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 . 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.
Priority
The instant application is a 371 of PCT/EP2022/059256 filed on 04/07/2022 and claims foreign priority to application no. EP21167635.8 filed on 04/09/2021. The certified copy of the foreign priority application filed on 10/06/2023 is acknowledged.
Status of the Claims
The preliminary claim amendments filed on 10/06/2023 is acknowledged. Claims 3-5, 7, 10, and 14 are amended.
Accordingly, claims 1-14 are pending and being examined on the merits herein.
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 8-14 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 claim(s) contains 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 inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 8 recites “A process for preparing a methylcellulose … such that the s23/s26 is 0.45 or less …”.
Here, the instant claims recite a method of making methylcellulose that has a s23/s26 ratio of 0.45 or less using the recited steps and conditions. The disclosure, however, only discloses and provides examples of making methylcellulose that has a s23/s26 of 0.45 or more using the recited steps/conditions, and therefore the instant claims are not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor had possession of the claimed invention.
Applicant demonstrates three examples of producing methylcellulose as seen in Tables 1 and 2 of the instant specification (page 13) with varying reaction conditions for the NaOH addition (alkalization reaction) and DME and MCl (methylating reactions) that are within scope of the steps and conditions recited in instant claim 8. Here, as seen in Table 3, the three examples all resulted in a methylcellulose having a s23/s26 of 0.49, 0.50, and 0.48, and there are no examples or suggestions provided for a method of producing a methylcellulose having s23/s26 of 0.45 or less using the recited method steps and conditions. Furthermore, Applicant discloses that the recited heating rate of 0.3 to 0.55C per minute is critical for having a methylcellulose with s23/s26 of 0.45 or more (see page 5 line 32 through page 6 lines 1-2).
Kitamura (US20160168271 in PTO-892) discloses a method for producing an alkyl cellulose comprising the steps of: mixing a cellulose pulp with a first alkali metal hydroxide solution with stirring to obtain alkali cellulose; reacting the alkali cellulose with an alkylating agent to obtain a first reaction mixture; blending a second alkali metal hydroxide solution with the first reaction mixture with stirring, without further blending of the alkylating agent, to obtain a second reaction mixture; and purifying the second reaction mixture to obtain an alkyl cellulose (see Abstract).
Kitamura discloses that the alkyl cellulose obtained using their method preferably include methyl cellulose and ethyl cellulose (paragraph 0051). Kitamura discloses is the alkali metal hydroxide solution includes a sodium hydroxide solution (paragraph 0021), and the alkylating agent includes methylating agents such as methyl chloride and others (paragraph 0033).
Kitamura discloses that the alkali cellulose obtained by mixing a cellulose pulp with an alkali metal hydroxide solution is etherified with an alkylating agent to form an alkyl cellulose (paragraph 0045). Kitamura discloses that the alkylating agent in the reaction system is gradually consumed as the etherification progresses, and when the temperature in the reactor is constant, the reaction rate of the etherification gradually decreases as the alkylating agent is consumed in the reaction system (paragraph 0045). Therefore, Kitamura discloses that by blending the second alkali metal hydroxide solution while increasing the temperature in the reactor at a constant rate, the decrease of the reaction rate of the etherification caused by the consumption of the alkylating agent in the reaction system is suppressed, and the reaction rate of the etherification associated with the blending of the second alkali metal hydroxide solution is relatively increased (paragraph 0045). Kitamura discloses that consequently, an alkyl cellulose having a high viscosity and also having a high gel strength can be obtained (paragraph 0045).
Here, the teachings of Kitamura suggest that adjusting the heating rate after adding an alkylating agent (methylating agent) to the alkalized cellulose can affect the reaction rate of etherification and result in a final methylcellulose product with different amounts of alkylation (methylation). Therefore, since Applicant has only demonstrated that the recited heating rate of 0.3 to 0.6 C / min only results in a s23/s26 of 0.45 or more, it is not evident by the disclosure or the prior art, that the Applicant was in possession of a method of producing a methylcellulose having a s23/s26 of 0.45 or less using the recited method steps and conditions (eg. heating rate), and so the instant claims do not meet the written description requirement under 35 USC 112(a).
It is noted that the instant claims may have written description support if the instant claims recited a method of producing a methylcellulose having a s23/s26 of 0.45 or more.
