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 .
This application is the national stage entry of PCT/NZ2021/050163, filed 15 Sep 2021; and claims benefit of foreign priority document NEW ZEALAND 2020903291, filed 15 Sep 2020. This foreign priority document is in English.
Claims 1-31 are pending in the current application. Claim 31, drawn to non-elected inventions, is withdrawn. Claims 6-11 and 15-20, drawn to non-elected species, are withdrawn. Claims 1-5, 12-14, and 21-30 are examined on the merits herein.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-30, in the reply filed on 22 Aug 2025 is acknowledged.
Claim 31 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 22 Aug 2025.
Applicant’s election of species of process of species a (disclosed in claim 1) in the reply filed on 22 Aug 2025 is acknowledged.
Claims 6-11 and 15-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election of species was made in the reply filed on 22 Aug 2025.
Information Disclosure Statement
The information disclosure statement filed 30 July 2025 fails to comply with the provisions of 37 CFR 1.98(a)(4) because it lacks the appropriate size fee assertion. It has been placed in the application file, but the information referred to therein has not been considered as to the merits.
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 1, 3-5, 12-14, 21-22, and 25-30 are rejected under 35 U.S.C. 103 as being unpatentable over GB’650 (GB 260,650, published 01 Nov 1926, provided by Applicant in IDS filed 01 June 2023) in view of GB’414 (GB 481,414, published 10 March 1938, provided by Applicant in IDS filed 01 June 2023).
GB’650 teaches reaction of cellulose and formic acid to produce a cellulose formate for the manufacture of artificial silk (page 5, lines 30-40). In working example 2 purified cotton cellulose is treated with 700 parts by wt. formic acid, 35 parts by wt. HCl, and 35 parts by wt. zinc chloride (page 7, line 85-95), addressing limitations of claim 1 step (a) and claims 21-22 and 26. The solution of cellulose formate is ejected through small apertures, or extruded, into a coagulating bath to form coagulated thread, or a fiber, and wound up such as using bobbins, or isolated (page 6, lines 105-115), addressing limitations of claims 1 steps (b) and (d) and claim 25. GB’650 further teaches the parent cellulose may be cotton cellulose, wood cellulose, cellulose in the form of waste artificial silk, etc. (page 5, lines 65-70) and the working example 1 in which the cellulose is dried wood cellulose (page 7, lines 70-75). GB’650 further teaches catalysts which at the same time bind water have some advantage, this being probably due to the fact that the presence of water may have a detrimental effect on the quality of the cellulose formate produced and may prevent the formation of the triformate (page 5, lines 90-95), implying the disclosed examples are substantially anhydrous addressing limitations of claim 28.
GB’650 does not specifically disclose the method comprising (c) treating the solid material from (b) with a reducing agent (claim 1).
GB’414 teaches manufacture and treatment of cellulose esters and particularly to the treatment of cellulose esters so as to reduce their tendency to corrode metal surfaces. Cellulose esters, as ordinarily prepared, frequently contain small proportions of constituents which have a corrosive action on metal and which are liable, therefore, to give rise to difficulties, in the working up, of the cellulose esters into articles of commerce. The tendency of cellulose esters to exert a corrosive action on metals may be reduced by treating the solid finely, divided cellulose esters with solutions of reducing agents (page 1, lines 10-30). Examples of inorganic reducing agents include sodium bisulphite (page 1, lines 35-40). The organic esters of cellulose to be treated include cellulose formate (page 2, lines 95-100). In a working example cellulose acetate is boiled for four hours in an aqueous solution containing the reducing agent sodium bisulphite. The cellulose acetate is then stabilized by adding sulphuric acid, washed, dried, and dissolved in a suitable solvent (page 2, lines 60-75), addressing limitations of claim 1 steps (c) and (d) and claims 3-4. The process is preferably applied to cellulose esters in the finely divided condition in which they are precipitated from the ripening solution (page 1, lines 65-70), addressing limitations of claims 12-13. The treatment is preferably effected at elevated temperatures, e.g. temperatures of 50-100° C. However, effective results may be obtained at room temperatures by prolonging the treatment (page 1, line 100 to page 2, line 5).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine GB’650 in view of GB’414 in order to improve the method of making a cellulose formate taught by GB’650 with the treatment of a cellulose esters using a reducing agent taught by GB’414. One of ordinary skill in the art would have been motivated to combine GB’650 in view of GB’414 with a reasonable expectation of success because GB’414 teaches the improvement that the tendency of cellulose esters to exert a corrosive action on metals may be reduced by treating the cellulose esters with a reducing agent and that the cellulose esters treated include cellulose formate, suggesting one of ordinary skill in the art would have been motivated to combine the methods in order to improve the cellulose formate made by the method of GB’650 in the same way.
