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 .
DETAILED ACTION
2. Claims 1 – 16 are pending in this application. Applicant’s amendment, filed November 4, 2024, is entered, wherein claims 11 – 13 and 15 – 16 are amended.
Priority
3. This application is a national stage application of PCT/IB2022/050173, filed January 11, 2022, which claims benefit of foreign priority document IN202111001298, filed January 12, 2021.
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
Claim Objections
Claims 3 and 7 – 9 are objected to because of the following informalities:
Claim 3, line 1, “high tenacity regenerated cellulosic” should be removed.
Claims 7 – 9, line 1, “an” should be replaced with “the” as “oxidizing agent”, “acid”, and “alkali” are first appeared in claim 4.
Appropriate correction is required.
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 – 16 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.
a. Claims 1 and 4, lines 9 and 3, respectively, recite “ASTM D 3822”. “ASTM D 3822” is a standard test method for tensile properties of single textile fibers. However, the specification does not explicitly indicate which version of ASTM D 3822 the invention is based on. According to iTeh Standards (European, American and International Standards online, 2026, Reference included with PTO-892), there are different versions of ASTM D 3822, such as ASTM D 3822-07 published in 2014 and ASTM D 3822M-14 published in 2020 (page 1). It is unclear which version of ASTM D 3822 is being used to measure the tenacity and elongation. Therefore, claims 1 and 4 renders indefiniteness. Claims 2 – 3 and 5 – 16 are rejected because these claims depend from claims 1 and 4. Claims 1 and 4 recite “ASTM D 3822” will be interpreted as any version of ASTM D 3822.
b. Claim 10 recites the limitation "chelating agent" in line 1. There is insufficient antecedent basis for this limitation in the claim. Claim 10 depends from claim 4 and recites “chelating agent”, however, claim 4 never recites “chelating agent”. It is unclear which chelating agent the claim is referring to. The term “chelating agent” recited in claim 10 will be interpreted as being dependent from claim 6.
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1 – 16 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
c. Claim 1 is drawn to a high tenacity regenerated cellulosic fiber, which has a tenacity of at least 4.5 grams/denier and an elongation of at least 10%, measured in accordance with ASTM D 3822 and claim 4 is drawn to a process for preparing a high tenacity cellulosic fiber having a tenacity of 4.5 grams/denier and elongation of at least 10% measured in accordance with ASTM D 3822. The instant claims contain functional language by claiming the cellulosic fiber by what it does rather than what it is. See MPEP 2173.05(g). In the case of the instant claims, the cellulosic fiber is claimed based on the tenacity and elongation and not the structure or composition of the cellulosic fiber which would result in said tenacity and elongation.
The specification provides examples in which certain regenerated cellulosic fibers are produced and tested for tenacity and elongation. However, the examples only demonstrate a limited number of fibers meeting the claimed property limitations and do not identify structural features or a predictive process-property relationship that would allow one skilled in the art to recognized or obtain the full range of fibers encompassed by the claim. For example, the working examples provided in the specification disclose tenacity values within a limited range from 4.58 to 5.7 grams/denier under specific experimental conditions, including particular bacterial cellulose pre-treatment, degree of polymerization, pre-mix times, spinning temperatures, and blend ratios. These examples show that fibers that are pretreated with hypochlorite or acids, such as H2SO4 and HCl, may achieve tenacity of least 4.5 grams/denier and elongation of at least 10%, but the working examples do not report tenacity or elongation for fibers that are pre-treated with alkali, thereby providing no guidance establishing that such pre-treatment would yield fibers meeting the claimed tenacity and elongation limitations. Example 22 discloses a high shear mixing pre-treatment method that would also produce fibers meeting the functional limitations. The specification does not describe what critical parameters or structural characteristics of the cellulosic fiber contribute to the recited “high tenacity” property (page 20, Table 5).
The state of the art prior to the effective filing date of the claimed invention discloses that the tenacity of any fiber is driven by controllable conditions used in the manufacturing process. For example, Singh (Woodhead Publishing, 2017, Reference included with PTO-892) teaches that fiber tenacity and elongation at break are two important properties. The difference in the fiber tenacity can generally be attributed to several factors that are the degree of polymerization, the strength of bonding between adjacent polymer chains, the degree of orientation in the direction of fiber axis and the extent of crystallinity. Fibers that possess higher crystallinity, higher chain orientation and strong interchain bonding will generally exhibit lower values of elongation at break (page 20, para. 3). Based on Singh, one of ordinary skill in the art would reasonably conclude that multiple conditions are affecting the tenacity of the fiber.
