DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claims 1-10 and 14-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claims contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventors, at the time the application was filed, had possession of the claimed invention.
In independent claims 1 and 14, lines 7-8, Applicant recites “where at least one of the first degradable polymer material and the second polymer material further comprises particles of starch and/or particles of cellulose” (emphasis added). However, this recitation does not seem to be adequately or sufficiently supported in the instant written specification. In reading para. [0045] of the instant specification, while it is clear that Applicant envisions its fibrous filter tow having degradable particles dispersed throughout the same, said particles including the specifically-named “starch particles”, there is no clear indication that said particles include “cellulose particles”. Correction is requested.
Response to Arguments
Applicant's arguments regarding the rejection of claims 1 and 14 under 35 USC 112(a) for lacking written description support for “particles of cellulose”, filed on July 21, 2026, have been fully considered but they are not persuasive.
-Applicant argues that para. [0044] lists “cellulosic” materials among exemplary biodegradable materials, which provides support when read in view of para. [0045]. However, para. [0044] explicitly qualifies cellulosic materials as “fibrous” materials because it states “cellulosic or other organic plant-derived fibrous materials (e.g., cotton, wool, cedar, hemp, bamboo, kapak, or flax) ...”. One having ordinary skill in the art would have recognized that raw or plant-derived cellulose fibers are structurally different from discrete, finely divided particles (which para. [0045] defines as having preferred size ranges of 100 nm to 20 microns and geometries such as spherical, oblong, ovoid, or flake-like). Disclosing cellulosic fibers does not convey to a person having ordinary skill that the inventor possessed cellulose in particulate form.
Applicant points to the opening sentence of para. [0045] stating that “[v]arious degradable materials may be incorporated…in particulate form”. However, para. [0045] immediately limits this particular statement strictly to starch because it states “[t]he particle size of the degradable particles (e.g., starch particles) can vary …”. Throughout paras [0045]-[0047], the detailed parameters regarding particle sizes, weight percentages, and water solubility are disclosed exclusively in the context of starch particles. Cellulose particles are nowhere mentioned, described, or exemplified in these paragraphs.
The Examiner notes that the only reference to particulate cellulose in the entire specification occurs in para. [0006], which is in the “Background” section and describes prior art, specifically US. Pat. No. 6,344,239 to Asai et al, disclosing a core of particulate cellulose coated with cellulose easter). A summary of prior art in the Background section does not constitute a description of Applicant’s own invention under 35 USC 112(a).
In light of the above, the rejection is MAINTAINED.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DIONNE WALLS MAYES whose telephone number is (571)272-5836. The examiner can normally be reached Mondays and Thursdays, 8:00AM - 4:00PM (EST).
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/DIONNE W. MAYES/Primary Examiner, Art Unit 1747
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