Regarding claim 5, GB’414 teaches the result of the treatment is affected by the temperature and reaction time, suggesting it would have been obvious to determine the optimal temperature and reaction time through routine experimentation. See also MPEP 2144.05 at II.A. providing ‘ “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)’
Regarding claim 14, MPEP 2144.04 at IV.C. provides selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results. In this case, GB’414 teaches the treatment with a reducing agent is preferably applied to cellulose esters in the finely divided condition in which they are precipitated from the ripening solution, however it would have been obvious to select the order of these steps to produce the same result to make the same product.
Regarding claims 21-22, GB’650 does not describe the coagulation bath as comprising the halide salt of zinc chloride, however GB’650 teaches the solution of cellulose formate, which contains the zinc chloride reagent, is ejected through small apertures, or extruded, into a coagulating bath, suggesting that the resulting coagulating bath would comprise the zinc chloride from the solution of cellulose formate.
Regarding claims 29-30, GB’650 teaches the working example in which purified cotton cellulose is treated with 700 parts by wt. formic acid, 35 parts by wt. HCl, and 35 parts by wt. zinc chloride. One of ordinary skill in the art would have expected in such a solution at least a portion of the formic acid, HCl, and zinc chloride would dissociate into component ions of formate and H+, H+ and Cl-, and zinc ions and Cl-, respectively. Further, one of ordinary skill in the art would have expected a portion of which would also reassociate to form the zinc formate ion pair. Therefore one of ordinary skill in the art would have predicted that this solvent taught by GB’650 would comprise zinc formate and formic acid. Regarding the concentration, MPEP 2144.05 at II.A. provides ‘Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)’
Claims 2-5, 12-14, 21-22, and 25-30 are rejected under 35 U.S.C. 103 as being unpatentable over GB’650 (GB 260,650, published 01 Nov 1926, provided by Applicant in IDS filed 01 June 2023) in view of GB’414 (GB 481,414, published 10 March 1938, provided by Applicant in IDS filed 01 June 2023) as applied to claims 1, 3-5, 12-14, 21-22, and 25-30 above, and further in view of Abreu et al. (ACS Macro Lett. 2012, 1, p1308−1311, cited in PTO-892).
GB’650 in view of GB’414 teaches as above. GB’414 further teaches the reducing agents employed may be organic or inorganic (page 1, lines 35-40).
GB’650 in view of GB’414 does not specifically teach the inorganic reducing agent to be sodium metabisulfite (claim 2).
Abreu et al. teaches inorganic sulfites such as sodium dithionite (Na2S2O4), sodium metabisulfite (Na2S2O5), and sodium bisulfite (NaHSO3) have been studied as reducing agents for atom transfer radical polymerization (ATRP). Sulfites are eco-friendly, approved by FDA as food and beverage additives, and used commercially in many industrial processes (page 1308, abstract). Sulfites are commonly used as inexpensive reducing agents in food preservation (especially wine), water treatment, leather, photography, bleach, and many other industrial chemical processes. The three most commonly used sulfites are sodium metabisulfite (Na2S2O5), sodium dithionite (Na2S2O4), and sodium bisulfite (NaHSO3) (page 1309, left column, paragraph 1).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine GB’650 in view of GB’414 further in view of Abreu et al. to substitute known equivalent sulfite reducing agents. One of ordinary skill in the art would have been motivated to combine GB’650 in view of GB’414 further in view of Abreu et al. with a reasonable expectation of success because GB’414 suggests the reducing agents employed are not limited to the specific examples listed, and Abreu et al. teaches sulfites are commonly used as inexpensive reducing agents in many chemical processes and that the three most commonly used sulfites are sodium metabisulfite (Na2S2O5), sodium dithionite (Na2S2O4), and sodium bisulfite (NaHSO3), suggesting it would have been obvious to substitute one of the three most commonly used sulfites for another of these sulfites to be used as a reducing agent in the same chemical process.
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.
Claims 1, 3-5, 12-14, and 23-30 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 11,866,519 (reference patent) in view of GB’414 (GB 481,414, published 10 March 1938, provided by Applicant in IDS filed 01 June 2023).