It is not evident by the disclosure or the prior art that Applicant was in possession of a representation number of species of fibers, which have a high tenacity and the tenacity of at least 4.5 as claimed in the instant claim. Furthermore, as discussed above, the specification does not provide an adequate number of examples and does not identify the structural features that contribute to the tenacity of the fiber. Therefore, the instant claims was determined not to meet the written description requirement. Dependent claims 2 – 3 and 5 – 16 are rejected because these claims are either referring to the high tenacity regenerated cellulosic fiber or the manufacture of it.
Claim Rejections - 35 USC § 102
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 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 – 3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Xu (Machine Translation of CN101492837A, Reference included with PTO-892).
a. Independent claim 1 is directed to a high tenacity regenerated cellulosic fiber prepared from a cellulosic raw material, wherein the cellulosic raw material comprises 5 – 100 wt% of a pre-treated bacterial cellulose having a degree of polymerization in a range of 450 – 2000; wherein the fiber has a tenacity of at least 4.5 grams/denier and an elongation of at least 10%, measured in accordance with ASTM D 3822. Dependent claim 2 is directed to the fiber, wherein the pre-treated bacterial cellulose has the degree of polymerization in the range of 500 – 1500. Dependent claim 3 is directed to the fiber, wherein the fiber has an average linear density in a range of 0.6 – 2.0 denier.
Xu teaches a preparation method of high polymerization bacterial cellulose fiber (page 1, line 5). The method comprises (1) dissolving bacterial cellulose with a polymerization degree of 1500 – 16000 in a solvent, and a bacterial cellulose solution with a mass fraction of 1% to 30% is prepared, filtered, and left to defoam to obtain a spinning solution; (2) the spinning solution in step (1) is sprayed through a spinneret, and then solidified and formed, and then stretched, washed, shaped, and dried to form a finished product (page 1, lines 35 – 39). In one example, the method comprises the bacterial cellulose with a polymerization degree of 1500 is crushed and dried, and then 1.5 mol/L lithium hydroxide / 0.65 mol/L thiourea system is added and dissolved at 0 ⁰C to make a solution. Spin the solution, stir for 12 hours, filter, and defoam and the spinning solution is sprayed out the spinneret through a metering pump, and enters the coagulation bath. The coagulation bath is water, the temperature is 10 ⁰C, and then it is stretched with saturated steam, the stretching temperature is 100 ⁰C, and the stretching ratio is 1.5 times. It was washed with water, oiled, and dried at a temperature of 120 ⁰C. The dried fibers are crimped at 90 ⁰C, heat-set at 130 ⁰C, and finally cut and packed to obtain a high-polymerization bacterial cellulose short fiber product (page 3, lines 5 – 12). The molding in step (2) is completed by a dry-wet spinning, wherein the molding process is spinning, stretching, water washing, stretching, and drying, wherein the spinning solution is sprayed from a spinneret and then pass through an air gap, and then enter the spinning bath to solidify into silk (page 2, lines 24 – 26).
The specification discloses that the high tenacity regenerated cellulosic fiber is obtained from a process comprising steps of subjecting a bacterial cellulose to a pre-treatment step to obtain a pre-treated bacterial cellulose having a degree of polymerization in a range of 450 – 2000, said pre-treatment step comprising treatment of the bacterial cellulose with a pre-treatment agent that is an alkali; preparing a pre-mix by mixing 5 – 100 wt% of the pre-treatment bacterial cellulose with a solvent, followed by dissolution in a dissolution equipment to dissolve the cellulose and obtain a dope solution; and extruding the dope solution prepared through fine orifice followed by air gap spinning and regeneration in a spin bath to obtain the regenerated cellulose fiber (page 4, lines 17 – 30; page 5, lines 1 – 2). Xu discloses a method of preparing bacterial cellulose fiber comprising the steps of treating the bacterial cellulose with the degree of polymerization of 1500 – 16000 with NaOH and also mixing the NaOH-treated bacterial cellulose with thiourea. Stirring is performed to dissolve the cellulose. Although no specific “dissolution equipment” and no “dope solution” are disclosed, Xu teaches that stirring is performed, which is considered as a dissolution technique that is done in a vessel and a dope solution is inherently obtained after the dissolution. Xu further teaches that the spinning solution is sprayed from a spinneret and then pass through an air gap, and then enter the spinning bath to solidify the silk, which addresses the step of “extruding the dope solution….to obtain the regenerated cellulosic fiber”. Xu teaches the steps of preparing the cellulose fiber, which is the same as the process disclosed for preparing a high tenacity regenerated cellulosic fiber in the specification. Therefore, Xu inherently teaches the claimed high tenacity regenerated cellulosic fiber as well as all the functional properties of the fiber. Moreover, Xu also addresses the limitation “wherein the cellulosic raw material comprises 5 – 100 wt%” of pre-treated bacterial cellulose” because Xu teaches the process of using only pre-treated bacterial cellulose, which is 100 wt% of cellulosic raw material, and there is no mention of additional cellulosic material being used.
