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.
Response to Amendment
The amendment filed September 2, 2026 has been entered. Claims 1-4, 6, 8-13, and 17 have been amended, claims 15-16 have been cancelled, and claims 19-21 have been added. Applicant’s amendments to the claims have overcome the objections to the drawings, specification, and claims as well as the 112b rejections previously set forth in the Non-Final Office Action mailed April 2, 2026. Applicants cancellation of claims 15-16 have rendered the corresponding rejections/objections moot. As such, these rejections and objections are hereby withdrawn.
Applicant’s arguments filed September 2, 2026 were fully considered but they were not persuasive. Maintained and modified/new rejections necessitated by Applicant’s amendment are addressed below.
This application is a 371 of PCT/CA2022/050952 filed 06/15/2022 and claims benefit to US provisional application 63/211,291 filed 06/16/2021.
Claims 1-14 and 17-21 are pending in this application.
Claim Interpretation
Claim 3 recites “wherein pretreatment step comprises dispersing the cellulose in an aqueous slurry, and the hypohalite is directly added to the aqueous slurry following pretreatment.” The Examiner notes that the transitional term "comprising", which is synonymous with "including," "containing," or "characterized by," is inclusive or open-ended and does not exclude additional, unrecited elements or method steps (See MPEP 2111.03 (I)). In the instant case dispersing the cellulose in an aqueous slurry does not exclude filtering/washing steps that may occur.
Claims 17-18 are product by process claims. The Examiner notes that, "[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) (See MPEP 2113 (I)).
New Claim Rejections - 35 USC § 112 (d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 17-18 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claims 17-18 are an improper dependent claim since the product as recited can be prepared by another process, such as in a multi stage process. Since claim 1 recites a method of making a specified product, a claim to the product set forth in claim 17-18 is not proper dependent claim since the product can be made by a method other than that recited in the base method claim, and thus, does not include the limitations of the base claim (See MPEP 607.01(n)(III)).
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Maintained/New Claim Rejections - 35 USC § 102
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 1-7, 9-14 and 17-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mcalpine (US 2019/0040158, cited in previous action).
Regarding claims 1-7, 9-14 and 17-20: Mcalpine teaches method of producing crystalline cellulose from a cellulosic material includes the step of reacting the cellulosic material in an aqueous slurry comprising a transition metal catalyst and a hypohalite solution (abstract). Mcalpine teaches the general method comprises the following steps (a) reacting the cellulosic material in an aqueous slurry comprising a transition metal catalyst and a hypohalite solution; (b) washing the cellulosic material in an alkaline solution; (c) repeating step (a), and (d) recovering a CNC fraction (pg. 2, para. 0016). Mcalpine teaches in one example the method comprises treatment of treated hemp pulp (i.e. purified cellulose) with a pretreatment comprising soaking in reverse osmosis water, then adding iron sulfate or copper sulfate catalyst, adding sodium hypochlorite solution at 75 °C (pg. 5, para. 0062, Table 3). Mcalpine teaches in this example, 5.65 mol/kg of biomass was used (pg. 5, para. 0063). The ratio of copper catalyst to biomass is 0.66 mg/g (pg. 5, para. 0065, table 4). Mcalpine teaches after the first redox reaction, the biomass has substantially broken down compared to the start, and the suspension is filtered giving a resulting cake (pg. 5, para. 0066-0067). Mcalpine removing oxidation products of the first redox reaction may result in a more complete and better quality crystalline cellulose product (pg. 5, para. 0068). The filter cake from the first redox reaction was resuspended in 1 L of water and NaOH was added to a pH of 12.0-12.3 and then stirred at 85 °C, then being filtered and washed to form a filter cake (i.e. an aqueous slurry, pg. 5, para. 0068). The filter cake, being a biomass from hemp pulp is interpreted to be encompassed by the phrase "a purified cellulose". McAlpine similarly teaches wood pulp comprising 96% and 91% cellulose can be used in the process (pg. 9, para. 0088). Mcalpine teaches following the alkaline treatment, a second redox reaction similar to the conditions set out in the first redox is utilized, with copper sulfate, and NaClO at 75 °C (pg. 6, para. 0069, table 5). McAlpine teaches wherein the filter cake from alkaline extraction is suspended in water and NaClO is added (i.e. pretreatment step comprises dispersing the cellulose in an aqueous slurry and hypohalite is added to the slurry following pretreatment, pg. 6, para. 0069). The method results in CNC particles that are uniform in size and the average particle size is 212 nm (pg. 6, para. 0073). As shown in figures 6-7 of the drawings the particle size graphs exhibit a singular peak (drawings sheets 8-9, figures 6-7). Mcalpine teaches the method using a hypohalite salt and transition metal catalyst produces a preferably substantially pure CNC, wherein "substantially pure" means that less than 50% of the resulting crystalline cellulose is not CNC (pg. 3, para. 0040). According to the instant specification, use of a transition metal catalyst increased the speed of the reaction, decreases yield, and improves purity (pg. 20, para. 0060). Thus the CNC produced by the McAlpine is identical to that instantly claimed, absent evidence to the contrary.
