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
This office action is a response to applicant’s communication submitted February 2, 2026, wherein claims 1, 2, 4-6, 8, 13, 23, 26, 29, 30, 33, and 34 are amended, claim 2 is canceled, and new claim 35 is introduced. This application is a national stage application of PCT/FI2021/050918, filed December 31, 2021, which claims priority to foreign application FI20206386, filed December 31, 2020.
Claims 1, 2, 4-6, 8-10, 13, 23, 25-31, and 33-35 are pending in this application.
Claims 1, 2, 4-6, 8-10, 13, 23, 25-31, and 33-35 as amended are examined on the merits herein.
Withdrawn Rejections
Applicant’s amendment, submitted February 2, 2026, with respect to the rejection of claim 13, under 35 USC 112(b) for being indefinite because it refers to a precooling step that lacks antecedent basis in the claim, has been fully considered and found to be persuasive to remove the rejection because the claim has been amended to no longer refer to the precooling step. Therefore the rejection is withdrawn.
Applicant’s amendment, submitted February 2, 2026, with respect to the rejection of claim 23 under 35 USC 112(b) for including an ambiguous method step recited in the passive voice, has been fully considered and found to be persuasive to remove the rejection as the claim has been amended to describe the limitation as a property of the starting material instead. Therefore the rejection is withdrawn.
Applicant’s amendment, submitted February 2, 2026, with respect to the rejection of claim 29 under 35 USC 112(b) for referring to a mixing zone of a mixing kneader which lacks antecedent basis in the claim, has been fully considered and found to be persuasive to remove the rejection as the claim has been amended to describe the limitation as a property of the starting material instead. Therefore the rejection is withdrawn.
Applicant’s amendment, submitted February 2, 2026, with respect to the rejection of claim 34 under 35 USC 112(b) for including ambiguous method steps recited in the passive voice, has been fully considered and found to be persuasive to remove the rejection as the claim has been amended to positively recite the relevant method steps. Therefore the rejection is withdrawn.
Applicant’s amendment, submitted February 2, 2026, with respect to the rejection of claims 1, 23, 25-28, 30, and 34 under 35 USC 103 for being anticipated by Valta et al., has been fully considered and found to be persuasive to remove the rejection as the claims have been amended so as to require a specific mixing speed at the second mixing step. Therefore the rejection is withdrawn.
Applicant’s amendment, submitted February 2, 2026, with respect to the rejection of claims 1, 25-28, 31, and 33 under 35 USC 103 for being anticipated by Huttunen et al., has been fully considered and found to be persuasive to remove the rejection as the claims have been amended so as to require a specific mixing speed at the second mixing step. Therefore the rejection is withdrawn.
Applicant’s amendment, submitted February 2, 2026, with respect to the rejection of claims 2-6, 8-10, and 13 under 35 USC 103 for being obvious over Valta et al. in view of Kwon et al., has been fully considered and found to be persuasive to remove the rejection as the claims have been amended so as to define the mixing speed limitation as applying to the second mixing step. Therefore the rejection is withdrawn.
Applicant’s amendment, submitted February 2, 2026, with respect to the rejection of claim 34 under 35 USC 103 for being obvious over Valta et al. in view of ‘476 et al., has been fully considered and found to be persuasive to remove the rejection as the claims have been amended so as to define the mixing speed limitation as applying to the second mixing step. Therefore the rejection is withdrawn.
Applicant’s amendment, submitted February 2, 2026, with respect to the rejection of claims 1, 23, 25-28, 30, 31, and 34 for claiming the same invention as claim 1 of US application 18/718491 in view of Valta et al., has been fully considered and found to be persuasive to remove the rejection as the claims have been amended so as to require a specific mixing speed at the second mixing step. Therefore the rejection is withdrawn.
Applicant’s amendment, submitted February 2, 2026, with respect to the rejection of claims 2-6, 8-10, and 13 for claiming the same invention as claim 1 of US application 18/718491 in view of Valta et al. in view of Kwon et al., has been fully considered and found to be persuasive to remove the rejection as the claims have been amended so as to define the mixing speed limitation as applying to the second mixing step. Therefore the rejection is withdrawn.
The following new grounds of rejection are introduced:
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, 27, 30, 31, 33 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Olsson et al. (PCT international publication WO2017/178531, cited in PTO-1449)
Independent claim 1 is directed to a process comprising providing cellulose carbamate, mixing the cellulose carbamate with alkaline solution, further mixing the mixture at a specific rotation speed and temperature, and finally recovering the dissolved solution.