There is no prior art for producing a methylcellulose having a s23/s26 of 0.45 or less using the recited steps and conditions. However, for purposes of compact prosecution, the following prior art rejection for instant claims 8-14 is being applied based on the disclosure providing support for a method to produce a methylcellulose having a s23/s26 of 0.45 or more.
Claim Rejections - 35 USC § 103
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) 1-14 are rejected under 35 U.S.C. 103 as being unpatentable over Reibert et al. (US6235893B1 in PTO-892) in view of Kitamura et al. (US20160168271 in PTO-892) and US8623840B2 (in PTO-892).
Reibert discloses a method of making a methylcellulose (see Abstract).
Reibert discloses their method involves an alkalization and etherification of the cellulose pulp that is carried out in a stepwise manner in stages (column 4 lines 18-20). Reibert discloses a stage refers to a two-step reaction sequence in which an alkalization reaction and a methylation reaction take place (column 4 lines 19-21). Reibert discloses a stage effectively increases the level of methoxy substitution of the cellulose pulp or a partially etherified cellulose ether (column 4 lines 21-26).
Reibert discloses the alkalization involves reacting the cellulose with an alkaline hydroxide, preferably sodium hydroxide at a concentration of about 30-70% by weight based upon weight of water (column 4 lines 27-52). Reibert teaches the temperature of the reaction ranges from 30C-110C (column 4 lines 36-41).
Reibert teaches the alkylated cellulose pulp is then etherified (methylated) in two or more stages to form their cellulose ether (column 4 lines 53-55). Reibert teaches the etherifying agent is a methylating agent such as methyl chloride or dimethyl sulfate (column 4 lines 57-60). Reibert teaches that the methylating agent may be added at one time or continuously or incrementally over a period of time in one or more stages (column 4 lines 58-67). Reibert discloses that the methylating agent is added at a temperature of about 65C to 120C for 15 minutes or more (column 5 lines 29-35). Reibert discloses that although the methylating agent can be added over any extended period of time in the second stage, it is preferred for reasons of time economy to carry out the addition in about 120 minutes or less (column 5 lines 34-39). Reibert discloses that the methylating agent can be carried out at any temperature at which the reaction can proceed, but is preferred for reasons of time economy to carry out the temperature at about 65 C to 120 C (column 5 lines 39-45)
Reibert discloses after etherification, the cellulose ether is washed to remove salt and other reaction by-products (column 6 lines 60-61). Reibert discloses the washed cellulose ether is then dried and milled into particulate form (column 7 lines 1-15).
Reibert demonstrates in Example 1 a process of preparing their methylcellulose (column 9 lines 10-67 through column 10 lines 1-9). Here, ground cellulose pulp was added into a reactor, which was used in two stages. In the first stage, 50 percent NaOH in water by weight was sprayed onto the cellulose at a weight ratio of 0.45/1.0 NaOH/cellulose, and the temperature adjusted to 40 C. After stirring the NaOH/cellulose mixture for 10-20 minutes, a mixture of dimethyl ether and methyl chloride was added to the reactor with additional methyl chloride so that the weight ratio of methyl chloride/cellulose was about 0.64/1.0. The contents of the reactor were then heated from 40C to 80C over the next 40 minutes, which equals a heating rate 1 C/min. After reaching 80C, the first stage reaction was allowed to proceed for another 30 minutes. The second stage was affected by adding the remainder of the sodium hydroxide and methyl chloride and allowing for additional reaction. A second quantity of 50 percent NaOH in water by weight was added over 10 minutes at a weight ratio of 0.65/1.0 NaOH/cellulose (the cellulose is actually partially etherified at this point in time). A second quantity of methyl chloride was added over about 35 minutes to a level of 0.90/1.0 weight ratio of methyl chloride/cellulose. The reaction was continued at 80 C. for an additional 30 minutes (cook time) to complete the etherification. Table 2 depicts process information and data pertaining to alkalization and etherification.
The difference between Reibert and the claimed invention is that Reibert does not disclose any s23/s26 ratio for their produced methylcellulose. Furthermore, Reibert does not disclose their method involves a heating rate of 0.3C to 0.6 C / min as recited in step b of instant claim 8 as well as the mol / mol amounts of the alkalization agent and methylating agents to form a methylcellulose having a s23/s26 of 0.45 or more.
