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 .
Response to Amendment
The amendments filed 12 May 2026 are accepted. Claims 1, 3–9, 11, 12, 14 and 20–26 are pending, wherein claims 14 and 20–25 stand withdrawn. Claims 2, 10, 13, and 15–19 have been canceled by this or a previous amendment. Claim 26 has been introduced as a new claim, and finds support in the original disclosure in at least paragraph 0092 and Figure 1. No new matter has been introduced.
Figure 1 was previously objected to. The amended Figure 1 overcomes the objection. The objection to the drawings is herein withdrawn, and the drawings are accepted.
The specification was previously objected to. The amendments to the specification overcome the objection, and the objection is herein withdrawn.
Claims 1, 2, 12 and 13 were rejected under 35 U.S.C. 102(a)(1), and claims 3–11 were rejected under 35 U.S.C. 103. The amended scope of claim 1 and the cancelation of claims 2, 10 and 13 render these rejections moot.
Claim Interpretation
Claim 12 recites a functional limitation (see MPEP 2173.05(g)) regarding the purpose of adding the second nanocellulose fiber, i.e., to prevent water from spreading to an object to be adhered. This function is inherent to the second nanocellulose fiber, and thus does not result in a structural difference from any equivalent composition, even if the equivalent composition does not recite the same motivation for including the claimed second nanocellulose fiber. See MPEP 2111.01 regarding statements of intended use; see MPEP 2112(II) regarding inherent features that may or may not have been recognized at the relevant time. Therefore, any prior art composition comprising a second nanocellulose fiber as claimed (i.e., endowed with a carboxymethyl group), will be considered to meet the functional limitation of intended use recited in claim 12.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
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, 9, 11, 12 and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Yamamoto (WO 2019/026823 A1, hereinafter “Yamamoto”).
Evidentiary support for the interactions of carboxymethyl-functionalized nanocellulose fibers and water are provided by Su (ACS Sustainable Chem. Eng. 2019, 7, 3792–3800, hereinafter “Su”), and is applied only to claim 26.
Regarding claim 1, Yamamoto teaches a fine fibrous layer for heat exchangers made from cellulose (see generally abstract), wherein the fibrous layer is made of fine cellulose fibers (see paragraph 0016; the “adhesive” limitation of the preamble is inherently met by any substantially similar composition, as adhesiveness is a property of the composition). Yamamoto further teaches the composition as comprising nanocellulose fibers endowed with phosphoric acid functional groups and carboxymethyl functional groups (see paragraph 0022 teaching cellulose fibers as being functionalized with at least one ionic group including phosphate and carboxy derivatives; see paragraph 0042 teaching the carboxyl derivatives as including carboxymethyl groups; see paragraph 0016 teaching the fibers as having a width of less than 1000 nm, making them nanocellulose fibers), wherein the nanocellulose fibers are preferably contained in an amount of from 0.05–10% by mass in a dispersion (see paragraph 0053), and wherein the dispersion is water based (see paragraph 0051), with a solid content of 2 wt.% after fibration (and thus 98 wt.% water in the composition; see paragraph 0077).
Yamamoto does not explicitly teach the combination of two types of functionalized nanocellulose fibers, but the language is ambiguous and can reasonably be interpreted as requiring either one type of cellulose fiber with one or more functional groups, or as one or more cellulose fibers, each with their own unique functional groups (see paragraph 0022, “it is preferable that the fine cellulose fibers have at least one group among ionic groups and nonionic groups introduced into them”). A person having ordinary skill in the art seeking to practice the invention of Yamamoto could reasonably arrive at a composition comprising two or more types of nanocellulose fibers, each with their own functional groups, because preparing two separate functionalized fibers and then mixing them is simpler than trying to prepare one type of fiber with multiple functional groups; the latter technique would require consideration for the interactions between functional groups and the cellulose (e.g., regioselectivity, reactivity of the different cellulose hydroxyl active sites, ratios of substituent precursors, pH, temperature, etc.). Therefore, although Yamamoto fails to explicitly teach a combination of two nanocellulose fibers, each with their own functionality, a person having ordinary skill in the art can reasonably arrive at this based on Yamamoto’s ambiguous wording and the common practice of co-blending monofunctional molecules, as opposed to relying on a single, dual-functional molecule.