Olsson et al. discloses a process for producing a cellulosic dope composition comprising vigorously mixing the cellulosic pulp in an alkali solution at a minimum power of 150 kW/m3, then further dissolving the composition at a power density of 75 kW/m3 maximum. (p. 5 line 29 – p. 6 line 7) In a preferred embodiment the cellulosic pulp is a cellulose carabamate. (p. 13 lines 18-22) In a preferred embodiment the dissolution has a rotation speed of less than 300 rpm, for example 10-100 rpm (p. 13 lines 1-17) This process would therefore involve steps of providing a cellulose carbamate, mixing partway through the first homogenization step, mixing further through the second dissolution step at lower rpm, and recovering a solution of cellulose carbamate, thereby anticipating present claim 1.
Regarding claim 27, p. 14 lines 18-21 disclose a NaOH concentration of 7.2-7.8%. Regarding claim 30, p. 12 lines 16-33 disclose maintaining the composition at a target temperature during the dissolution. P. 12 lines 9-15 disclose the dissolution taking place over a time of 5-30 minutes, which anticipates claim 30. Regarding claim 31, Olsson et al. discloses including ZnO at a concentration of about 1.1%. (p. 14 line 29 – p. 15 line 7) Regarding claim 33, both of these aforementioned concentration, when taken together, would anticipate the ratio recited in this claim.
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.
Claims 25, 26, and 28 are rejected under 35 U.S.C. 103 as being unpatentable over Olsson et al. (PCT international publication WO2017/178531, cited in PTO-1449)
The disclosure of Olsson et al. is discussed above. Olsson et al. does not specifically describe the exact cellulose carbamate concentration of 6-10% recited in claims 26 and 28. However, p. 14 lines 25-26 state that for a derivatized pulp such as cellulose carbamate, the optimal concentration is 6-12%. Since this substantially overlaps with 6-10%, one of ordinary skill in the art would have found it to be obvious to use a concentration between 6-10% in the process of optimizing the value within the slightly broader prior art range. Regarding claim 25, Olsson et al. discloses a DP preferably higher than 200. (p. 9 lines 17-23) It would have been obvious to one of ordinary skill in the art at the time of the invention to use a DP of between 200-400 based on this broad disclosure, as the claimed range falls within the scope of DP values described by the prior art.
Claims 2, 4-6, 8-10, 13, 29, and 35 are rejected under 35 U.S.C. 103 as being unpatentable over Olsson et al. as applied to claims 1, 25-28, 30, 31, and 33 above, and further in view of Diener et al. (Reference included with PTO-892)
The disclosure of Olsson et al. is discussed above. Regarding present claims 2 and 13, Olsson et al. does not specifically disclose a process wherein the dissolution is carried out in a kneader reactor. However, Dener et al. discloses that such reactors are suitable for carrying out dissolution of cellulose. (p. 138 middle column second paragraph, right column second paragraph) It would have been obvious to one of ordinary skill in the art at the time of the invention to carry out the dissolution described by Olsson et al. in a kneader type reactor. One of ordinary skill in the art, looking to determine what sort of reactors can be used to carry out cellulose dissolution, would have seen the disclosure of Diener et al. as suggesting that this sort of reactor is useful for carrying out such a dissolution process. Furthermore looking to figure 4 of Olsson, the diagram pictured therein clearly indicates a process involving two separate reactors (parts 2 and 3 as the homogenization step and parts 5 and 7 for the dissolution step) Therefore one of ordinary skill in the art would have been motivated to use two separate reactors to carry out the process continuously.
Regarding claim 4, p. 12 lines 16-33 of Olsson et al. discloses holding the reaction at temperatures below room temperatures during both the homogenization and dissolution. Doing so would necessarily require cooling the solution while it is in the reactor to maintain its temperature. Regarding claim 5, p. 23 line 23 - p. 24 line 32 and figure 4 of Olsson et al. disclose a process wherein cellulose pulp is fed into a mixing reactor to be homogenized. Regarding claim 6, the aforementioned portion of Olsson’s disclosure further describes mixing cellulose pulp with alkali prior to introducing it into the homogenization step, and then further adding more cold liquid alkali to the homogenization unit, thereby meeting the requirements of this claim.
Regarding present claims 8-10, these claims specify the temperature of the mixture in the mixing zone, or of the alkali solution as it is being added to the mixing zone. P. 12 lines 16-33 disclose that temperatures of for example -3 to -8OC during the homogenization step. Furthermore the alkali solution before mixing can be added at a colder temperature of -8 to -25OC, which would suggest adding the second portion at said colder temperature as recited in claim 9.
Regarding claim 29, which depends from claim 2, p. 12 lines 9-15 of Olsson et al. discloses a residence time of 5-30 minutes, which is within the scope described in this claim. Regarding claim 35, while Olsson et al. discloses carrying out the homogenization and dissolution at an alkali concentration of less than 10% (e.g. 7-8%) one example is disclosed wherein a higher concentration of alkali solution at a lower temperature can be added to the reactor. (p. 26 line 13, 9.4% at -9.8OC) It would therefore have been obvious to one of ordinary skill in the art to add further alkali at a high concentration such as 10% to the mixing reactor, since this is close to a value exemplified by Olsson et al.
