DETAILED ACTION
This detailed action is in response to the application filed on February 2, 2024, and any subsequent filings.
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 .
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Objections
Claims 2 and 8 are objected to because of the following informalities:
In Claim 2, both the chemical name and formula for TiO2 must be used to be consistent with other chemicals identified in the claim;
In Claim 2, the 2 appearing after O must be in subscript font;
In Claim 2, neither alumina nor fiberglass should be capitalized; and,
In Claim 8, a space is required between “0.5” and “mm.”
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1-18, 21, and 26 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for limited percentages of wood pulp cellulose nanofibrils, and wetting materials as recited in Claims 1, 21, and 26, as well as limited foaming, blowing, and templating agents and plasticizers as recited in Claim 13, does not reasonably provide enablement for all wood pulp cellulose nanofibrils, and wetting materials and all foaming, blowing, and templating agents and plasticizers. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention commensurate in scope with these claims.
The specification does not provide sufficient evidence to support enablement of these claims based on the In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988), factor analysis below such that undue experimentation would be required to arrive at the claimed invention. As to the breadth of the claims, the claims encompass all wood pulp cellulose nanofibrils, and wetting materials and all foaming, blowing, and templating agents and plasticizers. As to the nature of the invention and the amount of direction provided by the inventor, the invention claims all wood pulp cellulose nanofibrils, and wetting materials and all foaming, blowing, and templating agents and plasticizers without providing any disclosure of how to practice the invention for all these species. As to the state of the prior art, level of ordinary skill, and predictability in the art, no evidence supports or detracts from enablement. As to the existence of working examples, no working examples for all wood pulp cellulose nanofibrils, and wetting materials and all foaming, blowing, and templating agents and plasticizers have been identified weighing against a finding of enablement. Finally, as to the quantity of experimentation required to make or use the invention, undue experimentation would be required to determine the conditions necessary to retain all wood pulp cellulose nanofibrils, and wetting materials and all foaming, blowing, and templating agents and plasticizers.
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.
Claims 5, 10, 13, 15, 17, and 18 are 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.
As to Claim 5, the claim and application as filed provide no disclosure of what constitutes TEMPO (2,2,6,6-tetramethylpiperidine-1-oxyl radical)-mediated oxidation.
As to the use of the term “substantially” in Claim 10, the term renders the claim indefinite because although the specification defines that term (Paragraph 29 (“Pr”)), that definition has no clear boundaries such that the metes and bounds of what is claimed is not clear.
As to use of the term “homogenous” in Claim 10, nothing in the claim or specification indicates what is meant by the term such as pore distribution, pore size, or some other property.
As to Claim 13, the definitions of foaming agent and plasticizer contain overlapping chemical components as defined in the specification (Pr50-51) such that the metes and bounds of what is claimed is not clear.
Claim 15 recites the limitation "foaming agent" in line 1. There is insufficient antecedent basis for this limitation in the claim as Claim 13 from which the claim depends lists foaming agent as only one of the possible additives such that the foaming agent may not be present.
Regarding Claim 17, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 18 recites the limitation "blowing agent" in line 1. There is insufficient antecedent basis for this limitation in the claim as Claim 13 from which the claim depends lists blowing agent as only one of the possible additives such that the blowing agent may not be present.
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 1-10, 12-17, 21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Vuorinen, et al., U.S. Publication No. 2021/0130500 (“Vuorinen”).
Applicant’s claims are directed towards a manufacture and a method.
Regarding Claims 1-10 and 12-17, Vuorinen discloses a membrane comprising a porous matrix material, wherein the porous matrix material comprises (i) wood pulp (Pr69); (ii) cellulose nanofibrils (CNF) (Pr103-104); and (iii) one or more wetting minerals (Pr69 (note calcium carbonate)).
Regarding Claim 21, Vuorinen discloses a method comprising (i) providing slurry comprising wood pulp and water; (ii) mixing cellulose nanofibrils (CNF) and one or more wetting minerals into the slurry; and (iii) drying the slurry to form a porous matrix material (Pr 344-345; see also Claim 1 analysis).