Yamamoto only teaches a maximum amount of cellulose fibers as 10 wt.% in a dispersion (see paragraph 0053), and so a person having ordinary skill in the art practicing Yamamoto’s invention by co-blending monofunctionalized cellulose fibers, as discussed above, would need to combine the fibers in some ratio. However, as Yamamoto does not explicitly teach a composition comprising co-blended cellulose, a ratio between the fibers cannot be determined. Therefore, the broadest reasonable interpretation of Yamamoto’s disclosure is that any combination of fibers can be used, so long as the total mass of fibers falls between 0.05–10 wt.%, as disclosed in paragraph 0053. Therefore, the amounts of each fiber must fall between 0.05–10 wt.%, which includes all ratios of the fibers, ranging from about 0:100 to about 100:0. This range overlaps with the claimed ranges of 0.1–5 wt.% for the first and second nanocellulose fibers (also see MPEP 2144.05(I) regarding the obviousness of overlapping ranges). Claim 1 is therefore rendered prima facie obvious.
Regarding claims 3–5, Yamamoto further teaches the adhesive as containing an inorganic moisture absorbent (see paragraph 0055 teaching a desiccant in the fiber layer; a desiccant is synonymous with a moisture absorbent), wherein the inorganic moisture absorbent includes at least one of calcium chloride, lithium chloride, and magnesium chloride (see paragraph 0055 teaching all three of these salts), and wherein the inorganic moisture absorbent is contained in about 0.1 to 1% by weight of the adhesive (see paragraph 0056 teaching the amount as being at least 100 parts by mass per 100 parts by mass of the cellulose fibers; since the cellulose fibers can comprise from 0.05–10 wt.% of the composition, the moisture absorbent also comprises about 0.5–10 wt.% of the composition, which overlaps with the claimed range; also see MPEP 2144.05(I) regarding the obviousness of overlapping ranges).
Regarding claim 9, Yamamoto further teaches the limitation wherein the first and second nanocellulose fibers have a diameter in a range from about 1 to 50 nm (see paragraph 0016 teaching a preferable width of 3–8 nm, which falls within the claimed range; the term “width” here is synonymous with “diameter”, because “length” is recited separately in paragraph 0018, and fibers only have widths and lengths).
Regarding claim 11, Yamamoto further teaches the limitation wherein each of the phosphoric acid functional groups and the carboxymethyl functional groups are endowed at a ratio in a range from about 0.5 to 3.0 mmol/g (see paragraph 0039 teaching phosphate endowment as preferably 1–3 mmol/g; see paragraph 0042 teaching carboxymethyl endowment as preferably 0.9–2 mmol/g; both of these substituents therefore fall within the claimed endowment range).
Regarding claim 12, Yamamoto fails to explicitly teach a motivation for including carboxymethyl-modified nanocellulose fibers (synonymous with the claimed second nanocellulose fiber). However, as discussed in the above Claim Interpretation section, functional limitations regarding statements of intended purpose are not limiting if they do not result in a structural difference. As Yamamoto teaches a composition that includes the claimed second nanocellulose fiber, Yamamoto inherently teaches a composition that achieves the claimed intended purpose. Thus, claim 12 is rendered obvious.
Regarding claim 26, Yamamoto fails to explicitly teach the limitation wherein molecules of the water are trapped in the second nanocellulose fiber. As discussed previously, Yamamoto teaches a composition comprising carboxymethyl-functionalized nanocellulose fibers (synonymous with the claimed second nanocellulose fiber). Su teaches integration of carboxymethyl groups with cellulose nanofibers (see generally abstract), wherein the modified fibers are shown to adsorb water (see pg. 3797, Figure 4A, IR peak at 1646 cm-1 corresponding to water, discussed in col. 2 of the same page). The fibers of Su’s disclosure had been dried, comminuted and pressed into a KBr pellet for IR analysis (see pg. 3794 teaching the FT-IR methodology), so the water peak is intrinsic to the fibers, not the result of any external water. Therefore, because Yamamoto teaches carboxymethyl-functionalized nanocellulose fibers dispersed in water, and because Su provides evidence of such fibers retaining adsorbed water even upon drying, Yamamoto’s fibers must also trap water molecules (see MPEP 2112 regarding inherent composition properties).
Claims 6 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Yamamoto as applied to claim 1 above, and further in view of Okamoto (JP-2011-237157 A, hereinafter “Okamoto”, previously cited).
