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 .
Status of the Application
Claims 1, 2, 4, 6-8, 10-23 are pending.
Election/Restrictions
Applicant's election without traverse of Group I, claims 1, 2, 4, 6-8, directed to a method of producing oxidized cellulose, in the reply filed on 01/20/2026 is acknowledged.
The requirement is therefore made FINAL.
Claims 10-23 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Applicant is reminded that upon the cancellation of claims to a non-elected invention, the inventorship must be amended in compliance with 37 CFR 1.48(b) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. Any amendment of inventorship must be accompanied by a request under 37 CFR 1.48(b) and by the fee required under 37 CFR 1.17(i).
Claims 1, 2, 4 and 6-8, are under current examination.
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, 2, 4 and 6-8, 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 pre-AIA the applicant regards as the invention.
Claims 1 is indefinite as claim 1 recites:
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It is unclear if “by hypochlorous acid or salt thereof” is present in the product or is a process step. Examiner suggests “wherein oxidized cellulose contains an oxide of a cellulose raw material, substantially free of N-oxyl compound” or similar.
Claim 1 is also indefinite as the claim recites:
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It is unclear what applicant means by “viscosity of a slurry---having the same concentration as when the oxidation is performed”. Is there any other alternative that may have different concentration. For compact prosecution, the claim limitation has been interpreted as “viscosity of a slurry of the cellulose material at the start of oxidation reaction with other reactants, which is measured using…1,000Pa.s or less”.
Since the dependent claims don’t cure the above deficiency, the dependent claims are also indefinite.
Claim 2 is indefinite as the claim recites “wherein a concentration of…35 mass% or less, and/or … more than 6.5mass%. This is because word “and” between the two alternatives is making the scope of the claim unclear. With the word “and” in the claim indicates that the concentration can be 35mass% or less (i.e., it can be less than 6.5mass%), and– more than 6.5mass% (i.e., it can be more than 35mass%), thereby making scope of concentration unclear.
Claim 4 is indefinite as the claim recites “wherein an available chlorine concentration of ---6mass% or more, and 43 mass % or less or--- less than 14mass%. This is because word “and” between the two alternatives is making scope of the claim unclear. With word “and”, the claim is reciting that the concentration can be 6mass% or more (i.e., it can be more than 43mass%), and– 43mass % or less (i.e., it can be less than 6 mass%), thereby making scope of concentration unclear.
Appropriate correction required.
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 2, 4 and 6-8 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Kamiya (U.S. 11919974 B2; effective filing date Aug 2, 2019).
Kamiya discloses a method of producing an oxidized cellulose, free of N-oxyl compound, and with same NMR spectrum peaks as described in the instant specification in a range from 165ppm to 185ppm using same method of oxidizing a cellulose raw material with a hypochlorous acid or a salt thereof having available concentration of chlorine in the reaction from 6% by mass to 14% by mass (reads on claim 4) at a reaction temperature 30C (reads on claim 6) for 2hours (reads on claim 7) or longer at a pH less than 11 (reads on claim 8), with several examples (entire patent, especially abstract, col 2-10 and Table 1 and examples):
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With regards to the difference of viscosity of the starting cellulose raw material at the start of oxidation reaction: Example 1B of the instant specification provides
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and the cited prior art example 1 provides:
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. Starting reaction mixture of example 1B of the instant specification contains 350 g of sodium hypochlorite and 50g of cellulose, i.e., cellulose material is 14.2% by mass in the reaction mixture and water is adjusted to provide 21mass % of chlorine to start the process vs the cited prior art starting reaction mixture of example 1 contains 30.3g of sodium hypochlorite and 0.35g of cellulose, i.e., cellulose material is 1.155% by mass in the reaction mixture and water is adjusted to provide 14 mass % of chlorine to start the process. Since mass% of cellulose material in the starting mixture of the cited prior art is less and volume is more (or even if considered same), viscosity of starting mixture with cellulose material of the cited prior art is expected to be less than examples of the instant invention and 1000pa.s. Thus, the cited prior art reads on the instant claims.