For these reasons above, Xu anticipates the claimed invention.
Claims 4 – 5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Xu (Machine Translation of CN101492837A, Reference included with PTO-892).
b. Independent claim 4 is directed to a process for preparing a high tenacity regenerated cellulosic fiber having a tenacity of at least 4.5 grams/denier and elongation of at least 10% measured in accordance with ASTM D 3822, said process comprising the steps of (a) subjecting a bacterial cellulose to a pre-treatment step to obtain a pre-treated bacterial cellulose having a degree of polymerization in a range of 450 – 2000, said pre-treatment step comprising treatment of the bacterial cellulose with an alkali; (b) preparing a pre-mix by mixing cellulosic raw material comprising 5 – 100 wt% of the pre-treated cellulose with a solvent, followed by dissolution in a dissolution equipment, to dissolve the cellulose and obtain a dope solution; (c) extruding the dope solution through fine orifice followed by air gap spinning and regeneration in a spin bath to obtain the regenerated cellulosic fiber. Dependent claim 5 is directed to the process, wherein the pre-treated bacterial cellulose obtained in step (a) has the degree of polymerization in the range of 500 – 1500.
Xu teaches a preparation method of high polymerization bacterial cellulose fiber (page 1, line 5). The method comprises (1) dissolving bacterial cellulose with a polymerization degree of 1500 – 16000 in a solvent, and a bacterial cellulose solution with a mass fraction of 1% to 30% is prepared, filtered, and left to defoam to obtain a spinning solution; (2) the spinning solution in step (1) is sprayed through a spinneret, and then solidified and formed, and then stretched, washed, shaped, and dried to form a finished product (page 1, lines 35 – 39). In one example, the method comprises the bacterial cellulose with a polymerization degree of 1500 is crushed and dried, and then 1.5 mol/L lithium hydroxide / 0.65 mol/L thiourea system is added and dissolved at 0 ⁰C to make a solution. Spin the solution, stir for 12 hours, filter, and defoam and the spinning solution is sprayed out the spinneret through a metering pump, and enters the coagulation bath. The coagulation bath is water, the temperature is 10 ⁰C, and then it is stretched with saturated steam, the stretching temperature is 100 ⁰C, and the stretching ratio is 1.5 times. It was washed with water, oiled, and dried at a temperature of 120 ⁰C. The dried fibers are crimped at 90 ⁰C, heat-set at 130 ⁰C, and finally cut and packed to obtain a high-polymerization bacterial cellulose short fiber product (page 3, lines 5 – 12). The molding in step (2) is completed by a dry-wet spinning, wherein the molding process is spinning, stretching, water washing, stretching, and drying, wherein the spinning solution is sprayed from a spinneret and then pass through an air gap, and then enter the spinning bath to solidify into silk (page 2, lines 24 – 26).
Xu also addresses the limitation “wherein the cellulosic raw material comprises 5 – 100 wt%” of pre-treated bacterial cellulose” because Xu teaches the process of using only pre-treated bacterial cellulose, which is 100 wt% of cellulosic raw material, and there is no mention of additional cellulosic material being used.
For these reasons, Xu anticipates the claimed invention.
