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 Species B, claims 1-7 and 9-18, in the reply filed on 11/15/24 is acknowledged.
Claim 8 is withdrawn. Claims 1-7 and 9-18 are under examination.
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 “at least 90% cellulosic material”, “a non-alkaline aqueous washing”, “causing a viscosity and an average molecular weight of the cellulosic material to be altered based on the exposure of the feedstock to the pretreatment” and “the cellulosic material component with the altered viscosity and molecular weight”.
Claim 4 requires “processing the undissolved cellulosic components with a non-alkaline cellulose dissolving agent”.
Claim 10 requires “produc[ing] cellulose acetate butyrate.”
Claim 11 requires “produc[ing] cellulose propionate.”
Claim 12 requires “recovering terephthalic acid (TPA) from the solution.”
Claim 15 requires “
Claim 16 requires “the altered average molecular weight is 10,000 kilodaltons (kDa) or less.”
Claim 17 requires “the altered average molecular weight is 5,000 kDa or less.”
Claim 18 requires “the feedstock includes at least 95% cellulosic material.”
There is no support in the prior filed applications for these limitations.
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 and 9-18 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.
Claim 1 recites the limitation "the solution”. There is insufficient antecedent basis for this limitation in the claim.
Claim 5 recites the limitation "the following”. There is insufficient antecedent basis for this limitation in the claim.
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 and 9-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Flynn et al. (US 2021/0340350).
Claim 1: Flynn et al. 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 at least 90% cellulosic material to a pretreatment including enzyme treatment (¶¶ 29-46-47); producing a cellulosic material component from the exposed feedstock (¶¶ 46-47); dissolving the cellulosic material component of the feedstock with a dissolving solvent (¶ 69); retrieving the dissolved cellulosic material from the solution (fig. 1; ¶ 32); and forming regenerated cellulosic fiber from the dissolved cellulosic material retrieved from the solution (fig. 1; ¶ 32). Flynn et al. is silent as to causing a viscosity and an average molecular weight of the cellulosic material to be altered based on the exposure of the feedstock to the pretreatment, and the cellulosic material component having the altered viscosity and molecular weight. However, it is the position of the examiner that because the reference teaches the use of the same materials for the same purpose as required by the instant claims, the viscosity and average molecular weight alterations would be expected to be the same. "[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on 'inherency' under 35 U.S.C. 102, on 'prima facie obviousness' under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same...[footnote omitted]." The burden of proof is similar to that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (quoting In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977)). As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith.” In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972).
Claim 2: Flynn et al. discloses the feedstock includes blended textile materials (fig. 1; ¶ 32; claim 1).
Claim 3: Flynn et al. discloses the feedstock includes polyester and cotton textile materials (fig. 1; ¶ 32).
Claims 4-5: Flynn et al. discloses the feedstock having undissolved cellulosic components, and processing the undissolved cellulosic components with sulfuric acid (fig. 10; ¶ 69).
Claim 6: Flynn et al. discloses using inert gas (¶¶ 66, 126).
Claim 7: Flynn et al. discloses using glycerine (¶ 126).
Claim 9: Flynn et al. discloses precipitating and extruding the component to form fibers (¶¶ 131-133).
Claim 10: Flynn et al. discloses processing the dissolved cellulose material component with acetates and butyrates (¶¶ 118-119), but is silent as to the product formed being cellulose acetate butyrate. However, it is the position of the examiner that because the reference teaches the use of the same materials for the same purpose as required by the instant claims, the produced products would be expected to be the same. "[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on 'inherency' under 35 U.S.C. 102, on 'prima facie obviousness' under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same...[footnote omitted]." The burden of proof is similar to that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (quoting In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977)). As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith.” In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972).
Claim 11: Flynn et al discloses processing the dissolved cellulose material component with propionates (¶¶ 105, 121), but is silent as to the product being cellulose propionate. However, it is the position of the examiner that because the reference teaches the use of the same materials for the same purpose as required by the instant claims, the produced products would be expected to be the same. "[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on 'inherency' under 35 U.S.C. 102, on 'prima facie obviousness' under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same...[footnote omitted]." The burden of proof is similar to that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (quoting In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977)). As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith.” In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972).
Claim 12: Flynn et al. is silent as to TPA being in the recovered materials from the solution. However, it is the position of the examiner that because the reference teaches the use of the same materials for the same purpose as required by the instant claims, the compounds recovered from the solution would be expected to be the same. "[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on 'inherency' under 35 U.S.C. 102, on 'prima facie obviousness' under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same...[footnote omitted]." The burden of proof is similar to that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (quoting In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977)). As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith.” In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972).
Claim 13: Flynn et al. discloses the pretreatment being a bleaching agent treatment (¶¶ 42-44).
Claim 14: Flynn et al. discloses introducing an oxidating agent to the solution (¶ 42).
Claim 15: Flynn et al. discloses subjecting the feedstock to ozone (¶ 42).
Claims 16-17: Flynn et al. is silent as to the claimed molecular weight ranges. However, it is the position of the examiner that because the reference teaches the use of the same materials for the same purpose as required by the instant claims, the average molecular weight would be expected to fall within the claimed ranges. "[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on 'inherency' under 35 U.S.C. 102, on 'prima facie obviousness' under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same...[footnote omitted]." The burden of proof is similar to that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (quoting In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977)). As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith.” In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972).
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 et al. (US 2021/0340350), as applied to claim 1 above.
Flynn et al. 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.
Conclusion
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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/LARRY W THROWER/Primary Examiner, Art Unit 1754