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 .
Claim Rejections - 35 USC § 102/103
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.
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) 1-6 and 11-20 is/are rejected under 35 U.S.C. 102(a1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Tanaka et al, WO 2018/030321 - using US Patent Publication 2021/0222366A1 as an English language translation.
Regarding claim 1, Tanaka teaches a sheet (see title and abstract) comprising ultrafine fibrous cellulose [0047] having a fiber width of 10nm or less (preferably 2-10 nm [0050]) and a cellulose derivative (hydrophilic polymer can include cellulose derivatives [0110]) having a molecular weight of preferably 5.0 x 103 to 1.0 x 107.
Tanka teaches a viscosity-average molecular weight while the claimed range is a weight-average molecular weight. Additionally the cited range encompasses the claimed range.
It is the Examiner’s stance that the average artisan would understand the correlation of the viscosity – weighted molecular weight and the weight-average molecular weight, and while the actual numbers provided from the reads will not be a direct conversion will expect to read similar affects from the readings. The Patent Office does not have a testing facility to obtain physical properties for comparison, and therefore is reliant on what the average artisan at the time of the invention would understand to be reasonably within the claimed limits.
Therefore under MPEP 2131.03, the Examiner states that the teachings of the reference reads on the claimed range.
In the alternative, to address the overlapping ranges presented in a similar but not exact measuring method, the Examiner presented an obviousness rationale that the claims would be obvious in view of the discloser.
MPEP 2144.05 address obviousness of ranges when the teaching overlaps the claimed range and baring a showing of unexpected results or a showing of criticality to the specific claimed range, it has been held that the encompassing teaching of the claimed ranges a sufficient teaching of obviousness as presented by the prior art.
Regarding claims 2-5, Tanaka teaches that the ultrafine cellulose fibers have an anionic group [0047] with a phosphorus oxo acid group [0063-0066 and 0162] in an amount of as little as 0.1 mmol/g in a preferable range [0074 and 0083].
Regarding’s claim 6, Tanka remains as applied above and further teaches that the cellulose will also contain a urea (reads on carbamide group ) [0060]
Regarding claims 11 and 12, Tanaka remains as applied above and further teaches that the additives should be less than 10% by weight [0024]. See claim 13.
Regarding claims 13-17, Tanaka further teaches a haze of less than 5, light transmission of over 91% [0125], a tensile elastic modulus with an unrestricted upper end of range such as 50 GPa [0123]. The reference is silent to the yellow index value and the tensile elongation but according to In Re Best, all of the same physical make up of the sheet is present as the instantly claimed sheet and there would be a shared expected values of the unlisted properties (see also In Re Swineheart).
Regarding claims 18-20, Tanaka further teaches that the intended use of the sheet is not limited [0037] and that a layered body with a resin [0145-0147]. Therefore while not specifically listing the claimed uses for the sheet, the sheet is capable of being utilized as it has the same physical structure and the use of the product would be obvious to one of ordinary skill in the art.
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.
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) 7-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tanaka et al, WO 2018/030321 - using US Patent Publication 2021/0222366A1 as an English language translation in view of Venables et al, USP 6,037,380.
Regarding claims 7-10, Tanaka teaches cellulose derivatives and the use of non-ionic additions, but is silent on the specific use of hydroxypropyl methyl cellulose as an additive.
To show that such an additive is conventional in the art of ultra fine cellulose products, Venables is presented.
In the same field of endeavor of making ultra fine cellulose products, Venables teaches cellulose compositions including micro crystalline cellulose aspects of less than 0.7 microns (see abstract) that specifies the advantages of includes a cellulose derivate that is specifically hydroxypropyl methyl cellulose as a protective colloid (column 5 line 14).
It would have been obvious to one of ordinary skill in the art at the time of the invention to utilize the known cellulose derivative for its benefit of being a protective colloid in the manufacturing of ultra fine cellulose.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACOB T MINSKEY whose telephone number is (571)270-7003. The examiner can normally be reached M-F 8-6 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Abbas Rashid can be reached at 5712707475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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JACOB T. MINSKEY
Examiner
Art Unit 1741
/JACOB T MINSKEY/Primary Examiner, Art Unit 1748