Kitamura (US20160168271 in PTO-892) discloses a method for producing an alkyl cellulose comprising the steps of: mixing a cellulose pulp with a first alkali metal hydroxide solution with stirring to obtain alkali cellulose; reacting the alkali cellulose with an alkylating agent to obtain a first reaction mixture; blending a second alkali metal hydroxide solution with the first reaction mixture with stirring, without further blending of the alkylating agent, to obtain a second reaction mixture; and purifying the second reaction mixture to obtain an alkyl cellulose (see Abstract).
Kitamura discloses that the alkyl cellulose obtained using their method preferably include methyl cellulose and ethyl cellulose (paragraph 0051). Kitamura discloses is the alkali metal hydroxide solution includes a sodium hydroxide solution (paragraph 0021), and the alkylating agent includes methylating agents such as methyl chloride and others (paragraph 0033).
Kitamura discloses that the alkali cellulose obtained by mixing a cellulose pulp with an alkali metal hydroxide solution is etherified with an alkylating agent to form an alkyl cellulose (paragraph 0045). Kitamura discloses that the alkylating agent in the reaction system is gradually consumed as the etherification progresses, and when the temperature in the reactor is constant, the reaction rate of the etherification gradually decreases as the alkylating agent is consumed in the reaction system (paragraph 0045). Therefore, Kitamura discloses that by blending the second alkali metal hydroxide solution while increasing the temperature in the reactor at a constant rate, the decrease of the reaction rate of the etherification caused by the consumption of the alkylating agent in the reaction system is suppressed, and the reaction rate of the etherification associated with the blending of the second alkali metal hydroxide solution is relatively increased (paragraph 0045). Kitamura discloses that consequently, an alkyl cellulose having a high viscosity and also having a high gel strength can be obtained (paragraph 0045).
US’840 discloses a gel mass consisting essentially of methylcellulose and water (see Abstract).
US’840 discloses that their method to make methylcellulose was done according to the methods described in Reibert (column 5 lines 35-44). US’840 discloses adding about 1 to about 3.5 mol of NaOH per mol of anhydroglucose units or about 2 to about 4 mol caustic agent per mole of anhydroglucose units (see column 4 line 45 and column 5 lines 3-4). Furthermore, US’840discloses adding about 1.5 to about 4 mol methylating agent per mole of anhydroguclose unit and about 2 to about 4.5 mol of methylating agent per mole of anhydroglucose units. (see column 4 lines 55-67 through column 5 lines 1-10).
It would have been prima facie obvious before the effective filing date of the claimed invention to arrive at the claimed methylcellulose product by modifying the method of producing methylcellulose as disclosed in Reibert by adjusting the heating rate and heating to a reaction temperature between 65C to 120C during the etherification step as suggested by Kitamura and Reibert as well as further modifying the mol amounts of NaOH and methylating agents per mol of anhydroglucose units as disclosed in US’840. One of ordinary skill in the art could have performed routine experimentation to adjust the heating rate and reaction temperature because an ordinary skilled artisan could have also considered heating the cellulose from 40C to any temperature between 65C and 120C over longer periods of time such as greater than 80 minutes (less than 0.5 C / min) instead of 40 minutes (1 C / min) as exemplified in Reibert because Kitamura discloses that increasing the temperature at a constant rate can help suppress the decrease of the etherification reaction rate and produce a methyl cellulose having high viscosity and gel strength, and Reibert provides guidance that the methylating agent can be added over any extended period of time and preferably in 120 minutes or less, as well as guidance that the methylating agent can be reacted at any temperature in which the reaction can proceed and is preferred at a temperature ranging from 65C to 120C. See MPEP 2144.05.
Furthermore, one of ordinary skill in the art could have made the modification of the mol amounts of NaOH and methylating agents per mol of anhdroglucose units because US’840 discloses their method of making methylcellulose are made according to Reibert.
Lastly, the recited s23/s26 ratio of greater than 0.45 would flow naturally from the combined teachings of Reibert, Kitamura, and US’840 described above because the described modified method provides guidance of the same steps and overlapping reaction conditions to produce the recited methylcellulose (see page 13 Table 1 and Table 2 for reaction conditions as well as page 5 line 10-13 and page 5 lines 23-25 for overlapping ranges of mol amounts for NaOH and methylating agents). Here, Ex. 1-3 resulted in methylcellulose products having a s23/s26 value of 0.48-0.50.
