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 .
The amendment filed September 10, 2025 has been entered.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed applications, Application Nos. 17/344,646; 15/747,736; 62/214,708; 14/811,723; 62/198,077; 14/255,886; and 61/812,931 fail to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application.
Claim 1 requires “the cellulosic material component having an altered viscosity and molecular weight as a result of the molecular separation of the cellulosic and non-cellulosic material.”
Claim 18 requires “the feedstock includes at least 95% cellulosic material.”
There is no support in the prior filed applications for these limitations.
The disclosure of the prior-filed applications, Application Nos. 14/255,886; and 61/812,931 fail to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application.
Claim 1 requires “high temperature aqueous washing.” There is no support in the prior filed applications for this limitation.
Claim Rejections - 35 USC § 112
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 1-7, 9-11, 13-15 and 18 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.
The term “high temperature” in claim 1 is a relative term which renders the claim indefinite. The term is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
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.
Claims 1-7, 9-11 and 13-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Flynn (US 2021/0340350).
Claim 1: Flynn discloses a method for treating a feedstock including cellulosic and non-cellulosic materials (fig. 1; ¶ 32; claim 1). The method includes exposing a feedstock that includes greater than 90% cellulosic material to a pretreatment including endogluconase treatment (¶¶ 46-47); producing a cellulosic material component from the exposed feedstock (¶¶ 46-47); causing molecular separation of the cellulosic and non-cellulosic material based on the exposure of the feedstock to the pretreatment (¶¶ 46-47); producing a cellulosic material component from the exposed feedstock, the cellulosic material component having an altered viscosity and molecular weight as a result of the molecular separation of the cellulosic and non-cellulosic material (¶¶ 46-47); dissolving the cellulosic material component of the feedstock with a dissolving solvent (¶ 69); retrieving the dissolved cellulosic material (fig. 1; ¶ 32); and forming regenerated cellulosic fiber from the dissolved cellulosic material retrieved (fig. 1; ¶ 32).
Claim 2: Flynn discloses the feedstock includes blended textile materials (fig. 1; ¶ 32; claim 1).
Claim 3: Flynn discloses the feedstock includes polyester and cotton textile materials (fig. 1; ¶ 32).
Claims 4-5: Flynn discloses the feedstock having undissolved cellulosic components, and processing the undissolved cellulosic components with sulfuric acid (fig. 10; ¶ 69).
Claim 6: Flynn discloses using inert gas (¶¶ 66, 126).
Claim 7: Flynn discloses using glycerine (¶ 126).
Claim 9: Flynn discloses precipitating and extruding the component to form fibers (¶¶ 131-133).
Claim 10: Flynn discloses processing the dissolved cellulose material component with acetates and butyrates (¶¶ 118-119).
Claim 11: Flynn discloses processing the dissolved cellulose material component with propionates (¶¶ 105, 121).
Claim 13: Flynn discloses the pretreatment being a bleaching agent treatment (¶¶ 42-44).
Claim 14: Flynn discloses introducing an oxidating agent to the solution (¶ 42).
Claim 15: Flynn discloses subjecting the feedstock to ozone (¶ 42).
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.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Flynn (US 2021/0340350), as applied to claim 1 above.
Flynn discloses the feedstock includes greater than 90% cellulosic material (¶ 29), which encompasses the claimed range. A prima facie case of obviousness exists when the ranges of a claimed element overlap, or are encompassed by, the ranges disclosed in the prior art. E.g., In re Geisler, 116 F.3d 1465, 1469, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936-37 (CCPA 1976); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). Such is the case here. It would have been obvious to one of ordinary skill in the art, prior to the effective filing date of the instant application, to have selected a range of cellulosic material within the range disclosed in the cited prior art, as such selection has been held to be prima facie obvious.
Claims 1-7, 9-11, 13-15 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Brinks (WO 2014/081291; paragraph references to corresponding EP 2922905).
Claims 1 and 18: Brinks discloses a method for treating a feedstock including cellulosic and non-cellulosic materials (¶ 1). The method includes exposing a feedstock that includes >0% cellulosic material, which overlaps the claimed range to a pretreatment including cellulase treatment (¶ 13); producing a cellulosic material component from the exposed feedstock (¶ 13); causing molecular separation of the cellulosic and non-cellulosic material based on the exposure of the feedstock to the pretreatment (¶ 13); producing a cellulosic material component from the exposed feedstock, the cellulosic material component having an altered viscosity and molecular weight as a result of the molecular separation of the cellulosic and non-cellulosic material (¶ 13); dissolving the cellulosic material component of the feedstock with a dissolving solvent (¶ 13); retrieving the dissolved cellulosic material (¶ 19); and forming regenerated cellulosic fiber from the dissolved cellulosic material retrieved (¶ 19). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the application to have selected a portion of the range taught by Brinks because where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In reWertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In reWoodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claim 2: Brinks discloses the feedstock includes blended textile materials (¶ 5).
Claim 3: Brinks discloses the feedstock includes polyester and cotton textile materials (¶ 5).
