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 .
CONTINUING DATA
This application is a 371 of PCT/CA2022/050599 04/20/2022
PCT/CA2022/050599 has PRO 63/177,172 04/20/2021
Claims 1, 3-4, 6-7, 9-12, 14-15, 17-18, 20, 29-30, 36, 41, 66, and 91 are pending.
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.
Claim(s) 1, 3, 6-7, 9-10, 12, 14-15, 20, 29-30, and 36, is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Takayama (WO2020195671A1, October 1, 2020). US20220153879A1 is used as an English equivalent.
Takayama teaches a carboxymethylcellulose fiber having an average fiber diameter of 13.8 µm and a charge density of 0.58 meq/g, and a degree of carboxymethyl substitution of 0.21. See page 12, Table 1, Example 5. The product was prepared by reacting mercerized (which means treated with NaOH) cellulose with sodium monochloroacetate and heating, followed by neutralization with acetic acid [0122]. The CMC inherently had an anionic group covalently bonded at the C2, C3, and/or C6 positions because those are the only positions available for substitution of cellulose. The product was inherently free of bubbles because it was not subjected to a step of extruding into a coagulation bath or immersion into a coagulation bath. The current specification paragraph [0236] states that bubbles are formed in step C), and Takayama does not teach a step C.
Claims 12, 14-15, 17-18, 20, 29-30, 41, 66, and 61 are product-by process claims. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted). The product-by-process claim was rejected because the end product, in both the prior art and the allowed process, ends up containing metal carboxylate. The fact that the metal carboxylate is not directly added, but is instead produced in-situ does not change the end product.). See MPEP 2113. In this instance, steps recited in claim 12 can result in CMC fibers, and the Takayama product is a CMC fiber.
Claim(s) 1, 3-4, 6-7, 9-10, 12, 14-15, 20, 29-30, and 36, is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Inoue (WO2019221272A1, November 21, 2019). US2021/0079173A1 is used as an English equivalent.
Inuoe teaches CMC having a DS of 0.38, an average fiber diameter of 13.4 µm, and a degree of anionization 1.09 meq/g. See Table 1, Example 4. The composition was prepared by preparing mercerized cellulose, reaction with sodium monochloroacetate, and neutralization with acetic acid [0141].
The CMC inherently had an anionic group covalently bonded at the C2, C3, and/or C6 positions because those are the only positions available for substitution of cellulose. The product was inherently free of bubbles because it was not subjected to a step of extruding into a coagulation bath or immersion into a coagulation bath. The current specification paragraph [0236] states that bubbles are formed in step C), and Inuoe does not teach a step C.
Claims 12, 14-15, 17-18, 20, 29-30, 41, 66, and 61 are product-by process claims. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted). The product-by-process claim was rejected because the end product, in both the prior art and the allowed process, ends up containing metal carboxylate. The fact that the metal carboxylate is not directly added, but is instead produced in-situ does not change the end product.). See MPEP 2113. In this instance, steps recited in claim 12 can result in CMC fibers, and the Inuoe product is a CMC fiber.
Claim(s) 1, 3-4, 6-7, 9-12, 14-15, 17-18, 20, 29-30, and 41 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Moradian (Ind. Eng. Chem. Res. 2021, 60, 5385-5393, cited on IDS).
Moradian teaches CMC films having a charge density of 1.0, 1.3, 1.5, 1.0, 1.3, or 1.5 mmol/g. See Table 1. The compositions were prepared by treated cellulose with NaOH, adding sodium monochloroacetate, and filtering to get carboxymethyl fibers (CMFs). CMFs were dissolved in alkaline solution and mixed to provide a dope solution, then the dope was degassed, cast on a teflon mold, and immersed in a sulfuric acid back, leaving an insoluble film. Page 5386, right column. The product is partially decarboxylated up to 30% because it was treated with acid. Paragraph [0364] of the current specification states that up to one third of carboxyl groups in CMF are unstable under acidic conditions, and when an alkaline carboxymethylated cellulose solution is regenerated in an acid bath, the unstable carboxyl groups are decarboxylated, leaving an equivalent amount of methyl groups on the cellulose.
Figure 6 shows photographs and optical microscopy images of the films, and no bubbles are visible. Figure 7 illustrates a fiber having a diameter of 865 nm or 0.865 µm, which meets the limitation “about 1 µm.” Paragraph [0282] states that “about” has its ordinary meaning. The Britannica Dictionary online states that “about” is used to indicate that the number or amount is not exact or certain, and means the same as approximately or roughly. 0.865 is 13.5% less than 1, which would seem to meet the requirements of “about” 1.
The current claims do not require a filament. The original claims required a filament, but the claims were amended to remove the filament limitation.
Claims 12, 14-15, 17-18, 20, 29-30, 41, 66, and 61 are product-by process claims. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted). The product-by-process claim was rejected because the end product, in both the prior art and the allowed process, ends up containing metal carboxylate. The fact that the metal carboxylate is not directly added, but is instead produced in-situ does not change the end product.). See MPEP 2113. In this instance, steps recited in claim 12 can result in CMC fibers or films, and the Moradiani products are CMC fibers and/or films.
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.
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) 91 is/are rejected under 35 U.S.C. 103 as being unpatentable over Moradian (Ind. Eng. Chem. Res. 2021, 60, 5385-5393, cited on IDS) in view of Clemons (Homemade Fixative from CMC Powder, February 9, 2019, internet article downloaded from the internet on February 10, 2026, https://dbclemons.wordpress.com/2019/02/09/homemade-fixative-from-cmc-powder/).
Moradian teaches as set forth above, but does not teach a film prepared by a process comprising overlaying a first portion and second portion of cellulose in a wet state.
It would have been obvious to one of ordinary skill in the art at the time the application was filed to prepare Moradian’s composition by pouring multiple layers of CMC onto the Teflon mold because pouring more CMC onto the Teflon mold would have resulted in a thicker composition. Moradian’s compositions are intended to replace cellophane and plastics (see abstract), so the skilled artisan would have prepared a thicker film in order to replace thicker plastics. MPEP 2144.02 states that the rationale to support an obviousness rejection may rely on logic and sound scientific principle, with evidentiary support. The rationale for this rejection (applying multiple layers to achieve a thicker composition) is based on logic. Applying multiple layers of a composition to achieve a thicker composition is known in the art. Clemons teaches that a CMC gel can be layered on a substrate and the resulting layered composition will be thicker than a single layer.
Claim(s) 66 is/are rejected under 35 U.S.C. 103 as being unpatentable over Moradian (Ind. Eng. Chem. Res. 2021, 60, 5385-5393, cited on IDS) in view of Shahbazi (Food Hydrocolloids 61 (2016) 378-389).
Moradian teaches as set forth above, but does not teach inclusion of a crosslinking agent. Moradian’s compositions are intended to replace cellophane and plastics (see abstract).
Shahbazi teaches that CMC compositions containing crosslinks are useful in food packaging (see abstract). CMC films are commonly used in food packaging, but some have poor water resistance or weak mechanical or barrier properties. Crosslinking improves the weak water resistance, poor water barrier properties, weak tensile strength, and improves the thermal and structural characteristics of CMC film. Page 378-379, Section 1.
It would have been obvious to one of ordinary skill in the art at the time the application was filed to incorporate a crosslinking agent into Moradian’s CMC films in order to obtain a product which would be more suitable for Moradian’s purpose replacing plastic packaging. The skilled artisan would have added the crosslinking agent because crosslinking improves the properties of cellulose films for food packaging, as taught by Shahbazi.
Conclusion
No claims are allowed.
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/LAYLA D BERRY/ Primary Examiner, Art Unit 1693