For these reasons the invention taken as a whole is prima facie obvious.
Claim 34 is rejected under 35 U.S.C. 103 as being unpatentable over Olsson et al. as applied to claims 1, 25-28, 30, 31, and 33 above, and further in view of PCT international publication WO03/064476. (Reference included with PTO-1449, herein referred to as ‘476)
The disclosure of Olsson et al. is discussed above. Olsson et al. does not specifically describe a process comprising performing the steps recited in present claim 34. However, Olsson et al. does describe obtaining the cellulose carbamate in a method as described by WO03/064476. (p. 13 lines 22-23)
‘476 describes an improved process for making cellulose carbamate incorporating mechanical working of the reaction mixture. (p. 3 line 25 – p. 4 line 3) The cellulose starting material is wood pulp, which is mixed with urea and an auxiliary agent, thereby performing the first two steps of the process recited in claim 34. (p. 3 lines 29-35) The aforementioned mechanical working of the mixture would then meet the limitations of the third step recited therein. Regarding the fourth step of heating, p. 4 lines 33-37 of ‘476 describes raising the temperature of the reaction mixture to a point where the reaction can start. According to p. 3 lines 6-10 of ‘476 this temperature is 133C, the melting point of urea, indicating that the mechanical working step of ‘476 raises the temperature to a value falling within the range recited by claim 34. Furthermore regarding the range of 2-4 hours for this step it would have been obvious to one of ordinary skill in the art at the time of the invention to determine the appropriate length of time to carry out the reaction. It would have been obvious to one of ordinary skill in the art at the time of the invention to use the process described by ‘476 to produce CCA and then recover the CCA and dissolve it by the method described by Olsson et al. One of ordinary skill in the art would have seen Olsson’ s citation of this reference as directly suggesting its use as a source of CCA.
For these reasons the invention taken as a whole is prima facie obvious.
Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over Olsson et al. as applied to claims 1, 25-28, 30, 31, and 33 above, and further in view of Asaadi et al. (Reference included with PTO-892)
The disclosure of Olsson et al. is discussed above. Olsson et al. does not specifically describe a process wherein the cellulose carbamate does not contain native plant fibers. However, Asaadi et al. discloses that there exists a need for sustainable recycling of cotton fabrics. (p. 3250 left column) Such recycling can be carried out by dissolution of waste cellulose in ionic liquids and regeneration into recycled cellulose fibers. Since this process involves dissolution of the cellulose, it would destroy the previously existing cotton fibers, any new fibers produced during the regeneration would not be natural plant fibers as described in present claim 23. It would have been obvious to one of ordinary skill in the art to use recycled cellulose having fibers that are not natural plant fibers as the source of cellulose in the process described by Olsson et al. One of ordinary skill in the art would have seen the disclosure of Olsson et al. as requiring a source of cellulose form which to make the cellulose carbamate and would therefore have looked to any prior art source of cellulose, including recycled cotton cellulose as described by Asaadi et al.
For these reasons the invention taken as a whole is prima facie obvious.
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, 25-28, 30, 31, and 33 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/718491 (US pre-grant publication 2025/0051974, of record in previous action, herein referred to as ‘491) in view of Olsson et al. (PCT international publication WO2017/178531, cited in PTO-1449)
Claim 1 of ‘491 claims a process for manufacturing a cellulose carbamate textile fiber, comprising a step of dissolving cellulose carbamate in an aqueous solution of NaOH and zinc. While claim 1 of ‘491 does not specifically describe particular properties of the claimed dissolution method such as temperature, it would have been obvious to one of ordinary skill in the art at the time of the invention to look to other descriptions in the prior art of methods of dissolving CCA, for example Olsson et al., thereby rendering it obvious to incorporate the process described by Olsson et al. into this claimed method.
This is a provisional nonstatutory double patenting rejection.
Claims 2, 4-6, 8-10, 13, 29, and 35 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/718491 (US pre-grant publication 2025/0051974, of record in previous action, herein referred to as ‘491) in view of Olsson et al. (PCT international publication WO2017/178531, cited in PTO-1449) in view of Diener et al. (Reference included with PTO-892)
Claim 1 of ‘491 and the disclosure of Olsson et al. are discussed above. Regarding claim 2, Olsson et al. discloses dissolving the CCA in a mixer. (column 3 lines 15-43) While Olsson et al. does not specifically disclose that the mixer is a kneader type-mixer, Deiner et al. discloses a method for dissolving cellulose in a solvent using a kneader, as described above under 35 USC 103. It would have been obvious to one of ordinary skill in the art at the time of the invention to use a kneader as the mixer in the dissolution process described by Olsson et al. One of ordinary skill in the art would have seen Deiner et al. as disclosing that kneader-type mixers were used in the art for similar processes of dissolving cellulose in a solvent, and therefore seen such a mixer as being an embodiment of the general class of mixers described by Olsson et al.