According to the instant specification, use of a transition metal catalyst increased the speed of the reaction, decreases yield, and improves purity (pg. 20, para. 0060). According to the instant specification, the phrase "substantially pure" is not particularly limiting, the specification states the phrase is defined in that less than 50% of the resulting CNC is not CNC (para. 0024). Wherein the patented claims teach the preparation of a substantially pure CNC, the CNC produced by the patented claims is identical to that instantly claimed, absent evidence to the contrary.
Maintained/New 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.
Claims 8 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Mcalpine (US 2019/0040158, cited in previous action) as applied to claims 1-7, 9-14 and 17-20 above.
Regarding claims 8 and 21: As discussed above, Mcalpine teaches the method of claim 7 wherein method comprises subjecting the material from the first redox reaction was resuspended in 1 L of water and NaOH was added to a pH of 12.0-12.3 and then stirred at 85 C (i.e. an aqueous slurry, pg. 5, para. 0068).
Mcalpine does not teach wherein the amount of NaOH is added in amount from about 6.0 mg/g of cellulose to about 10 mg/g of cellulose as recited by instant claim 8.
However, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. (See MPEP 2144.05 (II)).
Modified/New 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, 17-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of U.S. Patent No. 11,168,151 (cited in previous action) in view of Mcalpine (US 2019/0040158, cited in previous action). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding claims 1-2, 4-7, 9-14, 17-20: The patented claims teaches
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(claim 1). The hypohalite comprises hypochlorite, hypoiodite, or hypobromite, and the concentration of the hypohalite is between 0.1M and 0.5M (claim 2). The initial pH of the slurry in either or both the first redox reaction or the second redox reaction is between 9.0 to 12.0 (claim 3). The ratio of hypohalite to cellulosic material in the slurry in the first redox reaction is between 1 mol/kg to about 10 mol/kg (claim 10). The slurry is heated in either or both the first redox reaction or the second redox reaction to between about 50 C and 85 C (claim 11). The method further comprises a step of washing the crystalline cellulose produced by the first redox reaction in an alkaline solution (before the second redox reaction, i.e. pretreatment prior to oxidation, claim 12). The alkaline solution comprises a solution of NaOH having a pH of about 12.0 (claim 13). The alkaline solution is heated to between about 30 °C and about 90 °C (claim 14). The cellulosic material comprises hemp pulp (claim 18, i.e. a purified cellulose material). The patented claims teach the substantially pure CNCs have a particle size distribution with a single peak less than about 200 nm (claim 16).
Given that the patented claims teach a substantially pure CNC with a size distribution with a single peak less than about 200 nm produced under comparable alkaline/oxidation conditions, the CNCs produced by the patented claims encompass the CNCs recited by instant claims 17-18 absent evidence to the contrary.
Although the patented claims do not utilize the phrases pretreating/oxidizing step a) of patented claim 1 constitutes a pretreatment of cellulose material and step b) utilizing a redox reaction with hypohalite constitutes an oxidation reaction. Thus, the claimed method is encompassed by the patented claims. With respect to the claimed pH values, concentrations and temperatures, In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (See MPEP 2144.05 (I)). Although the patented claims don’t explicitly state they recover the substantially pure CNC, a person of ordinary skill in the art that producing CNCs following the method, naturally flows as a result of practicing the method.
The patented claims do not specify the use of sodium hypochlorite, or the metal of the transition metal catalyst in a concentration between 0.1 mg/g to 5mg/g. The patented claims do not specify the purity of the initial purified cellulose.
