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 without traverse of Group I claims 1-7 and 18-20 in the reply filed on 27 February 2026 is acknowledged. The election/restriction requirement is deemed proper and is therefore made FINAL. An Action on the merits of claims 1-7 and 18-20 is contained herein below.
Group II Claim 8, and Group III claims 9-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a non-elected invention, there being no allowable generic or linking claim.
Priority
This application is a 371 of PCT/JP2022/013378 filed 03/23/2022. This application claims foreign priority to JAPAN JP2021-059316 filed 03/31/2021, under 35 U.S.C. 119(a)-(d). The certified copy of the priority document has been filed in the instant application.
Drawings
The drawings are objected to because Figures 2-5 ae not clear. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance. The objection also applies to the structural formulas at pages 4, 6, 7 and Tables 1-6 in the specification which are all fuzzy. They have to be replaced by one which is clear.
Claim Objections
Claims 1-20 are objected to because of the following informalities: In Claims 1-20 the claim numbers are enclosed within square brackets. The brackets should be deleted. In claim 2 the recitation [Chem 1], and the parentheses enclosing the recitation below formula (1) should be deleted. Appropriate correction is required.
Claim Rejections - 35 USC § 102
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 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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-4 and 18-19 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Zhu et al (US 2013/0303750 A1) as evidenced by Liang et al (Catalysis Communications, 2013, 40, 93-97; of record).
Zhu et al teaches cellulose nanofibrils having sulfate functional groups and the cellulose that is used as starting material has lignin (paras 0035, 0041, 0044, 0047, 0056 and example 5; limitations of claims 1-2).
The method uses acid hydrolysis during which the acid should also react with the lignin in the cellulose to produce sulfuric acid lignin as taught by Liang et al (page 93, part 2.1). Therefore, the product obtained by Zhu et al is a composition comprising a cellulose nanofiber having sulfate ester group and a lignin-derived substance as in claim 1.
The product obtained by Zhu should is a complex as in claims 3 and 18. The product of Zhu has the cellulose nanofibers which are sulfated and also has lignin-derived substance which has hydroxyl groups. Therefore, the sulfate ester groups and the lignin-derived substance will be hydrogen bonded as in claims 4 and 19.
Zhu et al as evidenced by Liang et al anticipates claims 1-4 and 18-19.
Claim 6 is rejected under 35 U.S.C. 102(a)(2) as being anticipated by Ryohei (WO 2020066537 A, English Translation pages 1-17; cited in the IDS filed 05/22/2025) as evidenced by Liang et al (Catalysis Communications, 2013, 40, 93-97; of record).
Ryohei teaches a composition comprising cellulose nanofiber which is treated with sulfuric acid, therefore contains sulfate ester groups, and which further contains polybutylene adipate terephthalate copolymer resin and polyethylene resin (Examples 10 and 13 at pages 12 and 15 respectively; limitation of claim 6 regarding cellulose nanofiber having sulfate ester groups, lignin derived substance and resins). The product of Ryohei is obtained from wood. According to Liang, wood treated with sulfuric acid produces sulfuric acid lignin which is a lignin derived substance (page 93, part 2.1). Therefore, the product of Ryohie has a lignin-derived substance.
Therefore, Ryohei anticipates claim 6.
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) 1-7 and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over West et al (US 6,500,947) as evidenced by Liang et al (Catalysis Communications, 2013, 40, 93-97; of record) and further in view of Ton-That et al (US 9,175,147).
West et al teaches crosslinked sulfated cellulose fibers from yellow pine fluff pulp. The fluff pulp has lignin, which will be converted to sulfated lignin, a lignin-derived substance (col. 2, lines 8-15; col. 6, line 51 through col. 7, line 45; Example 1 and Example 2). The sulfation of lignin is evidenced by Liang et al (page 93, part 2.1). This reads on part of the limitations of claims 1-5 and 18-20 regarding the sulfated cellulose fiber and lignin-derived substance being a complex, and the cellulose having sulfate ester groups and the lignin-derived substance are crosslinked. West teaches alkaline bases containing monovalent and trivalent metal ions (col. 6, lines 3-21; M in the formula in claim 2). The product of West has the cellulose fibers which are sulfated and also has lignin-derived substance which has hydroxyl groups. Therefore, the product of West is a complex as in claims 3 and 18, and the sulfate ester groups and the lignin-derived substance will be hydrogen bonded as in claims 4 and 19. Composites can be formed by adding polyester, polypropylene and polyacrylates (col. 8, lines 61-65; resins as in claim 6).
West does not expressly teach that the cellulose having sulfate ester groups are nanofibers as in claims 5 and 20 and the limitation of claim 7.
However, West teaches that there is a need for superabsorbent material made from a biodegradable renewable resource like lignocellulose that is inexpensive, and that has a low void volume when saturated (col. 1, line 64 through col. 2, line 5). In view of this teachings one of ordinary skill in the art will also make the claimed compositions using cellulose nanofiber.
Ton-That et al’s invention is drawn to cellulose materials that have improved thermal resistance, and improved resistance to damage by UV light (Abstract). The cellulosic material may be in the form of nanofibers, and can be natural or synthetic. Natural cellulosic material can be from pulp and wood, including lignocellulose. Synthetic may be cellulose sulfate (col. 4, lines 25-57; as in claims 1 and 18). In order to make resistant polymer composites suitable materials may be added. These include clays, mica, thermoplastic polymer resins, rubbers, surfactants, colorants, pigments, carbon black, fillers, antioxidants, plasticizers, etc. (col. 4, line 25 through col. 9, line 2; limitations of claims 6-7).
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, lignocellulose fibers are known to be used in personal care absorbent products including resistant composites. Thus, it is obvious to arrive at the claimed compositions comprising and consisting of sulfate containing cellulose nanofibers and a lignin-derived substance and also make the same compositions wherein the sulfate containing cellulose nanofibers and a lignin-derived substance are crosslinked.
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 would be motivated to make the claimed compositions using sulfated cellulose nanofibers as an alternative to the product taught by West for use in personal care absorbent products and to that taught by Ton-That. The artisan would also look for alternative materials that have enhanced properties for such applications.
Conclusion
1. Elected claims 1-7 and 18-20 (Group I) are rejected.
2. Group II Claim 8, and Group III claims 9-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a non-elected invention, there being no allowable generic or linking claim.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Scarlett Goon can be reached at 571-270-5241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/GANAPATHY KRISHNAN/Primary Examiner, Art Unit 1693
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