MPEP 2145 II recites “The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious." Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter.m 1985) (The prior art taught combustion fluid analyzers which used labyrinth heaters to maintain the samples at a uniform temperature. Although appellant showed that an unexpectedly shorter response time was obtained when a labyrinth heater was employed, the Board held this advantage would flow naturally from following the suggestion of the prior art.). See also Lantech Inc. v. Kaufman Co. of Ohio Inc., 878 F.2d 1446, 12 USPQ2d 1076, 1077 (Fed. Cir. 1989), cert. denied, 493 U.S. 1058 (1990) (unpublished — not citable as precedent) ("The recitation of an additional advantage associated with doing what the prior art suggests does not lend patentability to an otherwise unpatentable invention.").”
It is noted that the instant specification has been considered for evidence of unexpected results over the prior art. However, no evidence was found for the following reasons.
Applicant discloses that a slower heating rate of 0.3 to 0.55C per minute is critical for having a methylcellulose with s23/s26 of 0.45 or more (see page 5 line 32 through page 6 lines 1-2). Reibert appears to be the closest prior art and only exemplifies making a methylcellulose using a heating rate of 1 C per minute as described above.
Furthermore, as shown in Table 1 and 2 (page 13) of the instant specification, Applicant also provides a comparison of slower heating rates (between 0.3 to 0.6 as seen in Ex. 1-3) to faster heating rates (0.75 to 1.5 as seen in CE-A through CE-D). The faster heating rate examples (CE-A through CE-D) appear to be representative of the method recited in Reibert. However, as seen in Table 3 (page 13), the s23/s26 values for the comparisons are not disclosed, making it difficult to ascertain if the slower heating rate is critical to arrive at the s23/s26 of 0.45 or more. Furthermore, Applicant appears to have changed two heating parameters (heating rate and reaction time at the reaction temperature) in the comparisons, which also makes it difficult to ascertain if the slower heating rate is critical to arrive at the s23/s26 of 0.45 or more.
Therefore, since the combined teachings of Reibert, Kitamura, and US’840 disclose or suggest all of the reaction conditions and amounts as described above, and it is not clear from the data disclosed in the instant specification if the slower heating rate is critical to the instant invention, an ordinary skilled artisan could have still performed routine experimentation in the modified method described above to arrive at the recited s23/s26 values.
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 1-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of U.S. Patent No. 10,577,432 in view of Reibert et al. (US6235893B1 in PTO-892), Kitamura et al. (US20160168271 in PTO-892) and US8623840B2 (in PTO-892).Claim 1 of US’432 recites a method of making methylcellulose-type ether in powder form comprising (a) providing a solution of said methylcellulose-type ether in water, wherein the methylcellulose-type ether is selected from the group consisting of methyl cellulose polymer and hydroxyalkyl methylcellulose polymers, wherein the methylcellulose-type ether is present in the solution in an amount of 0.2% to 15% by weight based on the weight of the solution, wherein the molecules of the methylcellulose-type ether are intimately mixed with the molecules of an aqueous medium wherein the aqueous medium comprises 75% or more water by weight based on the weight of the aqueous medium, wherein the solution behaves as a liquid, and (b) then separating said methylcellulose-type ether from said water to produce dried methylcellulose-type ether, with the proviso that either (i) step (b) produces said methylcellulose-type ether in powder form, or (ii) after step (b), said method additionally comprises a step (c) of subjecting said dried methylcellulose-type ether to mechanical stress to produce said methylcellulose-type ether in powder form.
The difference between the claims of ‘432 and the claimed invention is that the claims of ‘432 do not recite a s23/s26 value as well as the recited steps (a)-(c).
The independent teachings of Reibert, Kitamura, and US’840 are as described above.
It would have been prima facie obvious before the effective filing date of the claimed invention to have modified the process of making recited in the claims of ‘432 by including the method disclosed in Reibert and further adjusting the heating rate and heating to a reaction temperature between 65C to 120C during the etherification step as suggested by Kitamura and Reibert as well as further modifying the mol amounts of NaOH and methylating agents per mol of anhydroglucose units as disclosed in US’840. One of ordinary skill in the art would have made the modification of including the method of Reibert with a reasonable expectation of success because both the claims of ‘812 and Reibert recite a method of producing methylcellulose. Therefore, an ordinary skilled artisan could have predictably tried the method disclosed in Reibert with a reasonable expectation of success.