However, Mcalpine teaches method of producing crystalline cellulose from a cellulosic material includes the step of reacting the cellulosic material in an aqueous slurry comprising a transition metal catalyst and a hypohalite solution (abstract). Mcalpine teaches the general method comprises the following steps (a) reacting the cellulosic material in an aqueous slurry comprising a transition metal catalyst and a hypohalite solution; (b) washing the cellulosic material in an alkaline solution; (c) repeating step (a), and (d) recovering a CNC fraction (pg. 2, para. 0016). Mcalpine teaches in one example the method comprises treatment of treated hemp pulp (i.e. purified cellulose) with a pretreatment comprising soaking in reverse osmosis water, then adding iron sulfate or copper sulfate catalyst, adding sodium hypochlorite solution at 75 °C (pg. 5, para. 0062, Table 3). McAlpine similarly teaches wood pulp comprising 96% and 91% cellulose can be used in the process (pg. 9, para. 0088). Mcalpine teaches in this example, 5.65 mol/kg of biomass was used (pg. 5, para. 0063). The ratio of copper catalyst to biomass is 0.66 mg/g (pg. 5, para. 0065, table 4). Mcalpine teaches after the first redox reaction, the biomass has substantially broken down compared to the start, and the suspension is filtered giving a resulting cake (pg. 5, para. 0066-0067). Mcalpine removing oxidation products of the first redox reaction may result in a more complete and better quality crystalline cellulose product (pg. 5, para. 0068).
Taken together it would have been prima facie obvious to modify the method of the patented claims by utilizing sodium hypochlorite and a copper catalyst at 0.66 mg/g concentration as taught by McAlpine. A person of ordinary skill in the art would have had the motivation to do so with a reasonable expectation of success as these materials/concentrations are known in the art to be effective at carrying out the necessary reactions in the production of a CNC.
Regarding claim 3: As discussed above, the copending claims teach washing with an alkaline treatment prior to a second redox reaction which occurs in an aqueous slurry comprising the transition catalyst and hypohalite (i.e. adding hypohalite to the aqueous slurry, wherein the alkaline washing and reformation of an aqueous slurry is interpreted to be part of the pretreatment step). Thus the method of instant claim 3 is encompassed by the patented claims.
Regarding claims 8 and 21: As discussed above, the method further comprises a step of washing the crystalline cellulose produced by the first redox reaction in an alkaline solution (before the second redox reaction, i.e. pretreatment prior to oxidation, claim 12). The alkaline solution comprises a solution of NaOH having a pH of about 12.0 (claim 13).
The patented claims do not specify the concentration of NaOH relative to the cellulose material.
However, given that the patented claims teach adding an alkaline solution comprising NaOH, Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation (See MPEP 2144.05 (II)).
Claims 1-14, 17-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of U.S. Patent No. 12,528,886 (cited in previous action) in view of Mcalpine (US 2019/0040158, cited in previous action). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding claims 1-2, 4-7, 9-14, 17-20: The patented claims teach a method of producing crystalline cellulose from a cellulosic material, comprising the steps of reacting the cellulosic material in aqueous slurry comprising a transition metal catalyst and a hypohalite solution at a pH greater than 5.5 and a final pH less than 9.5, and recovering a crystalline cellulose fraction (claim 1). The patented claims teach wherein the hypohalite comprises hypochlorite, hypoiodite, or hypobromite (claim 2). The patented claims teach wherein the initial pH of the slurry in between 9.0 to 12.0 (claim 3). The patented claims teach wherein the slurry is heated to between about 50 °C to about 85 °C. The patented claims teach wherein the ratio of hypohalite to cellulosic material in the slurry in between about 1 mol/kg to about 10 mol/kg (claim 10). T The patented claims teach wherein the reaction step (a) is repeated by adding additional hypohalite doses to produce a mixture of microcrystalline cellulose and cellulose nanocrystals (claim 12). The patented claims teach further comprising the steps of washing the crystalline cellulose produced by step (a) in an alkaline solution, and repeating step (a) to produce cellulose nanocrystals (claim 15). The patented claims teach wherein the alkaline solution comprises a solution of NaOH having a pH of about 12 (claim 16). The patented claims teach wherein the alkaline solution is heated to between about 30 °C to about 90 °C.
Given that the patented claims teach a substantially pure CNC the CNCs produced by the patented claims encompass the CNCs recited by instant claims 17 absent evidence to the contrary.
