Detailed Office Action
The communication dated 9/10/2025 has been entered and fully considered.
Claims 1 and 3 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 Claims 1, 3, and 5-17 are pending with claims 5-17 withdrawn from consideration.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 .
Election Restriction
Applicant’s election of Group I in the reply filed on 9/10/2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Response to Arguments
In light of amendment the 112(b) rejection of claim 3 has been withdrawn.
Applicant argues that SPERGER uses a “man-made cellulosic material”. The applicant argues that this does not meet the amended language of claim 1 of “that is obtained from waste cotton-rich fabric or cellulosic fiber or fabric waste” as required by amended claim 1.
In response the claim specifically requires the following “cellulosic material waste comprising cotton selected from pre-consumer cotton-rich fabric waste, post-consumer cotton-rich fabric waste, or cellulosic fiber.” Lyocell is a cellulosic fiber. There is nothing in the claim that excludes man-made cellulosic fibers like viscose, rayon, or lyocell. The applicant would at a minimum need to remove the “cellulosic fiber” limitation. The Examiner notes the applicant would then also need to show a structural different in the pulps between cotton and man-made fibers as the source of the fiber is a product-by-process limitation.
Applicant argues that in SPERGER the waste cellulosic fibers have been treated in alkali to achieve the claimed viscosity.
There is nothing in the claim that excludes the pretreatment of the waste cellulosic fibers before mixing with the dissolving pulp to form the claimed product. To the contrary, the applicant both performs a mechanical treatment [instant specification pg. 5 lines 25-30] and then performs its own chemical treatment to decrease viscosity of the recycled pulp [instant specification pg. 6 lines 1-9].
Applicant argues that STIGGSON only teaches cellulosic fiber from purified waste. The applicant argues that STIGSSON fails to disclose virgin grade dissolving pulp.
The Examiner completely agrees that STIGSSON does not teach virgin grade dissolving pulp. However, the combination of recycled pulp and virgin pulp is a product-by-process limitation. The applicant needs to show a structural difference between a 100% recycled pulp (prior art) and a 99.99% recycled pulp and 0.1% virgin pulp (which the current claim reads on). Nota bene, instant claim3 is not rejected under STIGSSON.
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.
Claims 1 and 3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. 10,370,778 SPERGER, hereinafter SPERGER.
As for claim 1, SPERGER discloses a recycled cellulosic waste fiber of 185 ml/g which falls within the claimed range [col. 7 line 19]. The intended use of the preamble “for the production of regenerated cellulosic fiber” is non-limiting, nevertheless, SPERGER discloses the product is used to make a regenerated cellulose, viscose [col. 5 lines 13-15]. The Examiner notes that the source of the cellulosic material is a product-by-process limitation [MPEP 2133], nevertheless, SPERGER discloses that the source of the material is cellulosic waste [col. 7 lines 1-5, 15-17].
SPERGER discloses mixing the reclaimed cellulosic fibers with virgin dissolving pulp [col. 6 lines 5-15]. SPERGER discloses convention dissolving pulp has an intrinsic viscosity of 450 ml/g [col. 6 lines 5-15] which falls within the claimed range. SPERGER also teaches the range of 380 to 470 ml/g which overlaps with sufficient specificity [col. 5 line 63].
As for claim 3, SPERGER discloses 70% reclaimed cellulosic viscose fibers which falls within the claimed range [Example 1]. SPERGER also discloses a 40/60 split which also falls within the claimed range [col. 6 line 14].
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 is 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]. 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)
Conclusion
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.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Abbas Rashid can be reached on (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