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:
i. Determining the scope and contents of the prior art.
ii. Ascertaining the differences between the prior art and the claims at issue.
iii. Resolving the level of ordinary skill in the pertinent art.
iv. 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 4 – 5, 9, and 12 – 15 are rejected under 35 U.S.C. 103 as being unpatentable over Xu (Machine Translation of CN101492837A, Reference included with PTO-892). Claims 4 – 5 are rejected here because they have been rejected by the primary reference under 102.
c. Regarding claims 4 – 5, 9, and 12 – 15, Xu teaches a preparation method of high polymerization bacterial cellulose fiber (page 1, line 5). The method comprises (1) dissolving bacterial cellulose with a polymerization degree of 1500 – 16000 in a solvent, and a bacterial cellulose solution with a mass fraction of 1% to 30% is prepared, filtered, and left to defoam to obtain a spinning solution; (2) the spinning solution in step (1) is sprayed through a spinneret, and then solidified and formed, and then stretched, washed, shaped, and dried to form a finished product (page 1, lines 35 – 39). In one example, the method comprises the bacterial cellulose with a polymerization degree of 1500 is crushed and dried, and then 1.5 mol/L lithium hydroxide / 0.65 mol/L thiourea system is added and dissolved at 0 ⁰C to make a 3.0% (mass percentage) solution. Spin the solution, stir for 12 hours, filter, and defoam and the spinning solution is sprayed out the spinneret through a metering pump, and enters the coagulation bath. The coagulation bath is water, the temperature is 10 ⁰C, and then it is stretched with saturated steam, the stretching temperature is 100 ⁰C, and the stretching ratio is 1.5 times. It was washed with water, oiled, and dried at a temperature of 120 ⁰C. The dried fibers are crimped at 90 ⁰C, heat-set at 130 ⁰C, and finally cut and packed to obtain a high-polymerization bacterial cellulose short fiber product (page 3, lines 5 – 12). The molding in step (2) is completed by a dry-wet spinning, wherein the molding process is spinning, stretching, water washing, stretching, and drying, wherein the spinning solution is sprayed from a spinneret and then pass through an air gap, and then enter the spinning bath to solidify into silk (page 2, lines 24 – 26). Xu teaches that bacterial cellulose is more difficult to dissolve (page 2, line 34). Therefore, suitable solvents in step (1) are an inorganic solvent system, an organic solvent system, or an ionic liquid. The inorganic solvent system may be sodium hydroxide / thiourea. The organic solvent system may be N-methyl-morpholine-N-oxide (NMMO) (page 2, lines 3 – 6). In example 4, the bacterial cellulose with a polymerization degree of 2000 is pulverized and dried, and then a 50% (mass percent) NMMO aqueous solution is added for premixing to obtain an dissolved cellulose mixture suspension (Page 3, lines 42 – 44).
It would have been prima facie obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the process as taught by Xu to achieve the claimed process for preparing a high tenacity regenerated cellulosic fiber because Xu teaches the process recited in claim 4. For claim 9, Xu teaches that sodium hydroxide may be used in the process. For claims 12 – 13, Xu teaches the step of washing and the step of pulverizing. Although Xu does not explicitly disclose washing and size reducing the pre-treated bacterial cellulose, Xu teaches washing and pulverizing as parts of the process. It is a common practice in the art to wash and reduce the particle size of the material to improve purity, handling, and mixing. A person of ordinary skill in the art would have recognized that such washing step and size reduction step could be beneficial regardless of whether it is applied before or after pre-treatment. Therefore, it would have been obvious to apply the washing and size reduction step at any stage of the processing, including after pre-treatment, in order to facilitate processing, such as dissolving. For claim 14, Xu teaches example 4, which demonstrates the pre-mixing step, wherein the example does not explicitly teach reduced or raised temperature and long mixing time. Therefore, it is unexpected that the mixing is done in 0 hour and at room conditions. For claim 15, it would have been prima facie obvious for a person of ordinary skill in the art to substitute thiourea with NMMO as taught by Xu because Xu teaches that NMMO is one of the recognized solvents for dissolution of bacterial cellulose. It would have been obvious for one of ordinary skill in the art to substitute thiourea with NMMO because these solvents are known in the art for capable of dissolving bacterial cellulose, and it would have been obvious to substitute equivalent solvent known for the same purpose. Therefore, one of the ordinary skill in the art would have had a reasonable expectation of success to modify the process and substitute thiourea with NMMO as taught by Xu to achieve the claimed invention because Xu teaches the method for preparing high polymerization bacterial cellulose fiber and provides motivation for the modification, and it is well known to substitute solvents for dissolving the same material.
Claims 6 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Xu (Machine Translation of CN101492837A, Reference included with PTO-892) as applied to claims 4 – 5, 9, and 12 – 15 above, and further in view of Cadwalader (WO2018/035245A1).
d. Regarding claims 6 and 10, Xu teaches the limitations discussed above.