Although the patented claims do not utilize the phrases pretreating/oxidizing step a) of patented claim 1 constitutes a pretreatment of cellulose material and step b) utilizing a redox reaction with hypohalite constitutes an oxidation reaction. Thus, the claimed method is encompassed by the patented claims. With respect to the claimed pH values, concentrations and temperatures, In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (See MPEP 2144.05 (I)). Although the patented claims don’t explicitly state they recover the substantially pure CNC, a person of ordinary skill in the art that producing CNCs following the method, naturally flows as a result of practicing the method.
The patented claims do not specify the use of sodium hypochlorite, or the metal of the transition metal catalyst in a concentration between 0.1 mg/g to 5mg/g. The patented claims do not specify the purity of the initial purified cellulose. The patented claims do not teach wherein the purified cellulose comprises a paper-making pulp. The patented claims do not teach wherein the pure CNC has a single peak of size distribution wherein the average particle size is less than about 400 nm.
However, Mcalpine teaches method of producing crystalline cellulose from a cellulosic material includes the step of reacting the cellulosic material in an aqueous slurry comprising a transition metal catalyst and a hypohalite solution (abstract). Mcalpine teaches the general method comprises the following steps (a) reacting the cellulosic material in an aqueous slurry comprising a transition metal catalyst and a hypohalite solution; (b) washing the cellulosic material in an alkaline solution; (c) repeating step (a), and (d) recovering a CNC fraction (pg. 2, para. 0016). Mcalpine teaches in one example the method comprises treatment of treated hemp pulp (i.e. purified cellulose) with a pretreatment comprising soaking in reverse osmosis water, then adding iron sulfate or copper sulfate catalyst, adding sodium hypochlorite solution at 75 °C (pg. 5, para. 0062, Table 3). Mcalpine teaches in this example, 5.65 mol/kg of biomass was used (pg. 5, para. 0063). The ratio of copper catalyst to biomass is 0.66 mg/g (pg. 5, para. 0065, table 4). Mcalpine teaches after the first redox reaction, the biomass has substantially broken down compared to the start, and the suspension is filtered giving a resulting cake (pg. 5, para. 0066-0067). Mcalpine removing oxidation products of the first redox reaction may result in a more complete and better quality crystalline cellulose product (pg. 5, para. 0068). McAlpine teaches wherein the filter cake from alkaline extraction is suspended in water and NaClO is added (i.e. pretreatment step comprises dispersing the cellulose in an aqueous slurry and hypohalite is added to the slurry following pretreatment, pg. 6, para. 0069). McAlpine similarly teaches wood pulp comprising 96% and 91% cellulose can be used in the process (pg. 9, para. 0088). The method results in CNC particles that are uniform in size and the average particle size is 212 nm (pg. 6, para. 0073). As shown in figures 6-7 of the drawings the particle size graphs exhibit a singular peak (drawings sheets 8-9, figures 6-7). Mcalpine teaches the method using a hypohalite salt and transition metal catalyst produces a preferably substantially pure CNC, wherein "substantially pure" means that less than 50% of the resulting crystalline cellulose is not CNC (pg. 3, para. 0040).
Taken together it would have been prima facie obvious to modify the method of the patented claims by utilizing sodium hypochlorite and a copper catalyst at 0.66 mg/g concentration and sourcing the purified cellulose from hemp pulp as taught by McAlpine. A person of ordinary skill in the art would have had the motivation to do so with a reasonable expectation of success as these materials/concentrations are known in the art to be effective at carrying out the necessary reactions in the production of a CNC and hemp pulp is a known cellulose material that is used in the production of CNC.
Wherein the general method is rendered obvious in view of McAlpine, the CNC produced necessarily possesses the claimed particle size with a single peak of size distribution as instantly claimed as a result of practicing the method, absent evidence to the contrary.
Regarding claim 3: As discussed above, the copending claims teach washing with an alkaline treatment prior to a treatment in an aqueous slurry comprising the transition catalyst and hypohalite (i.e. adding hypohalite to the aqueous slurry, wherein the alkaline washing and reformation of an aqueous slurry is interpreted to be part of the pretreatment step). Thus the method of instant claim 3 is encompassed by the patented claims.