Additional Disclosures Included: Claim 2: wherein the one or more wetting minerals comprises calcium carbonate (CaCO3), TiO2, Alumina, Fiberglass, or a combination thereof (Pr63,69). Claim 3: wherein the CNF is present in a concentration within the range of 0.1 to 1.5 wt% based on dry mass basis (Pr41,342,345). Claim 4: wherein the one or more wetting minerals are present in a concentration within the range of 0.1 to 20 wt% of the porous matrix material (Pr344). Claim 5: wherein the CNF comprises CNF obtained by TEMPO (2,2,6,6-tetramethylpiperidine-1-oxyl radical) mediated oxidation (Pr328,344; see also 112(b) analysis above as to what constitutes this oxidation). Claim 6: wherein when contacted with a fluid comprising an analyte, the analyte solution travels across the membrane through capillary action (see Claim 1 analysis as a manufacture cannot be distinguished over the prior art based on an intended result as here where the prior art discloses the same material; see also MPEP 2112.01(II) noting “if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present”). Claim 7: wherein the analyte is immobilized on a specific site of the membrane (see Claims 1 and 6 analyses). Claim 8: wherein the analyte travels across the membrane at a rate of greater than about 0.5 mm per second (see Claims 1 and 6 analyses). Claim 9: wherein the analyte is or comprises a biological material (see Claims 1 and 6 analyses). Claim 10: wherein the porous matrix material is substantially homogeneous (Pr112; see also 112(b) analysis). Claim 12: wherein the porous matrix material comprises one or more additives (Pr145). Claim 13: wherein the one or more additives comprises a foaming agent, a blowing agent, a templating agent, a plasticizer, or a combination thereof (Pr145). Claim 14: wherein the one or more additives are present in a concentration within the range of 0.1 to 10 wt% based on dry mass basis (Pr145). Claim 15: wherein the foaming agent comprises a surfactant (Pr145). Claim 16: where the surfactant comprises glucosides and/or myristic acid (Pr103-104 (note cellulose provides the surfactant as cellulose contains glucoside as evidenced by Kawahara, et al., U.S. Publication No. 20160177512 (Pr164))). Claim 17: wherein the surfactant comprises a biosurfactant such as fungi, bacteria, yeast, glycolipids, phospholipids, glycopeptides, saponins, fatty acids, proteins, polysaccharides or a combination thereof (Pr253).
Claim Rejections - 35 USC § 103
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.
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 11 is rejected under 35 U.S.C. 103 as being unpatentable over Vuorinen, et al., U.S. Publication No. 2021/0130500 (“Vuorinen”) in view of Akita, U.S. Publication No. 2008/0213645 (“Akita”).
Applicant’s claim is directed towards a manufacture.
Vuorinen discloses the membrane of Claim 1 except wherein the porous matrix material comprises a porosity of at least 60- 90%
Akita also relates to a porous matrix material using a wetting material and discloses wherein the porous matrix material comprises a porosity of at least 60- 90% (Pr15,21).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to arrive at the porosity disclosed by Akita in the membrane disclosed by Vuorinen because achieving this porosity is the use of a known technique to improve similar products in the same way with a reasonable expectation of success.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Vuorinen, et al., U.S. Publication No. 2021/0130500 (“Vuorinen”) in view of Laine, et al., U.S. Publication No. 2012/0132383 (“Laine”).
Applicant’s claim is directed towards a manufacture.
Vuorinen discloses the membrane of Claim 1 except wherein the blowing agent comprises sodium bicarbonate.
Laine also relates to a matrix formed with cellulose nanofibrils and discloses a blowing agent comprises sodium bicarbonate (Pr75).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to combine the membrane disclosed by Vuorinen with the sodium bicarbonate disclosed by Laine because, according to Laine, this allows for control of calcium carbonate additions using different strategies (Pr75).
Claim 26 is rejected under 35 U.S.C. 103 as being unpatentable over Vuorinen, et al., U.S. Publication No. 2021/0130500 (“Vuorinen”) in view of Neuman, U.S. Publication No. 2016/0116467 (“Neuman”).
Applicant’s claim is directed towards a method.
Vuorinen discloses a method comprising (i) providing a membrane comprising a porous matrix material (see Claim 1 analysis) wherein the porous matrix material is a composite material that comprises wood pulp, CNF, and one or more wetting minerals (see Claim 1 analysis).
Vuorinen does not disclose a method of separating an analyte from a fluid comprising (ii) contacting the membrane with a fluid comprising an analyte so that the fluid enters the membrane through capillary action, thereby separating the analyte.
Neuman also relates to a method using a porous matrix material membrane and discloses (ii) contacting the membrane with a fluid comprising an analyte so that the fluid enters the membrane through capillary action, thereby separating the analyte (Pr13,20,33,53).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to combine the membrane disclosed by Vuorinen with the analyte contact disclosed by Neuman because, according to Neuman, the membrane allows for analyte transport via capillary action (Pr53,57).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PATRICK ORME whose telephone number is (408)918-7585. The examiner can normally be reached Monday - Thursday, 7:30 am - 6:00 pm Pacific Time.
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/PATRICK ORME/Primary Examiner, Art Unit 1779
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