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 .
Applicant's election with traverse of Group I claims 1-9 in the reply filed on 26 February 2026 is acknowledged. The traversal is on the ground(s) that Claims 1 and 10 for Groups I and II recite the corresponding technical features of nanocrystalline xylan comprising xylan nanocrystals having a number average particle size of about 10 to 250 nm. Claim 18 of Group III also recites this feature by virtue of dependency on claim 1. Laine teaches a particle size distribution of 348nm or 533nm (para 5.1 and Table 3). This is well outside the claimed particle size range of about 10 to 250 nm. These special technical features make a contribution over the prior art. For these reasons the restriction should be withdrawn.
Applicant’s arguments are persuasive. The restriction of record is withdrawn. Groups II and III, claims 10-20 are rejoined with group I, claims 1-9 and examined. An Action on the merits of claims 1-20 is contained herein below.
Priority
This application is a 371 of PCT/FI2022/050196 filed 03/28/2022. This application claims foreign priority to FINLAND 20215354 filed 03/28/2021, under 35 U.S.C. 119(a)-(d). The certified copy of the priority document has been filed in the instant application.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 8 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 8 recites the limitation "allyl groups" in clam 1. There is insufficient antecedent basis for this limitation in the claim even though allyl group falls under unsaturated groups as in claim 1. Applicant may consider inserting the recitation ‘wherein the free unsaturated groups which exhibit unsaturated bonds is an allyl group, and wherein the nanocrystalline xylan has a degree of substitution..” in claim 8.
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) 1-9 and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Cheng et al (Polymers, 2021, 13 (291), 1-14; published 18 January 2021) in view of Meng et al (Biomacromolecules, 2021, 22, 898-906; published January 7, 2021; cited in IDS filed 12/15/2023) and further in view of Harlin et al (US 2014/0088252 A1; cited in IDS filed 12/15/2023).
Cheng et al teaches a xylan derivative having 0.1 free unsaturated groups per anhydroglucose unit, wherein the free unsaturated groups exhibit unsaturated bonds (page 6, part 3.2, Scheme 2 and Table 2, sample B5; part of the limitation of claim 1). From the teaching of Cheng at page 6, part 3.2, one of ordinary skill in the art can increase the concentration of the octenyl succinic anhydride (OSA) to get the nanocrystals having 0.3 to 2.5 unsaturated groups per anhydroglucose unit as in claim 2. The xylan used is essentially free of side groups as in claim 4.
Cheng does not teach the number average particle size as in claim 1, and 6, and the degree of polymerization as in claim 5, the limitations of claims 3, 7-9, and 18-20.
Meng et al teaches obtaining xylan nanocrystals having a size of 200nm (page 902, right col., first full para; particle size as in claim 1). Meng teaches the use of a membrane with a nominal cutoff of 10kDa to obtain purified xylan. This means that the xylan should have a degree of polymerization of 4 to 200 as in claim 5 (page 903, left col., see under sub-title: Materials). From Figure 5 A and B, at page 902, it can be seen that xylan nanocrystals in the size range and substitution as in claim 1 via derivatization as taught by Cheng, and in the size range of 30-100nm as in claim 6 can also be obtained by adjusting the duration of crystallization.
Harlin et al teaches obtaining xylan derivatized with vinyl groups and allyl glycidyl ether (paras 0017, 0036-0039; page 26, Example D; vinyl and allyl groups as in claim 3). The xylans comprising the allyl and vinyl groups can be crosslinked with additional reagents, monomers or polymers (para 0033, 0035; as in claims 18-20). Even though Harlin does not teach crosslinking nanocrystalline xylan as claimed it would be obvious to one of ordinary skill in the art to arrive at the claimed crosslinked products in view of Cheng, Meng and Harlin.
MPEP 2141 states, "The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "[R]ejections on obviousness cannot be sustained by mere conclusatory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.'" KSR, 550 U.S. at, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include: (A) Combining prior art elements according to known methods to yield predictable results; (B) Simple substitution of one known element for another to obtain predictable results; (C) Use of known technique to improve similar devices (methods, or products) in the same way; (D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results; (E) " Obvious to try " choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success; (F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention."