Regarding claim 4, Olsson et al. already discloses cooling of the solution in the mixer during mixing. Regarding claim 5, Olsson et al. discloses carrying out the mixing in two separate steps of premixing and mixing. Therefore it would have been obvious to carry out the premixing step and then feed the premix into a mixer for further mixing. Regarding claim 6, since Olsson describes multiple mixing steps, the reference describes mixing a portion of NaOH with the CCA, and then adding more into the premix when it is in the mixer.
Regarding claims 8-10, the temperature ranges recited in these claims are already described by Olsson et al.
Regarding claim 13, this claim requires that the process involve two separate dissolution steps in two separate mixers. As discussed earlier, Olsson et al. already discloses two separate dissolution steps. Therefore it would have been obvious to one of ordinary skill in the art to perform these two steps in two different mixers, as doing so would merely involve routine choices as to how to organize the workflow of the various process steps described by Olsson et al.
This is a provisional nonstatutory double patenting rejection.
Claim 23 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/718491 (US pre-grant publication 2025/0051974, of record in previous action, herein referred to as ‘491) in view of Olsson et al. (PCT international publication WO2017/178531, cited in PTO-1449) in view of Asaadi et al. (Reference included with PTO-892)
Claim 1 of ‘491 and the disclosure of Olsson et al. are discussed above. Claim 1 of ‘491 in view of Olsson et al. does not describe a process wherein the cellulose carbamate does not contain native plant fibers. However, Asaadi et al. discloses that there exists a need for sustainable recycling of cotton fabrics. (p. 3250 left column) Such recycling can be carried out by dissolution of waste cellulose in ionic liquids and regeneration into recycled cellulose fibers. Since this process involves dissolution of the cellulose, it would destroy the previously existing cotton fibers, any new fibers produced during the regeneration would not be natural plant fibers as described in present claim 23. It would have been obvious to one of ordinary skill in the art to use recycled cellulose having fibers that are not natural plant fibers as the source of cellulose in the process described by Olsson et al. One of ordinary skill in the art would have seen the disclosure of Olsson et al. as requiring a source of cellulose form which to make the cellulose carbamate and would therefore have looked to any prior art source of cellulose, including recycled cotton cellulose as described by Asaadi et al.
This is a provisional nonstatutory double patenting rejection.
Claim 34 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/718491 (US pre-grant publication 2025/0051974, of record in previous action, herein referred to as ‘491) in view of Olsson et al. (PCT international publication WO2017/178531, cited in PTO-1449) in view of PCT international publication WO03/064476. (Reference included with PTO-1449, herein referred to as ‘476)
Claim 1 of ‘491 and the disclosure of Olsson et al. are discussed above. Claim 1 of ‘491 in view of Olsson et al. does not describe a process wherein the cellulose carbamate does not contain native plant fibers. However, Olsson et al. does describe obtaining the cellulose carbamate in a method as described by WO03/064476. (p. 13 lines 22-23)
‘476 describes an improved process for making cellulose carbamate incorporating mechanical working of the reaction mixture. (p. 3 line 25 – p. 4 line 3) The cellulose starting material is wood pulp, which is mixed with urea and an auxiliary agent, thereby performing the first two steps of the process recited in claim 34. (p. 3 lines 29-35) The aforementioned mechanical working of the mixture would then meet the limitations of the third step recited therein. Regarding the fourth step of heating, p. 4 lines 33-37 of ‘476 describes raising the temperature of the reaction mixture to a point where the reaction can start. According to p. 3 lines 6-10 of ‘476 this temperature is 133C, the melting point of urea, indicating that the mechanical working step of ‘476 raises the temperature to a value falling within the range recited by claim 34. Furthermore regarding the range of 2-4 hours for this step it would have been obvious to one of ordinary skill in the art at the time of the invention to determine the appropriate length of time to carry out the reaction. It would have been obvious to one of ordinary skill in the art at the time of the invention to use the process described by ‘476 to produce CCA and then recover the CCA and dissolve it by the method described by Olsson et al. One of ordinary skill in the art would have seen Olsson’ s citation of this reference as directly suggesting its use as a source of CCA.
This is a provisional nonstatutory double patenting rejection.
Conclusion
No claims are allowed in this action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREA OLSON whose telephone number is (571)272-9051. The examiner can normally be reached M-F 6am-3:00pm.
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/ANDREA OLSON/ Primary Examiner, Art Unit 1693 4/7/2026