However, Xu does not teach the pre-treatment step comprises an additional treatment for reducing the amount of metallic impurities in the bacterial cellulose, wherein the treatment comprising treating the bacterial cellulose with a chelating agent, wherein the chelating agent is ethylenediaminetetraacetic acid (EDTA).
Cadwalader teaches chelating agents for reducing metal content in some products and methods related thereto. In some embodiments, the products include one or more carbohydrates-based isolates, such as cellulose (para. [0041]). In some embodiments, the chelator is EDTA or salts thereof (para. [0052]).
It would have been prima facie obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the process as taught by Xu to include a step of reducing metal content using chelating agent in view of Cadwalader because Cadwalader teaches that cellulose contains metal impurities and EDTA may be used to reduce the metal content. One would have been motivated to modify the process as taught by Xu to include a step of reducing metal content using chelating agent in view of Cadwalader because it is known in the art that EDTA is a chelator used to reduce metal content in cellulose. Therefore, one of the ordinary skill in the art would have had a reasonable expectation of success to modify the process as taught by Xu to include a step of reducing metal content using chelating agent in view of Cadwalader because Xu teaches the preparation of cellulose fiber and Cadwalader teaches that EDTA is a chelator for reducing metal impurities in cellulose, thereby, yielding predictable results.
Claims 7 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Xu (Machine Translation of CN101492837A, Reference included with PTO-892) as applied to claims 4 – 5, 9, and 12 – 15 above, and further in view of Wang et al. (Machine Translation of CN105926065A, Reference included with PTO-892).
e. Regarding claims 7 and 11, Xu teaches the limitations discussed above. Xu further teaches that the organic solvent system may contain potassium permanganate (page 2, line 8).
However, Xu does not teach that the oxidizing agent is sodium hypochlorite.
Wang et al. teach a preparation method for a bacterial cellulose nanofiber-based oriented macroscopic fiber and the invention uses bacterial cellulose wet film as a raw material and oxidize and homogenize the bacterial cellulose with a TEMPO oxidation system, wherein the oxidation system contains the oxidizing agent NaClO (page 2, lines 22 – 24). Wang et al. further teach that the treatment of bacterial cellulose using oxidizing agent is performed in a sealed system with the temperature raised to 80 ⁰C and the system is stirred for 0.5 to 2 hours (page 3, lines 15 – 16).
It would have been prima facie obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to substitute the potassium permanganate as taught by Xu with NaClO in view of Wang et al. because both Xu and Wang et al. teach methods of preparing cellulose fiber using oxidizing agent. One would have been motivated to substitute the potassium permanganate as taught by Xu with NaClO in view of Wang et al. because it is known in the art that both potassium permanganate and NaClO are oxidizing agent. It would have been obvious to substitute the potassium permanganate as taught by Xu with NaClO in view of Wang et al. because both agents exhibit oxidizing property. Wang et al. teach the treatment of bacterial cellulose at 80 ⁰C for 0.5 to 2 hours, which reads on the limitation in claim 11. Therefore, one of the ordinary skill in the art would have had a reasonable expectation of success to substitute the potassium permanganate as taught by Xu with NaClO in view of Wang et al. because it is known in the art that potassium permanganate and NaClO are oxidizing agents and the substitution will yield predictable results.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Xu (Machine Translation of CN101492837A, Reference included with PTO-892) as applied to claims 4 – 5, 9, and 12 – 15 above, and further in view of Rodriguez-Chanfrau et al. (Cellulose Chemistry and Technology, 2017, Vol. 51, Issue 7 – 8, page 673 – 680, Reference included with PTO-892).
f. Regarding claim 8, Xu teaches the limitations discussed above.
However, Xu does not teach the pre-treatment agent is the acid, wherein the acid is sulphuric acid.
Rodriguez-Chanfrau et al. teach that the bacterial cellulose is modified by acid treatment with sulphuric acid. The results show that the solubility of the initial sample increased by approximately 18% while the yield exceeds 80% (Abstract).