Reference claims 1-19 of the reference patent recite a process for producing a cellulose-containing material comprising: (a) contacting a cellulose source with a solvent comprising zinc ions and formic acid to provide a solution; (b) extruding the solution from (a) into a coagulation bath to provide a solid material; (c) immersing the solid material from (b) in an oxidising solution comprising aqueous hydrogen peroxide or in water in the absence of an oxidising agent; (d) freezing the oxidising solution or water in which the solid material is immersed; and (e) when the solid material from (b) is immersed in an oxidising solution, isolating the solid material from (d), or when the solid material from (b) is immersed in water in the absence of an oxidizing agent, thawing the frozen water from (d), removing the solid material from the thawed water, and drying the solid material to provide the cellulose-containing material, corresponding to claim 1 steps (a), (b), and (d). Reference claims 2-4 recite the cellulose source, corresponding to claim 26. Reference claim 5 recites the cellulose source comprises a mixture of two or more cellulose sources, corresponding to claim 27. Reference claim 6 and 17 correspond to limitations of claim 28. Reference claim 7 corresponds to claim 29. Reference claim 8 corresponds to claim 30. Reference claim 11 corresponds to limitations of claim 25. Reference claims 12-13 correspond to limitations of claim 23. Reference claim 14 corresponds to limitations of claims 24.
Reference claims 1-19 do not specifically disclose the method comprising (c) treating the solid material from (b) with a reducing agent (claim 1).
GB’414 teaches as above.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine Reference claims 1-19 in view of GB’414 in order to improve the method by treating the cellulose esters with a reducing agent. One of ordinary skill in the art would have been motivated to combine Reference claims 1-19 in view of GB’414 with a reasonable expectation of success because GB’414 teaches the improvement of treatment of cellulose esters with a reducing agent so as to reduce their tendency to corrode metal surfaces, and teaches the cellulose esters to be treated include cellulose formate. Regarding claim 24, Reference claim 14 does not specifically recite the keratin is in the form of a powder, however GB’414 teaches the use of material applied in finely divided condition, suggesting it would have been obvious to one of ordinary skill in the pertinent art to react solid reagents in the form of a powder.
Claims 1-5, 12-14, and 23-30 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 11,866,519 (reference patent) in view of GB’414 (GB 481,414, published 10 March 1938, provided by Applicant in IDS filed 01 June 2023) further in view of Abreu et al. (ACS Macro Lett. 2012, 1, p1308−1311, cited in PTO-892).
Reference claims 1-19 in view of GB’414 teaches as above.
Reference claims 1-19 in view of GB’414 does not specifically teach the inorganic reducing agent to be sodium metabisulfite (claim 2).
Abreu et al. teaches as above.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine Reference claims 1-19 in view of GB’414 further in view of Abreu et al. to substitute known equivalent sulfite reducing agents. One of ordinary skill in the art would have been motivated to combine Reference claims 1-19 in view of GB’414 further in view of Abreu et al. with a reasonable expectation of success because GB’414 suggests the reducing agents employed are not limited to the specific examples listed, and Abreu et al. teaches sulfites are commonly used as inexpensive reducing agents in many chemical processes and that the three most commonly used sulfites are sodium metabisulfite (Na2S2O5), sodium dithionite (Na2S2O4), and sodium bisulfite (NaHSO3), suggesting it would have been obvious to substitute one of the three most commonly used sulfites for another of these sulfites to be used as a reducing agent in the same chemical process.
Claims 21-22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 11,866,519 (reference patent) in view of GB’414 (GB 481,414, published 10 March 1938, provided by Applicant in IDS filed 01 June 2023) further in view of GB’650 (GB 260,650, published 01 Nov 1926, provided by Applicant in IDS filed 01 June 2023).
Reference claims 1-19 in view of GB’414 teaches as above.
Reference claims 1-19 in view of GB’414 does not specifically teach coagulation bath comprises a halide salt such as zinc chloride (claim 21-22).
GB’650 teaches as above.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine Reference claims 1-19 in view of GB’414 further in view of GB’650 in order to select the zinc ions to be from a zinc chloride source. One of ordinary skill in the art would have been motivated to combine Reference claims 1-19 in view of GB’414 further in view of GB’650 with a reasonable expectation of success because GB’650 teaches the method of reacting the cellulose source with formic acid and zinc ions in the form of zinc chloride, and teaches the solution of cellulose formate, which contains the zinc chloride reagent, is ejected through small apertures, or extruded, into a coagulating bath, suggesting that the resulting coagulating bath would comprise the zinc chloride from the solution of cellulose formate.
Conclusion
No claim is currently in condition for allowance.
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/JONATHAN S LAU/Primary Examiner, Art Unit 1693