With regards to the difference of degree of polymerization of obtained product-Since the cited prior art teaches same process, process conditions and staring materials, the result of the process is also expected to be the same, whether or not realized by the cited prior art. Thus, the cited prior art reads on the instant claims.
Since the cited prior art reads on all the limitations of the instant claims 1, 2, 4 and 6-8, these claims are anticipated.
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 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 of this title, 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 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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, 2, 4 and 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Kamiya (US 11919974 B2; effective filing date Aug 2, 2019).
Determining the scope and contents of the prior art
Kamiya discloses a method of producing an oxidized cellulose, free of N-oxyl compound, and with same NMR spectrum peaks as described in the instant specification in a range from 165ppm to 185ppm using same method of oxidizing a cellulose raw material with a hypochlorous acid or a salt thereof having available concentration of chlorine in the reaction from 6% by mass to 14% by mass (reads on claim 4) at a reaction temperature 30C (reads on claim 6) for 2hours (reads on claim 7) or longer at a pH less than 11 (reads on claim 8), with several examples (entire patent, especially abstract, col 2-10 and Table 1 and examples):
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With regards to the difference of degree of polymerization of obtained product-Since the cited prior art teaches same process, process conditions and staring materials, the result of the process is also expected to be the same, whether or not realized by the cited prior art.
Ascertaining the differences between the prior art and the claims at issue
Kamiya discloses a method of producing an oxidized cellulose, free of N-oxyl compound, and with same NMR spectrum peaks as described in the instant specification in a range from 165ppm to 185ppm using same method of oxidizing a cellulose raw material with a hypochlorous acid or a salt thereof having available concentration of chlorine in the reaction from 6% by mass to 14% by mass at a reaction temperature 30C for 2hours (reads on claim 7) or longer at a pH less than 11, with several examples, but silent about viscosity of cellulose raw material at start of the reaction.
Resolving the level of ordinary skill in the pertinent art
With regards to the difference of viscosity of the starting cellulose raw material at the start of oxidation reaction: Example 1B of the instant specification provides
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and the cited prior art example 1 provides:
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. Starting reaction mixture of example 1B of the instant specification contains 350 g of sodium hypochlorite and 50g of cellulose, i.e., cellulose material is 14.2% by mass in the reaction mixture and water is adjusted to provide 21mass % of chlorine to start the process vs the cited prior art starting reaction mixture of example 1 contains 30.3g of sodium hypochlorite and 0.35g of cellulose, i.e., cellulose material is 1.155% by mass in the reaction mixture and water is adjusted to provide 14 mass % of chlorine to start the process. Since mass% of cellulose material in the starting mixture of the cited prior art is less and volume is more (or even if considered same), viscosity of starting mixture with cellulose material of the cited prior art is expected to be less than examples of the instant invention and 1000pa.s. Thus, the cited prior art reads on the instant claims.
Based on the above established facts, it appears that the teachings of above cited prior art read applicants’ process.
Therefore, all the claimed elements were known in the prior art and one skilled person in the art could have modified the elements as claimed by known methods with no change in their respective functions, and the modification would have yielded predictable results to one of ordinary skill in the art at the time of the invention.
Considering objective evidence indicating obviousness or nonobviousness
To establish a prima facie case of obviousness, three basic criteria must be met: (1) the prior art reference must teach or suggest all the claim limitations; (2) there must be some suggestion or motivation, either in the references themselves or in the knowledge generally available to one of ordinary skill in the art, to modify the reference or to combine reference teachings; and (3) there must be a reasonable expectation of success; and (MPEP § 2143).
In this case, Kamiya discloses a method of producing an oxidized cellulose, free of N-oxyl compound, and with same NMR spectrum peaks as described in the instant specification in a range from 165ppm to 185ppm using same method of oxidizing a cellulose raw material with a hypochlorous acid or a salt thereof having available concentration of chlorine in the reaction from 6% by mass to 14% by mass at a reaction temperature 30C for 2hours (reads on claim 7) or longer at a pH less than 11, with several examples.