According to the rationale discussed in KSR above, the rationale in (G) above is seen to be applicable here since based on the prior art teachings, xylan nanocrystals with unsaturated groups having unsaturated bonds having particle size of 200nm is known, and there is suggestion that nanocrystals having particle size in the range of 30-100nm can be obtained. The artisan would have obtained nanocrystalline xylan having the properties as in claims 7-9 when using allyl and vinyl groups since these are suggested as groups that can be used to modify xylan, which can be extended to nanocrystalline xylan. These are the two which have been shown in the examples in the instant specification.
Thus, the claimed invention as a whole would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention over the combined teachings of the prior art. One of ordinary skill in the art will be motivated to make the claimed product in order to explore them as alternative xylan derivatives for the application taught in the prior art including crosslinked products as taught by Harlin (paras 0019-0022).
Claim(s) 10-17 are rejected under 35 U.S.C. 103 as being unpatentable over Cheng et al (Polymers, 2021, 13 (291), 1-14; published 18 January 2021) in view of Meng et al (Biomacromolecules, 2021, 22, 898-906; Supplemental Information, S1-S13; published January 7, 2021; cited in IDS filed 12/15/2023) and further in view of Harlin et al (US 2014/0088252 A1; cited in IDS filed 12/15/2023).
The teachings of Cheng, Meng and Harlin are set forth above. The teachings cover the limitations of claim 12 regarding the unsubstituted xylan having free hydroxyl groups per anhydroglucose unit, the limitations of claims 13 and 14 regarding glycidyl groups.
Cheng et al teaches a method of modifying xylan by reacting unsubstituted xylan with octenyl succinic anhydride. The octenyl succinic anhydride has the anhydride function group which is capable of reacting with the hydroxyl of the xylan and a double bond which is the second functional group (page 6, Scheme 2; step 3 on claim 10). Cheng does not teach modifying xylan by providing xylan having side groups and nanocrystals having a particle size of about 10-250nm, and removing the side groups of the xylan to produce xylan having free hydroxyl groups as in claim 10, does not teach the method as in claim 11 and the limitations of claims 15-17.
Meng et al teaches removal of side groups from xylan to give unsubstituted xylan having free hydroxyl groups (supporting information, page S4, Figure S1 A; steps 1-2 in claim 10). The xylan is treated with alkaline media and heated for removal of the side groups as in claims 11 and 12. Meng teaches subjecting nanocrystalline xylan to membrane filtration (page 903, left col., see sub-heading Materials). From the teachings of Cheng and Meng as set forth above one of ordinary skill in the art will recognize that the method as in claims 10-11 and 17 can be also be carried out with nanocrystalline xylan having the particle size range as in claims 10 and 16. The artisan can also react the nanocrystalline xylan with a reactant having epoxy and vinyl groups as in claims 13-14 and adjust the molar ratio as in claim 15 to get the substitution in the desired range.
MPEP 2141 states, "The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "[R]ejections on obviousness cannot be sustained by mere conclusatory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.'" KSR, 550 U.S. at, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include: (A) Combining prior art elements according to known methods to yield predictable results; (B) Simple substitution of one known element for another to obtain predictable results; (C) Use of known technique to improve similar devices (methods, or products) in the same way; (D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results; (E) " Obvious to try " choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success; (F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention."
According to the rationale discussed in KSR above, the rationale in (G) above is seen to be applicable here since based on the prior art teachings, xylan nanocrystals with unsaturated groups having unsaturated bonds having particle size of 200nm is known, and there is suggestion that nanocrystals having particle size in the range of 30-100nm can be obtained. The claimed method steps are also known individually in the art.
Thus, the claimed invention as a whole would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention over the combined teachings of the prior art. One of ordinary skill in the art will be motivated to make the claimed product using the claimed steps (also taught by the prior art) since the artisan would prefer to use method steps and reagents taught in the prior art which are known to work. The artisan would have a reasonable expectation of success is using the same steps using nanocrystalline xylan for modification as claimed.
Conclusion
1. Pending claims 1-20 are rejected.
2. Claims 21-24 have been canceled.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GANAPATHY KRISHNAN whose telephone number is (571)272-0654. The examiner can normally be reached M-F 8.30am-5pm.
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/GANAPATHY KRISHNAN/Primary Examiner, Art Unit 1693
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