DETAILED ACTION
Election/Restrictions
Applicant’s election without traverse of the invention of Group I, claims 1-2, 9-11, and 14-16 in the reply filed on 6/10/2026 is acknowledged.
Claims 17-37 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
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.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of copending Application No. 18/278,099 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other.
Copending claim 8 recites a composition comprising a first rubber component which may be a liquid rubber, cellulose nanofibers, and a nonionic surfactant.
It is clear that all the elements of the instant claim 1 are to be found in copending claim 8 (as the instant claim fully encompasses the copending claim). The difference between the instant claim and the copending claim lies in the fact that the copending claim includes more elements and is thus much more specific. Thus the invention of the claim of the copending application is in effect a “species” of the “generic” invention of the instant claim. It has been held that the generic invention is “anticipated” by the “species”. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since the instant claim is anticipated by the copending claim, it is not patentably distinct from the copending claim.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claim(s) 1, 2, 9-11, and 14-16 are rejected under 35 U.S.C. 103 as being unpatentable over Park et al, US2015/0119504, in view of Yasukawa et al, WO2018/181224.
The examiner notes that the machine translation of Yasukawa provided by applicant with the information disclosure statement filed 12/4/2024 has been used for the preparation of this Action.
Park discloses the production of a rubber composition used in the production of tires (abstract), wherein said rubber composition comprises a raw rubber material and cellulose whiskers (¶0009). The prior art rubber composition is prepared via a process comprising the step of first dispersing said cellulose whiskers in an organic solvent to form a cellulose whisker dispersion prior to mixing with the raw rubber material (¶0009, 0095). Park further teaches that a surfactant may be included in the cellulose whisker dispersion (¶00099).
Regarding the claimed cellulose nanofibers: Park teaches that the cellulose whiskers have an average length in the range of 10 to 50 nm (¶0008, 0037); the prior art cellulose whiskers therefore correspond to the claimed cellulose nanofibers (for claim 1). Park does not teach modifying the cellulose with functional groups-i.e., the degree is substitution is 0 (for claim 9); furthermore, the process of producing the cellulose whiskers includes a step of neutralization (¶0035-0036)-i.e., the final whisker does not contain ionic groups (for claim 2).
Regarding the claimed first rubber component: Park teaches that organic solvent used to make the cellulose whisker dispersion may be a liquid rubber (00097), corresponding to the claimed first rubber component (for claim 1).
Regarding claim 10: The prior art cellulose dispersion comprises 100 parts of the organic solvent, 1 to 30 parts cellulose whiskers, and 1 to 10 parts surfactant (¶0098, 0101). Based on these numbers, it is calculated that the prior art cellulose dispersion may comprise about 0.9 to 22.9 wt% cellulose whiskers.
Regarding claim 11: The prior art cellulose dispersion comprises 1 to 30 parts cellulose whiskers and 1 to 10 parts surfactant. Based on these numbers, it is calculated that the prior art cellulose dispersion may comprise about 3.3 to 1000 parts surfactant per 100 parts cellulose whisker, overlapping the claimed range.
Regarding claim 16: The prior cellulose dispersion is prepared by dispersing the cellulose whiskers in the liquid rubber. As the two components are directly combined/in contact with one another, it is reasonably expected that at least part of the surface of the whisker(s) would be covered by the liquid rubber.
As noted above, Park discloses the production of a cellulose whisker dispersion comprising cellulose whiskers (i.e., nanofibers), liquid rubber, and a surfactant.
Park is silent regarding the use of a nonionic surfactant.
Yasukawa discloses the production of a rubber composition used for tires (¶0001, 0106), wherein said composition comprises rubber, cellulose fiber, and a surfactant (0007). As said surfactant, Yasukawa teaches that the use of nonionic surfactants (for claim 1) such as pentaethyleneglycol monododecyl ether (¶0092, 0095) to improve dispersion of cellulose within rubber was known in the art.
Regarding claims 14, 15: Pentaethyleneglycol monododecyl ether has the structure shown below.
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115
275
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This structure has a hydroxyl group (for claim 14) and a C12 hydrocarbon group (for claim 14). Further note that this corresponds to general formula (1) wherein R is a monovalent aliphatic C12 group and m is 5 (i.e., less than 12) (for claim 15).
Park and Yasukawa both disclose compositions used in the production of tires, wherein the compositions comprise rubber, cellulose fibers, and a surfactant. As taught by Yasukawa, the use of nonionic surfactants such as pentaethyleneglycol monododecyl ether in such compositions was known in the art. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to one of ordinary skill in the art before the effective filing date to modify the teachings of Park by using a nonionic surfactant as the surfactant in the cellulose whisker dispersion, with the reasonable expectation of obtaining a final composition having improved dispersibility of the cellulose whiskers within the rubber (for claim 1).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEFFREY S LENIHAN whose telephone number is (571)270-5452. The examiner can normally be reached Mon.-Fri. 5:30-2:00PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Riviere Kelley can be reached at 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JEFFREY S LENIHAN/Primary Examiner, Art Unit 1765
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