It would have been prima facie obvious for one of the ordinary skill in the art before the effective filing date of the claimed invention to substitute the alkali used in the process as taught by Xu with sulphuric acid in view of Rodriguez-Chanfrau et al. because Rodriguez-Chanfrau et al. teach that bacterial cellulose may be treated with acid to increase the solubility. One would have been motivated to substitute the alkali used in the process as taught by Xu with sulphuric acid in view of Rodriguez-Chanfrau et al. because Rodriguez-Chanfrau et al. teach that sulphuric acid treatment is able to increase the solubility of bacterial cellulose by 18%. Therefore, one of the ordinary skill in the art would have had a reasonable expectation of success to substitute the alkali used in the process as taught by Xu with sulphuric acid in view of Rodriguez-Chanfrau et al. because it is known in the art that sulphuric acid treatment will enhance the solubility of bacterial cellulose.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Xu (Machine Translation of CN101492837A, Reference included with PTO-892) as applied to claims 4 – 5, 9, and 12 – 15 above, and further in view of Anaya-Esparza et al. (Processes, 2020, Vol. 8, Issue 11, Reference included with PTO-892).
g. Regarding claim 16, Xu teaches the limitations discussed above.
However, Xu does not teach the pre-mix further comprises an additive, wherein the additive is TiO2.
Anaya-Esparza et al. teach that CMC-TiO2 shows antimicrobial activity against E. coli and S. aureus, associated with the ROS generation ability of TiO2 with cell growth inhibition properties (page 13, para. 1).
It would have been prima facie obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to combine the pre-mix as taught by Xu with TiO2 in view of Anaya-Esparza et al. because Anaya-Esparza et al. disclose that TiO2 incorporated into cellulose will exhibit antimicrobial activity. One would have been motivated to combine the pre-mix as taught by Xu with TiO2 in view of Anaya-Esparza et al. because the addition of TiO2 to cellulose will inhibit growth of microbial. Therefore, one of the ordinary skill in the art would have had a reasonable expectation of success to combine the pre-mix as taught by Xu with TiO2 in view of Anaya-Esparza et al. because it is known in the art that TiO2 will provide benefit when incorporated with cellulose.
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 – 5, 8, and 15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 4 of U.S. Patent No. 8952146B2 in view of Rodriguez-Chanfrau et al. (Cellulose Chemistry and Technology, 2017, Vol. 51, Issue 7 – 8, page 673 – 680, Reference included with PTO-892).
a. Regarding claims 1 – 5, 8, and 15, ‘146B2 teaches a process for producing low fibrillating cellulose fibers by a dry-jet-wet spinning process comprising dissolving cellulose in a solvent system containing at least one ionic liquid to form a polymer solution; spinning fibers from said polymer solution in a spinneret at a temperature in the range of 80 ⁰C to 140 ⁰C; drawing the spin fibers from the spinneret through an air gap into a coagulation bath; and washing and drying the drawn fibers (claim 1). The weight average degree of polymerization of cellulose is between 100 and 4000 (claim 4).
However, ‘146B2 does not teach that the cellulose is a bacterial cellulose and the cellulose is pre-treated with pre-treatment agent, wherein the pre-treatment agent is sulphuric acid.
Rodriguez-Chanfrau et al. teach that the bacterial cellulose is modified by acid treatment with sulphuric acid. The results show that the solubility of the initial sample increased by approximately 18% while the yield exceeds 80% (Abstract).
It would have been prima facie obvious for one of the ordinary skill in the art before the effective filing date of the claimed invention to consider substituting cellulose with bacterial cellulose and to combine the process as taught by ‘146B2 with the pre-treatment step using sulphuric acid in view of Rodriguez-Chanfrau et al. because it is known in the art that cellulose and bacterial cellulose are known forms of cellulose and share the same chemical structure and Rodriguez-Chanfrau et al. teach that bacterial cellulose may be treated with acid to increase the solubility. One would have been motivated to combine the process as taught by ‘146B2 with the pre-treatment step using sulphuric acid in view of Rodriguez-Chanfrau et al. because Rodriguez-Chanfrau et al. teach that sulphuric acid treatment is able to increase the solubility of bacterial cellulose by 18%. Moreover, the combination of ‘146B2 and Rodriguez-Chanfrau et al. teach all the steps for preparing the claimed composition. The combination of ‘146B2 and Rodriguez-Chanfrau et al. will inherently produce the claimed composition with the functional properties. Therefore, one of the ordinary skill in the art would have had a reasonable expectation of success to consider substituting cellulose with bacterial cellulose and combine the process as taught by ‘146B2 with the pre-treatment step using sulphuric acid in view of Rodriguez-Chanfrau et al. because substituting cellulose with bacterial cellulose will yield predictable results and it is known in the art that sulphuric acid treatment will enhance the solubility of bacterial cellulose.
Conclusion
No claim is found to be allowable.
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/H.Y.L./Examiner, Art Unit 1693
/SCARLETT Y GOON/Supervisory Patent Examiner
Art Unit 1693