Furthermore, one of ordinary skill in the art could have performed routine experimentation to adjust the heating rate and reaction temperature because an ordinary skilled artisan could have also considered heating the cellulose from 40C to any temperature between 65C and 120C over longer periods of time such as greater than 80 minutes (less than 0.5 C / min) instead of 40 minutes (1 C / min) as exemplified in Reibert because Kitamura discloses that increasing the temperature at a constant rate can help suppress the decrease of the etherification reaction rate and produce a methyl cellulose having high viscosity and gel strength, and Reibert provides guidance that the methylating agent can be added over any extended period of time and preferably in 120 minutes or less, as well as guidance that the methylating agent can be reacted at any temperature in which the reaction can proceed and is preferred at a temperature ranging from 65C to 120C. See MPEP 2144.05.
Furthermore, one of ordinary skill in the art could have made the modification of the mol amounts of NaOH and methylating agents per mol of anhdroglucose units because US’840 discloses their method of making methylcellulose are made according to Reibert.
Lastly, the recited s23/s26 ratio of greater than 0.45 would flow naturally from the combination described above because the modified method from the combination described above provides guidance of the same steps and overlapping reaction conditions to produce the recited methylcellulose (see page 13 Table 1 and Table 2 for reaction conditions as well as page 5 line 10-13 and page 5 lines 23-25 for overlapping ranges of mol amounts for NaOH and methylating agents). Here, Ex. 1-3 resulted in methylcellulose products having a s23/s26 value of 0.48-0.50.
MPEP 2145 II recites “The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious." Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter.m 1985) (The prior art taught combustion fluid analyzers which used labyrinth heaters to maintain the samples at a uniform temperature. Although appellant showed that an unexpectedly shorter response time was obtained when a labyrinth heater was employed, the Board held this advantage would flow naturally from following the suggestion of the prior art.). See also Lantech Inc. v. Kaufman Co. of Ohio Inc., 878 F.2d 1446, 12 USPQ2d 1076, 1077 (Fed. Cir. 1989), cert. denied, 493 U.S. 1058 (1990) (unpublished — not citable as precedent) ("The recitation of an additional advantage associated with doing what the prior art suggests does not lend patentability to an otherwise unpatentable invention.").”
It is noted that the instant specification has been considered for evidence of unexpected results over the prior art. However, no evidence was found for the following reasons.
Applicant discloses that a slower heating rate of 0.3 to 0.55C per minute is critical for having a methylcellulose with s23/s26 of 0.45 or more (see page 5 line 32 through page 6 lines 1-2). Reibert appears to be the closest prior art and only exemplifies making a methylcellulose using a heating rate of 1 C per minute as described above.
Furthermore, as shown in Table 1 and 2 (page 13) of the instant specification, Applicant also provides a comparison of slower heating rates (between 0.3 to 0.6 as seen in Ex. 1-3) to faster heating rates (0.75 to 1.5 as seen in CE-A through CE-D). The faster heating rate examples (CE-A through CE-D) appear to be representative of the method recited in Reibert. However, as seen in Table 3 (page 13), the s23/s26 values for the comparisons are not disclosed, making it difficult to ascertain if the slower heating rate is critical to arrive at the s23/s26 of 0.45 or more. Furthermore, Applicant appears to have changed two heating parameters (heating rate and reaction time at the reaction temperature) in the comparisons, which also makes it difficult to ascertain if the slower heating rate is critical to arrive at the s23/s26 of 0.45 or more.
Therefore, since the combination described above disclose or suggest all of the reaction conditions and amounts as described above, and it is not clear from the data disclosed in the instant specification if the slower heating rate is critical to the instant invention, an ordinary skilled artisan could have still performed routine experimentation in the modified method described above to arrive at the recited s23/s26 values.
Conclusion
No claim is found allowable.
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/D.H.C./Examiner, Art Unit 1693
/SCARLETT Y GOON/Supervisory Patent Examiner, Art Unit 1693