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 group I, claims 1-7 in the reply filed on August 27, 2025 is acknowledged.
Claims 9-13, 15, 28, 30, 32, 39, 41, 43, and 45 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions, there being no allowable generic or linking claim.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 August 27, 2025.
Claim Objections
Claims 1-7 are objected to because of the following informalities: although abbreviations/acronyms are permitted in a claim, they should be defined1, i.e., what the term stands for, at least at the first instance/usage, in order to improve the reading of the claim(s), so the reader does not have to go back to the specification to understand the meaning of the term. Appropriate correction is required.
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 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Guoyong, CN 109679147 A (Machine Translation used).
With regard to claims 1-4, Guoyong teaches a composition including plant microfiber, also known as cellulose nanofibrils, microfibrillated cellulose, nanofibrillated cellulose, cellulose nanofiber, (¶-[0012]) etc., coated with a SGF, i.e., a sucrose fatty acid ester corresponding to the saccharide fatty acid ester; see abstract, ¶-[0008]-[0009] and [0016]. In paragraph [0009] Guoyong teaches that the composition is essentially2 a blend of the micro-fibers and the sucrose fatty acid ester, thus reading on claim 2, and teaches proportions falling within the range of the claims 3-4, since Guoyong teaches a range from 1:0.05-10. The examples on ¶-[0022]-[0032] shows ratios of 1:0.05, 1:05, 1:1 and 1:10. While Guoyong does not recites that the composition is or can be used as a binder, since it is the same claimed composition, i.e., the same raw materials added at proportions falling within the claimed range, then the composition is inherently the same, i.e., it is a binder or can be used as such.
Regarding to claims 5-6, Guoyong teaches blending/mixing an aqueous micro-fiber dispersion with an aqueous solution SFG and then reducing the water content of the blend; see ¶-[0016].
It seems that the reference teaches all the limitations of the claims or at the very least the minor modification(s) to obtain the claimed invention would have been obvious to one of ordinary skill in the art.
Claims 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Spender et al. (hereinafter Spender), WO 2018/045248 A1.
With regard to claims 1-6, Spender teaches coating cellulosic-based materials, including cellulose nanofibrils, also known as microfibrillated cellulose, nanofibrillated cellulose, etc., with saccharide fatty acid ester (SFAE); see ¶-[0011], [0018], [0020]. Spender also teaches ratio of the CNFs and SFG (SFAE) falling within the range of claims 3-4; see ¶-[00110]-[00111], which teaches ratios form 99.075:0.025 through 50:50 (1:1), since it shows SFAE amounts of 0.025 % w/wt to 50% w/wt. Spender teaches the mixing of CNFs dispersion and SFAE solutions of claim 5 and the concentration of said mixture by reducing the water content of claim 6; see ¶-[0009] and [00110] which teach the cellulose material in a solution, actually dispersion since cellulose is not water soluble, and ¶-[0074], [00105], [00143], [00144] which teaches SEFOSE (a SFAE) solution and ¶-[0126] which teaches that the substrate is dried, i.e., reducing the water content.
It seems that the reference teaches all the limitations of the claims or at the very least the minor modification(s) to obtain the claimed invention would have been obvious to one of ordinary skill in the art.
Claims 5-7 is rejected under 35 U.S.C. 103 as being unpatentable over any Guoyong and Spender, cited above.
Claims 5-7 are product by process claims and both, Guoyong and Spender, teach compositions which are made the same, claims 5 and 6, or a bit different, claim 7, but the end result seems to be the same as claimed. 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).
In the event any differences can be shown for the product -by-process claims 5 through 7 as opposed to the product taught by the references Guoyong and Spender such differences would have been obvious to one of ordinary skill in the art as routine modification of the product in the absence of a showing unexpected results, see In re Thorpe, 227 USPQ 964 (CAFC 1985).
As the afore mentioned claims are product by process claims, it is deemed that "[A]ny difference imparted by the product by process claims would have been obvious to one having ordinary skill in the art at the time the invention was made because where the examiner has found a substantially similar product as in the applied prior art the burden of proof is shifted to the applicants to establish that their product is patentably distinct, ..." In re Brown, 173 U.S.P.Q. 685, and In re Fessmann, 180 U.S.P.Q. 324. Further, "[P]rocess limitations are significant only to the extent that they distinguish the claimed product over the prior art product." In re Luck, 177 U.S.P.Q. 523 (1973)
Moreover with respect to claims 5 and 6, both Guoyong and Spender teach similar process, see above. As for claim 7, Guoyong does not teach that the composition is formed by the addition of the saccharide fatty acid ester to a pulp and the defibrillating the mixture/blend with mechanical shear forces to obtain the composition. However, since Guoyong teaches the making of the composition including CNF, which is usually made by mechanical means, and saccharide fatty acid ester separately, the making of composition as a blend is within the level of ordinary skill in the art, since it would be made in one shot/stage and does not have to be mixed, i.e., the shearing would produce a better, more uniform mixture/blend.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure in the art of “Enhanced Cellulose Nanofibrils (CNF).”
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSE A FORTUNA whose telephone number is (571)272-1188. The examiner can normally be reached MONDAY- FRIDAY 11:30 PM- 9:00 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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/JOSE A FORTUNA/Primary Examiner, Art Unit 1748
JAF
1 Commonly known in the art terms are the exception.
2 Note that essentially is an open transitional phrase which can include other materials not significant affecting the properties of the composition. he transitional phrase "consisting essentially of" limits the scope of a claim to the specified materials or steps "and those that do not materially affect the basic and novel characteristic(s)" of the claimed invention. In re Herz, 537 F.2d 549, 551-52, 190 USPQ 461, 463 (CCPA 1976) (emphasis in original) (Prior art hydraulic fluid required a dispersant which appellants argued was excluded from claims limited to a functional fluid "consisting essentially of" certain components.