In KSR International Vo. V. Teleflex Inc., 82 USPQ2d (U.S. 2007), the Supreme Court particularly emphasized “the need for caution in granting a patent based on a combination of elements found in the prior art,” (Id. At 1395) and discussed circumstances in which a patent might be determined to be obvious. Importantly, the Supreme Court reaffirmed principles based on its precedent that “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” (Id. At 1395). See MPEP 2143 - Examples of Basic Requirements of a Prima Facie Case of Obviousness [R-9].
In this case at least prong (E) “Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success would apply.
The rationale to support a conclusion that the claim would have been obvious is that “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103.”KSR, 550 U.S. at ___, 82 USPQ2d at 1397. If any of these findings cannot be made, then this rationale cannot be used to support a conclusion that the claim would have been obvious to one of ordinary skill in the art. Further, there is a reasonable expectation of success of that cellulose material having viscosity 1000pa.s or less may be oxidized using method of the cited prior art and can be made by teachings of the above cited prior art.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention by taking the advantage of the teaching of the above cited references and to make the instantly claimed process with a reasonable expectation of success. Modifying such parameters is prima facie obvious because an ordinary artisan would be motivated to develop an alternative process for economic reasons or convenient purposes from a known individual reaction steps, and to arrive applicants process with a reasonable expectation of success, since it is within the scope to modify the process through a routine experimentation.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1, 2, 4 and 6-8 in the instant application are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 11919974 B2, since the claims, if allowed, would improperly extend the “right to exclude" already granted in the patent.
Although the conflicting claims are not identical, they are not patentably distinct from each other because of the following reasons:
The claims of instant application and claims 1-9 of U.S. Patent No. 11919974 B2 are drawn to a process of making oxidized cellulose using same reactants, and reaction conditions with a difference that claims of the patent are silent about viscosity of the cellulose material at the start of the reaction and degree of polymerization of the product.
With regards to the difference of viscosity of the starting cellulose raw material at the start of oxidation reaction: Example 1B of the instant specification provides
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and U.S. Patent No. 11919974 B2 example 1 provides:
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. Starting reaction mixture of example 1B of the instant specification contains 350 g of sodium hypochlorite and 50g of cellulose, i.e., cellulose material is 14.2% by mass in the reaction mixture and water is adjusted to provide 21mass % of chlorine to start the process vs U.S. Patent No. 11919974 B2 starting reaction mixture of example 1 contains 30.3g of sodium hypochlorite and 0.35g of cellulose, i.e., cellulose material is 1.155% by mass in the reaction mixture and water is adjusted to provide 14 mass % of chlorine to start the process. Since mass% of cellulose material in the starting mixture of U.S. Patent No. 11919974 B2 is less and volume is more (or even if considered same), viscosity of starting mixture with cellulose material is expected to be less than examples of the instant invention and 1000pa.s.
With regards to the difference of degree of polymerization of obtained product-Since the U.S. Patent No. 11919974 B2 teaches same process, process conditions and staring materials, the result of the process is also expected to be the same, whether or not realized by the cited prior art.
Thus, the difference, however, does not constitute a patentable distinction, because the claims in the present invention simply fall within the scope of claims 1-9 of U.S. Patent No. 11919974 B2. For the foregoing reasons, the instantly claimed process is made obvious.
Furthermore, there is no apparent reason why applicant was prevented from presenting claims corresponding to those of the instant application during prosecution of the application which matured into a patent. See also MPEP § 804.
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PANCHAM BAKSHI whose telephone number is (571)270-3463. The examiner can normally be reached M-Thu 7-4.30 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Milligan Adam can be reached at 571-2707674. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PANCHAM BAKSHI/Primary Examiner, Art Unit 1623
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