 1 par. 1 and pg. 6 par. 4].
The applicant does not give a specific amount of virgin dissolving grade pulp. Therefore there could be less than 0.1% virgin dissolving grade pulp. Further, the making of the final product of cellulosic material for production of regenerated cellulosic material combining virgin and reclaimed fiber is a product by process difference.
"[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)
For example, in the instant case mixing <0.1 of virgin pulp of 400 to 550 ml/g intrinsic viscosity with reclaimed cellulosic material with 170 ml/g to 280 ml/g will result in the substantially the same product or an obvious variant thereof. For example 200 ml/g *.999 + 500 ml/g*0.001 equals a pulp with an intrinsic viscosity of 200.3 which is still within the range of the reclaimed cellulosic material (199.8+ 0.5 = 200.3)
Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an nonobvious difference between the claimed product and the prior art product.
In re Marosi, 710 F.2d 799, 803, 218 USPQ 289, 292-33 (Fed. Cir. 1983)
As for claim 3, 200 ml/g *.90 + 550 ml/g*0.10 = 235 ml/g. 235 ml/g overall viscosity of the final product within 90% reclaimed and 10% virgin is still within the viscosity range of 100% reclaimed of 170 ml/g to 280 ml/g. That is there is no apparent structural difference between 90% reclaimed cotton and 100% reclaimed cotton.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANTHONY J CALANDRA whose telephone number is (571)270-5124. The examiner can normally be reached Monday-Friday 7:45 AM -4:15 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Abbas Rashid can be reached at (571)270-7457. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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ANTHONY J. CALANDRA
Primary Examiner
Art Unit 1748
/Anthony Calandra/Primary Examiner, Art Unit 1748
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