Detailed Office Action
The communication dated 1/8/2026 has been entered and fully considered.
Claim 20 is new. Claim 16 has been amended. Claims 1-20 are pending with claims 1-15 and 17-19 withdrawn from consideration.
Election/Restrictions
Applicant’s election without traverse of Group III in the reply filed on 1/8/2026 is acknowledged.
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.
Claims 16 and 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 15 and 16 of copending Application No. 18/284,318 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both disclose mixing a cellulose nanofiber and cellulose nanocrystal that have sulfate ester groups together. The act of mixing is a shearing process. The solvent is water which has the claimed relative permittivity.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 102
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.
Claims 16 and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nanocellulose Films with combined cellulose nanofibers and nanocrystals: tailored thermal, optical and mechanical properties by SUN XIUXIAUAN et al., hereinafter SUN
As for claim 16, SUN discloses cellulose nanocrystals and nanofibers which are formed by sulfuric acid treatment [pg. 1105 col. 1 preparation of CNCs and CNFs]. The treatment with sulfuric acid will form at least some sulfur ester bonds on the cellulose. The applicant does not claim any degree of substitution for sulfate ester. Further, unlike the sister case at the EPO (EP4317192) the applicant does not claim n specific method of forming sulfate esters (DMS, sulfuric, acetic or propionic anhydride). The dispersion is formed in the microfluidizer which is a shearing device. The CNF and CNS are mixed together (sheared) in a homogenizer [pg. 1105 col. 1 last par. And pg. 1106 Table 1].
As for claim 20, SUN discloses the fluid of water [pg. 1105 col. 1] which has a relative permittivity of over 38 (about 80.4).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANTHONY J CALANDRA whose telephone number is (571)270-5124. The examiner can normally be reached Monday-Friday 7:45 AM -4:15 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 (571)270-7457. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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ANTHONY J. CALANDRA
Primary Examiner
Art Unit 1748
/Anthony Calandra/Primary Examiner, Art Unit 1748