Regarding claim 6, Yamamoto teaches the adhesive of claim 1, but fails to explicitly teach the limitation wherein the composition further contains an antimicrobial agent. Yamamoto does teach the inclusion of an antifungal (see paragraphs 0068 and 0070), which motivates the incorporation of a biocidal compound, but none of the recited antifungal genera inherently function as antimicrobial agents. Okamoto teaches a heat exchanging element (see paragraph 0001; this is the same field of endeavor as Yamamoto and the present invention) made of ultrafine fibers (see paragraph 0007), comprising an antibacterial agent (see paragraph 0010; “antibacterial” and “antimicrobial” are functionally synonymous). A person having ordinary skill in the art before the effective filing date of the claimed invention would have understood to be obvious that a heat-exchanging element, like that of Yamamoto, is a moisture-rich environment that can breed fungi and bacteria. Yamamoto teaches a fungicide, which indicates that this concern was already being considered in Yamamoto’s disclosure. By including an antibacterial agent, as taught by Okamoto, the biocidal properties of the cellulose fibers can be further increased. The motivation supporting this combination most closely aligns with KSR Rationale D, which states it is prima facie obvious to apply a known technique (incorporation of an antimicrobial agent, as taught by Okamoto) to a known device, method or product (the cellulose fiber heat exchanger taught by Yamamoto) ready for improvement (Yamamoto only teaches a fungicide, so the biocidal properties are limited to fungi without an antimicrobial) to yield predictable results (both Yamamoto and Okamoto teach comparable ultrafine fiber-based heat exchangers with biocidal components, and there is nothing in either reference to suggest that they are incompatible, so the results of the proposed modification are predictable). This combination arrives at the claimed invention, thus rendering claim 6 prima facie obvious.
Regarding claim 7, Yamamoto, as modified by Okamoto, teaches the adhesive of claim 6. Okamoto further teaches the limitation wherein the antimicrobial agent includes, inter alia, a porous inorganic antimicrobial agent loaded with Ag (see paragraph 0038 teaching silver zeolite as an antibacterial agent, which is a silver-based inorganic porous material).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Yamamoto and Okamoto as applied to claim 6 above, and further in view of Combs (US 2015/0090156 A1, hereinafter “Combs”, previously cited.
Regarding claim 8, Yamamoto, as modified by Okamoto, teaches the adhesive of claim 6, but fails to explicitly teach the limitation wherein the antimicrobial agent is contained in about 0.1 to 1% by weight of the adhesive. Combs teaches compositions of cellulose-based adhesives (see generally abstract), and teaches such compositions as comprising additives including antimicrobials (see paragraph 0059), wherein the additives are present in an amount of from 0.1–75 wt.% of the overall composition (see paragraph 0061; also see MPEP 2144.05(I) regarding the obviousness of overlapping ranges). A person having ordinary skill in the art before the effective filing date of the claimed invention would have understood to be obvious that the composition of Yamamoto, as modified by Okamoto, can include an antimicrobial, but as neither reference explicitly teaches an amount of antimicrobial, a person having ordinary skill in the art would have needed to look for comparable compositions in the art for guidance. The motivation supporting this combination most closely aligns with KSR Rationale A, which states it is prima facie obvious to combine prior art elements (the modified composition of Yamamoto, and the amount of antimicrobial additive disclosed by Combs) according to known methods (no combination method needed; Combs is merely providing a concentration that is not specified in the modified composition of Yamamoto) to yield predictable results (Combs explicitly teaches the additives as being for cellulose-based adhesives, like those taught by Yamamoto and Okamoto, so the results of the proposed modification are predictable). This combination arrives at the claimed invention, thus rendering claim 8 prima facie obvious.
Response to Arguments
Applicant’s arguments with respect to claims 1, 3–9, 11, 12, and 26 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Although most of Applicants’ arguments are moot in view of the new grounds of rejection, Applicants did argue unexpected and advantageous effects of their invention, which is an argument that can reasonably apply to the obviousness rejection presented herein. The Examiner does not find this argument compelling, however. Pursuant to MPEP 712.02, allegations of unexpected results must be commensurate in scope with the claimed invention. Applicants cite to their specification, Table 1, to show how their composition outperformed a reference composition of vinyl acetate. This is not commensurate in scope with the claims, however. To establish the criticality of a claimed range, Applicants should compare a sufficient number of tests both inside and outside the claimed range; comparing to a completely different reference is insufficient to establish criticality of a claimed range. There is nothing of record to suggest that the results of Applicants’ invention are unexpected or advantageous over the prior art of record, and thus arguments of unexpected results are not persuasive.
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.
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/R.P.L./Examiner, Art Unit 1731
/ANTHONY J GREEN/Primary Examiner, Art Unit 1731
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