DETAILED ACTION
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 .
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 16-32 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of U.S. Patent No. 10,895,028. Although the claims at issue are not identical, they are not patentably distinct from each other because the compositions herein would be prima facia obvious in view of the claims of ‘028 which are drawn to nonwoven webs comprising fibers having the same benzyl modified α-(1→3)-glucans claimed in the present compositions (see claims 8 and 12 of ‘028); the same DP or overlapping as claimed herein (see claim 2 of ‘028); the same amount of α-(1→3) linkages (see claim 4 of ‘028); and the combination of modifications including carboxyalkyl, ether, benzyl, or ester groups (see claims 5-12 of ‘028). The present compositions comprising these glucans would have been prima facia obvious as the nonwoven webs of ‘028 would be made by forming a composition with the polysaccharides and DMF for example, thus rendering obvious the same.
Claims 16-32 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 11,802,356. Although the claims at issue are not identical, they are not patentably distinct from each other because the compositions herein would be prima facia obvious in view of the claims of ‘356 which are drawn to nonwoven webs comprising fibers having the same benzyl modified α-(1→3)-glucans claimed in the presently claimed compositions (see claims 10 and 15-18 of ‘356); the same DP or overlapping as claimed herein (see claims 2-3 and 16-17 of ‘356); the same amount of α-(1→3) linkages (see claims 1, 5, and 15 of ‘356); and the combination of modifications including an additional carboxyalkyl group such as a carboxymethyl group (see claims 6-9 and 11-4, and specifically claims 18-19 of ‘356). The present compositions comprising these glucans would have been prima facia obvious as the nonwoven webs of ‘356 would be made by forming a composition with the polysaccharides and DMF for example, thus rendering obvious the same.
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)(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.
(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) 16-19, 23, and 27-32 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by US2018/0230241 .
The applied reference has a common inventor with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
‘241 discloses compositions comprising a benzyl modified α-1,3 glucan (see claim 6 and [0053]). The glucan is taught to have equal or greater than 90%, or 95% or 96% or 97%, or 98%, or 99% α-(1→3)-linked-glucans (see [0036] and examples where α-(1→3)-glucan is added to various reactants, inferring a glucan having 100% α-(1→3) bonding). While ‘241 does not state the DP ranges as claimed herein of being 55-10,000 or 75-1,000 as in claims 17-18, ‘241 does state that their α-(1→3)-glucans have a molecular weight of from about 10,000-2,000,000 Daltons. It is noted that glucose, the monomer in the glucan chain, has a molecular weight of about 180D. Thus, the molecular weight range taught in ‘241 of about 10,000-2,000,000 would provide a DP of about 55-11,111 which completely encompasses the present ranges of 55-10,000 and 75-1,000 (10,000/180 is 55 and 2,000,000/180 is 11,111). The benzyl group on the glucan is taught to be optionally substituted with various groups such as halogen, cyano, ester, amide, ether C1-6 alkyl, aryl, C2-6 alkene, or C2-6 alkylene – see section 6 of [0053]. The degree of substitution of the α-(1→3)-glucans are taught to be from 0.1-0.5, or from 0.01-1.0, or from 0.2-0.45, or from 0.4-.06 (see [0039]) thus anticipating claims 29-32 herein.
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.
Claim(s) 16-32 are rejected under 35 U.S.C. 103 as being unpatentable over US 9,139,718 in view of Takashi et al. (JPS 54131090).
The claims of the instant application are drawn to compositions comprising a benzyl ether modified 1,3-α-D-glucan polymer having 90% or more of the α-1,3 linkages. Dependent claims provide the DP is 55-10,000 or 75-1,000; that the polymer comprises at least 99% of the α-1,3 linkages; wherein the polymer is further modified with an additional carboxyalkyl ether group such as carboxymethyl ether group; where the benzyl group is substituted or unsubstituted where the substituted groups are halogen, cyano, ester, amide, ether, C1-6 alkyl, aryl, C2-6 alkene or C2-6 alkyne; and also where the degree of substitution is 0.1-0.5, 0.01-1.0, 0.2-0.45, or 0.4-0.6.
‘718 discloses compositions comprising poly α-1,3-glucan ethers having an ether degree of substitution of 0.05-3.0 wherein the glucan is substituted at each R (ether groups) with two or more types of organic groups selected from hydroxypropyl, dihydroxypropyl, hydroxyethyl, methyl, ethyl, or carboxymethyl groups. See claim 1. The poly alpha-1,3-glucan ethers are taught to have a DP of at least 6, or can be 10, 50, 100, 200, 300, 400, 500… or 4000, or any integer between 10 and 4000 – see top paragraph in column 7. The polymer is taught to have at least 99% or 100% α-1,3 linkages (see claims 15-18). The degree of substitution is taught to be from about 0.05-3; or 0.2-2; or about 0.2, 0.3, 0.4, 0.5, 0.6…or 3.0 (see column 6 lines 37-53).
What is not taught in ‘718 are the benzyl ether groups substituted on the α-1,3-glucans.
Takashi et al. teaches the preparation of benzyl cellulose fiber by reacting cellulose
fiber, exemplified as cotton, with benzyl chloride and that the resulting benzylated cellulose fiber has improved properties regarding feel and color fastness. (entire document)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the alkyl substituent in the poly alpha-1,3-glucan ethers of ‘718 with the benzyl substituent taught by Takashi, thereby arriving at the instantly claimed benzyl alpha-1,3-glucan compositions. ‘718 teaches that poly alpha-1,3-glucan ethers may be used to prepare cotton-like textiles, and that the poly alpha-1,3-glucan ethers may be prepared by reacting poly alpha-1,3-glucan with an alkyl halide reagent. Hence it would be
reasonable for one to expect that the benzyl chloride reagent used by Takashi to prepare benzylated cotton would be effective to prepare benzylated poly alpha-1,3-glucan and one would be motivated to look to Takashi to use benzylation for poly alpha-1,3-glucan, which is taught as cotton-like, because Takashi teaches that benzylation improves cotton textile feel and color fastness.
Conclusion
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TRAVISS C. MCINTOSH III
Primary Examiner
Art Unit 1693
/TRAVISS C MCINTOSH III/Primary Examiner, Art Unit 1693