Regarding claim 8 and 21: As discussed above, the method further comprises a step of washing the crystalline cellulose produced by the step in an alkaline solution (before the treatment with hypohalite, i.e. pretreatment prior to oxidation, claim 12). The alkaline solution comprises a solution of NaOH having a pH of about 12.0 (claim 13).
The patented claims do not specify the concentration of NaOH relative to the cellulose material.
However, given that the patented claims teach adding an alkaline solution comprising NaOH, Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation (See MPEP 2144.05 (II)).
Claim 17 is rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of U.S. Patent No. 12,017,955 (cited in previous action). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding claim 17: The patented claims teach a cement composition comprising cement and substantially pure cellulose nanocrystals formed by a redox reaction which are substantially pure cellulose nanocrystals (claim 1). The redox reaction comprises oxidation with a hypohalite (claim 2). The redox reaction comprises the steps of reacting a cellulosic material in an aqueous slurry comprising a transition metal catalyst and a hypohalite solution having an initial pH greater than about 6.0 and a final pH less than about 9.0 and recovering a crystalline cellulose fraction (claim 3). The hypohalite comprises hypochlorite (claim 4). The CNCs are collected and treated with an alkaline solution (claim 6). The alkaline solution comprises a solution of NaOH having a pH of about 12 (claim 7). The alkaline solution is heated to between about 30 C and about 90 C to treat the CNC (claim 8). Wherein the copending claims teach a substantially pure CNC produced by oxidation/alkaline conditions, the CNC produced by the instant claims is encompassed by the patented claims, absent evidence to the contrary.
Claims 1-14 and 18-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of U.S. Patent No. 12,017,955 (cited in previous action) as applied to claim 17 above in view of Mcalpine (US 2019/0040158, cited in previous action). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding claims 1-14 and 18-21: As discussed above the patented claims teach everything described above.
The patented claims do not teach wherein the cellulose material is pretreated with alkaline solution at a pH of greater than about 9.0 comprising NaOH effective to reach the desired pH or wherein NaOH is added from about 2.0 mg/g of cellulose to about 20 mg/g of cellulose. The patented claims do not teach wherein the purified cellulose comprises a paper-making pulp. The patented claims do not specify the use of sodium hypochlorite, or the metal of the transition metal catalyst in a concentration between 0.1 mg/g to 5mg/g. The patented claims do not teach wherein the pure CNC has a single peak of size distribution wherein the average particle size is less than about 400 nm. The patented claims do not teach wherein the oxidation step is between 30 °C to about 95 °C.
However, Mcalpine teaches method of producing crystalline cellulose from a cellulosic material includes the step of reacting the cellulosic material in an aqueous slurry comprising a transition metal catalyst and a hypohalite solution (abstract). Mcalpine teaches the general method comprises the following steps (a) reacting the cellulosic material in an aqueous slurry comprising a transition metal catalyst and a hypohalite solution; (b) washing the cellulosic material in an alkaline solution; (c) repeating step (a), and (d) recovering a CNC fraction (pg. 2, para. 0016). Mcalpine teaches in one example the method comprises treatment of treated hemp pulp (i.e. purified cellulose) with a pretreatment comprising soaking in reverse osmosis water, then adding iron sulfate or copper sulfate catalyst, adding sodium hypochlorite solution at 75 °C (pg. 5, para. 0062, Table 3). Mcalpine teaches in this example, 5.65 mol/kg of biomass was used (pg. 5, para. 0063). The ratio of copper catalyst to biomass is 0.66 mg/g (pg. 5, para. 0065, table 4). Mcalpine teaches after the first redox reaction, the biomass has substantially broken down compared to the start, and the suspension is filtered giving a resulting cake (pg. 5, para. 0066-0067). Mcalpine removing oxidation products of the first redox reaction may result in a more complete and better quality crystalline cellulose product (pg. 5, para. 0068). The filter cake from the first redox reaction was resuspended in 1 L of water and NaOH was added to a pH of 12.0-12.3 and then stirred at 85 °C, then being filtered and washed to form a filter cake (i.e. an aqueous slurry, pg. 5, para. 0068). The filter cake, being a biomass from hemp pulp is interpreted to be encompassed by the phrase "a purified cellulose". McAlpine similarly teaches wood pulp comprising 96% and 91% cellulose can be used in the process (pg. 9, para. 0088). Mcalpine teaches following the alkaline treatment, a second redox reaction similar to the conditions set out in the first redox is utilized, with copper sulfate, and NaClO at 75 °C (pg. 6, para. 0069, table 5). McAlpine teaches wherein the filter cake from alkaline extraction is suspended in water and NaClO is added (i.e. pretreatment step comprises dispersing the cellulose in an aqueous slurry and hypohalite is added to the slurry following pretreatment, pg. 6, para. 0069). The method results in CNC particles that are uniform in size and the average particle size is 212 nm (pg. 6, para. 0073). As shown in figures 6-7 of the drawings the particle size graphs exhibit a singular peak (drawings sheets 8-9, figures 6-7). Mcalpine teaches the method using a hypohalite salt and transition metal catalyst produces a preferably substantially pure CNC, wherein "substantially pure" means that less than 50% of the resulting crystalline cellulose is not CNC (pg. 3, para. 0040). According to the instant specification, use of a transition metal catalyst increased the speed of the reaction, decreases yield, and improves purity (pg. 20, para. 0060).
