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 .
DETAILED ACTION
This is a response to Applicant’s communication filed on November 14, 2023. Application No. 18/560,771, is a 371 of PCT/CN2022/088743, filed April 24, 2022, and claims foreign priority to Chinese application No. CHINA 202110521394.5, filed May 18, 2021. In a preliminary amendment filed November 14, 2023, Applicant cancelled claims 11 and 16-20. Claims 1-10 and 12-15 are pending.
Claim Rejections - 35 USC § 101 and/or 112(b)
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
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.
Claim 10 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter, as well as rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, regards as the invention. Claim 10 is drawn to an “application” of the N-methylmorpholine N-oxide (NMMO) in cellulose. The “application” of NMMO is equivalent to the “use” thereof. In this case, the “use” of NMMO does not fall within at least one of the four categories of patent eligible subject matter, and fails to recite steps under U.S.C. 101. In addition, claim 10 is also rejected under 35 U.S.C. 112(b) as being indefinite for reciting a use without any active, positive steps delimiting how this use is actually practiced. See MPEP 2173.05(q).
Claim Rejections - 35 USC § 102(a)(1)
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 1-3, 9, and 12-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Scholten et al., U.S. Patent No. 4,748,241. Scholten discloses an industrial method of both purification and preparation of N-methylmorpholine N-oxide. See Scholten et al., ‘241 patent, Abstract; see also Id., Col. 1., ln. 50 – Col. 2, ln. 15, for commercial use and application. The method of Scholten reacts N-methylmorpholine in water with hydrogen peroxide at temperatures between 60-100 C, resulting 60% mass concentration of NMMO in the NMMO crude product. Id., Col. 2., lns. 16-43.
Conclusion
Claims 1-3, 9, 10, 12-15 are not allowed.
Claims 4- 8 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TIMOTHY R ROZOF whose telephone number is (571)270-5992. The examiner can normally be reached Monday - Friday, 9:00 a.m. -5:00 p.m..
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Andrew Kosar can be reached at (571) 272-0913. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TIMOTHY R ROZOF/ Primary Examiner, Art Unit 1625
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