1Notice 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 .
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
Claims 11-15 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group II, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 09/30/2025.
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:
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.
Claim(s) 1-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO 9406530, hereinafter WO’530 listed in IDS equivalent of Quigley, US 5534113 in view of Zikeli, US 20070210481.
Regarding Claim 1 Quigley discloses kneader for processing a transfer mixture into a molding solution according to a direct dissolution method, comprising a feed, a housing and a discharge (Figure 1, feed line-3, container-1, Col 4 line 1-5), wherein the feed introduces a product consisting essentially of cellulose, water and a functional liquid into the housing (abstract, Col 1 line 27-30), wherein a kneader shaft situated in the housing rotationally mixes and kneads the product and wipes it over heated inner surfaces of the mixing kneader (Col 2 line 14-24, Col 4 line 36-37).
Quigley disclose that some of the water evaporates to form a molding solution (Col 1 line 42-44) but didn’t particularly disclose the wherein the amount of undissolved particles in the product and the size of the particles are reduced.
In the related field of endeavor pertaining to the art, Zikeli discloses , homogenisation and uniform mixing by the mixers ([0065]) therefore the shear forces would result into breaking larger particles or droplets into smaller, more uniform which would result into lesser undissolved particles.
It would be obvious for one ordinary skilled in the art to combine Quigley’s teaching of the kneader processing with that of Zikeli’s homogenization during mixing for the purpose of product stability
Further re: the limitation that wherein the process volume of the mixing kneader is determined only by the requirements of a molding solution flow capacity. Quigley discloses that motors-6 and 17 control the molding solution flow (Col 4 line 62-65) ; however Examiner notes that -the manner or method in which a machine is to be utilized is not germane to the issue of patentability of the machine itself. In re Casey 15? USPO 235. The process of using an apparatus as a recitation is viewed as an intended use and is given no patentable weight. Please see MPEP 2114 Ri - 21415 R2 for further details.
“While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber. 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997)
Regarding Claim 2 Quigley discloses Mixing kneader for processing a transfer mixture into a molding solution according to a direct dissolution method, comprising a feed, a housing and a discharge, wherein the feed introduces a product consisting essentially of cellulose, water and a functional liquid into the housing and wherein a kneader shaft situated in the housing rotationally mixes and kneads the product and wipes it over heated inner surfaces of the mixing kneader (feed line-3, container-1, Col 4 line 1-5, Col 4 line 36-37)
Quigley disclose that some of the water evaporates to form a molding solution (Col 1 line 42-44) but didn’t particularly disclose the wherein the amount of undissolved particles in the product and the size of the particles are reduced. In the related field of endeavor pertaining to the art, Zikeli discloses , homogenisation and uniform mixing by the mixers ([0065]) therefore the shear forces would result into breaking larger particles or droplets into smaller, more uniform which would result into lesser undissolved particles. Zikeli discloses the residence time to be between 5 min to 2 hours which meets the recited claim. However,
Examiner notes that -the manner or method in which a machine is to be utilized is not germane to the issue of patentability of the machine itself. In re Casey 15? USPO 235. The process of using an apparatus as a recitation is viewed as an intended use and is given no patentable weight. Please see MPEP 2114 Ri - 21415 R2 for further details.
“While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber. 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997)
Regarding Claim 3 Zikeli discloses the residence time to be between 5 min to 2 hours which meets the recited claim. However, Examiner notes that -the manner or method in which a machine is to be utilized is not germane to the issue of patentability of the machine itself. Inre Casey 15? USPO 235. The process of using an apparatus as a recitation is viewed as an intended use and is given no patentable weight. Please see MPEP 2114 Ri - 21415 R2 for further details.
“While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber. 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997)
Regarding Claim 4-5 Examiner notes that composition of the transfer mixture is an intended use, therefore -the manner or method in which a machine is to be utilized is not germane to the issue of patentability of the machine itself. Inre Casey 15? USPO 235. The process of using an apparatus as a recitation is viewed as an intended use and is given no patentable weight. Please see MPEP 2114 Ri - 21415 R2 for further details.
“While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber. 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997)
Regarding Claim 6, Quigley discloses , wherein the transfer mixture passes at least one preceding transfer organ (Figure 1, screw-21 is passed toa pump-22 before the ejection nozzle-25).
Regarding claims 7, 9 Quigley discloses the transfer mixture is produced from a starting material in a preceding process organ and it’s a thin film evaporator (Figure 1, thin film evaporator-8).
Regarding Claim 8 , Quigley discloses Mixing kneader wherein a machine control monitors the amount of water, cellulose and functional liquid in the composition of the product in all states up to the molding solution (Col 4 line 62-65, motors-6 and 17 control the molding solution flow). Furtjer Zikeli discloses wherein the machine control monitors the composition of the product in all states up to the molding solution over sensors ([0052]).
Regarding Claim 10, Quigley discloses wherein the kneader shaft structures of the mixing kneader are designed without heating cavities (Col 4 line 23-27).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEBJANI ROY whose telephone number is (571)272-8019. The examiner can normally be reached 9:30-5:30 pm.
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/DEBJANI ROY/ Examiner, Art Unit 1741
/ALISON L HINDENLANG/Supervisory Patent Examiner, Art Unit 1741