Claims 4-5: Brinks discloses the feedstock having undissolved cellulosic components, and processing the undissolved cellulosic components with organic solvents (¶ 13). It would have been obvious to one of ordinary skill in the art prior to the effective filing date to repeat the processing until the components were fully dissolved to make the cellulosic material usable in the method of Brinks.
Claim 6: It would have been obvious to one of ordinary skill in the art to carry out the cellulose dissolution of Brinks under an inert atmosphere to prevent oxidative side-reactions.
Claim 7: It would have been obvious to one of ordinary skill in the art to have included glycerine, which was well known in the art as a co-solvent and stabilizer in polymer processing.
Claim 9: Brinks discloses precipitating and extruding the component to form fibers (¶ 19).
Claims 10-11: It would have been obvious to one of ordinary skill in the art to have converted the dissolved cellulose into cellulose acetate, propionate and butyrate which were well-known derivatives used in fibers and plastics.
Claim 13: Brinks discloses the pretreatment being a bleaching agent treatment (¶ 13).
Claim 14: Brinks discloses introducing an oxidating agent to the solution (¶ 15).
Claim 15: Brinks discloses subjecting the feedstock to peroxide and permanganate (¶ 13).
Response to Arguments
Applicant's arguments filed September 10, 2025 have been fully considered but they are not persuasive.
Applicant argues that “the proper priority claim” was established in Applicant’s originally-filed application papers. This argument has been considered but is not persuasive.
In order to be entitled to the benefit of a parent application, one requirement is that the invention presently claimed must have been disclosed in the parent application in the manner provided by 35 U.S.C. § 112, first paragraph. See 35 U.S.C. § 120; In re Lukach, 442 F.2d 967, 968-69 (CCPA 1971). 35 U.S.C. § 112, first paragraph states that “[t]he specification shall contain a written description of the invention….” 35 U.S.C. § 112.
In order to satisfy the written description requirement, the disclosure as originally filed does not have to provide in haec verba support for the claimed subject matter at issue. See Fujikawa v. Wattanasin, 93 F.3d 1559, 1570, 39 USPQ2d 1895, 1904 (Fed. Cir. 1996). Nonetheless, the disclosure “must … convey with reasonable clarity to those skilled in the art that … [the inventor] was in possession of the invention.” Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991). Put another way, one skilled in the art, reading the original disclosure, must “immediately discern the limitation at issue” in the claims. Waldemar Link GmbH & Co. v. Osteonics Corp., 32 F.3d 556, 558, 31 UPSQ2d 1855, 1857 (Fed. Cir. 1994).
Purdue Pharma L.P. v. Faulding Inc., 230 F3d 1320, 1326-27 (Fed. Cir. 2000).
“One cannot disclose a forest in the original application, and then later pick a tree out of the forest and say ‘here is my invention.’ In order to satisfy the written description requirement, the blaze marks directing the skilled artisan to that tree must be in the originally filed disclosure.” Purdue, 230 F.3d at 1326-27, (citing In re Ruschig, 379 F.2d 990, 994-95 (CCPA 1967). “What the [] patentees have done is to pick a characteristic possessed by two of their formulations, a characteristic that is not discussed even in passing in the disclosure, and then make it the basis of claims that cover not just those two formulations, but any formulation that has that characteristic. This is exactly the type of overreaching the written description requirement was designed to guard against.” Purdue, 230 F.3d at 1327.
Here, with regard to the requirement that the molecular weight of the cellulosic material component is altered as a result of the molecular separation of the cellulosic and non-cellulosic material, Applicant has disclosed a laundry list of pretreatments – some of which would alter the molecular weight of the cellulosic material component, and some of which would not. For example, claim 1 encompasses a swelling agent that alters the molecular weight of the cellulosic material. Some of the prior-filed applications -- Application Nos. 17/344,646; 15/747,736; 62/214,708; 14/811,723; 62/198,077; 14/255,886; and 61/812,931 – disclose a swelling agent, but none require the swelling agent to alter the molecular weight of the cellulosic material component. Not all swelling agents alter the molecular weight of cellulosic material. One of ordinary skill in the art knows that “molecular separation” in cellulose processing is often supramolecular, disrupting fiber/microfibril packing and inter-chain hydrogen bonding (swelling), but does not cleave the glycosidic backbone. These changes occur with no change in the degree of polymerization, or molecular weight.
As in Purdue, what Applicant has done here is to pick a characteristic possessed by some of their formulations, a characteristic that is not discussed even in passing in the disclosure (altering molecular weight), and then make it the basis of claims that cover not just methods including those formulations, but any method including a formulation that has that characteristic.
Likewise, with regard to the requirement that the viscosity of the cellulosic material component is altered as a result of the molecular separation of the cellulosic and non-cellulosic material, the same analysis applies. Not all of the listed pretreatments inherently require a viscosity alteration.
Conclusion
THIS ACTION IS MADE FINAL. 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 LARRY THROWER whose telephone number is (571)270-5517. The examiner can normally be reached 9am-5pm MT M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Susan Leong can be reached at 571-270-1487. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LARRY W THROWER/Primary Examiner, Art Unit 1754
