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 .
Response to Arguments
Applicant's arguments filed 5/12/2026 have been fully considered but they are not persuasive.
Applicant has amended the claims to require that the cellulose derivative is either methyl cellulose or hydroxypropylmethyl cellulose.
Applicant states that when sheets of ultrafine fibrous cellulose is heated, yellowing due to heating may occur.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., heating the sheet or a whiteness of the sheet) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant further argues that the instant application is directed to a sheet with high transparency, suppressed yellowing due to heating, high tensile elastic modulus, excellent flexibility, and a layered body.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., high transparency, suppressed yellowing due to heating, high tensile elastic modulus, excellent flexibility, and a layered body) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
In order to properly reject the claims the following limitations must be met, ultrafine cellulose with the claimed width, a cellulose derivative with a weight average molecular weight within the claimed range, and that the derivative is either methyl cellulose or hydroxypropylmethyl cellulose.
That is the entirety of the claimed limitations for the independent claim.
The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, the Examiner is not limited to the act of having a high transparency, suppressed yellowing due to heating, high tensile elastic modulus, excellent flexibility, and a layered body, because that is not required by the claims. Any reason to combine in order to address the actively claimed limitations is appropriate to render a rejection.
Applicant argues that the Tanaka reference identifies a series of cellulose derivatives but does not mention either of the two claimed derivatives.
As previously stated the Examiner is in agreement and introduced the Venables reference to show that the claimed derivatives are conventional cellulose derivatives.
Applicant confirms that the secondary reference utilizes hydroxypropyl methyl cellulose as one of the derivatives, but argues that it is not utilized for the same reason as high transparency, suppressed yellowing due to heating, high tensile elastic modulus, excellent flexibility, and a layered body.
As stated above the reasoning for obviousness to utilize the teachings of Venables is not limited for the reason for why the Applicant is making the same changes.
Venables explicitly states that “It is expected that numerous agents will serve similar functions, for example, cellulose derivatives such as carboxymethylcellulose, hydroxypropylcellulose, hydroxypropylmethyl-cellulose and hydroxyethylcellulose.” This is a showing that the explicitly claimed derivatives of Tanaka and the claimed example of hydroxypropylmethyl cellulose are known to be functional equivalents. The act of utilizing the claimed example as shown as conventional by Venables for the benefit of improving the coating and protective forms of the paper would have been obvious in view of the discloser of Tanaka.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
The comparative examples argued by the Applicant are moot as they are all not commensurate in scope with the claims.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-6 and 11-20 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 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.
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).
Venables further states that “It is expected that numerous agents will serve similar functions, for example, cellulose derivatives such as carboxymethylcellulose, hydroxypropylcellulose, hydroxypropylmethyl-cellulose and hydroxyethylcellulose.” Carboxymethylcellulose and hydroxyethylcellulose being specifically claimed examples of derivatives as taught by Tanaka.
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 as a simple substitution of one known element for another with a high expectation of success (as they are stated to be functional equivalents by Venables).
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.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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.
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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
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