Taken together it would have been prima facie obvious to a person of ordinary skill in the art to implement additional alkaline wash and redox reaction conditions and source cellulose from wood pulp with 91% cellulose into the patented method as taught by McAlpine and arrive at the claimed method of producing CNCs. A person of ordinary skill in the art would have had the motivation to do so with a reasonable expectation of success as these conditions are known in the art to be successful in preparing a pure CNC.
Wherein the general method is rendered obvious in view of McAlpine, the CNC produced necessarily possesses the claimed particle size with a single peak of size distribution as instantly claimed as a result of practicing the method, absent evidence to the contrary.
Given that the patented claims and Mcalpine teach adding an alkaline solution comprising NaOH, Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation (See MPEP 2144.05 (II)).
Claim 17 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of copending Application No. 18/664,020 (US 2024/0336526, cited in previous action). Although the claims at issue are not identical, they are not patentably distinct from each other because:
The copending claims teach the preparation of a cement composition comprising cement and substantially pure cellulose nanocrystals formed by a redox reaction and having a carboxyl content of about 0.333 mmol/g or less (claim 1). The redox reaction comprises oxidation with a hypohalite (claim 7). The redox reaction comprises the steps of reacting a cellulosic material in an aqueous slurry comprising a transition metal catalyst and a hypohalite solution having an initial pH greater than about 6.0 and a final pH less than about 9.0 and recovering a crystalline cellulose fraction (claim 8). The CNCs are collected and treated with an alkaline solution (claim 10). The alkaline solution comprises a solution of NaOH having a pH of about 12 (claim 11). The alkaline solution is heated to between about 30 C and about 90 C to treat the CNC (claim 12). Wherein the copending claims teach a substantially pure CNC produced by oxidation/alkaline conditions, the CNC produced by the instant claims is encompassed by the copending claims, absent evidence to the contrary.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 1-14, and 18-21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of copending Application No. 18/664,020 (US 2024/0336526, cited in previous action) as applied to claim 17 above, in view of Mcalpine (US 2019/0040158, cited in previous action). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding claims 1-14 and 18-21: As discussed above the copending claims teach everything described above.
The copending claims do not teach wherein the cellulose material is pretreated with alkaline solution at a pH of greater than about 9.0 comprising NaOH effective to reach the desired pH or wherein NaOH is added from about 2.0 mg/g of cellulose to about 20 mg/g of cellulose. The copending claims do not teach wherein the purified cellulose comprises a paper-making pulp. The copending claims do not specify the use of sodium hypochlorite, or the metal of the transition metal catalyst in a concentration between 0.1 mg/g to 5mg/g. The copending claims do not teach wherein the pure CNC has a single peak of size distribution wherein the average particle size is less than about 400 nm. The copending claims do not teach wherein the oxidation step is between 30 °C to about 95 °C.
However, Mcalpine teaches method of producing crystalline cellulose from a cellulosic material includes the step of reacting the cellulosic material in an aqueous slurry comprising a transition metal catalyst and a hypohalite solution (abstract). Mcalpine teaches the general method comprises the following steps (a) reacting the cellulosic material in an aqueous slurry comprising a transition metal catalyst and a hypohalite solution; (b) washing the cellulosic material in an alkaline solution; (c) repeating step (a), and (d) recovering a CNC fraction (pg. 2, para. 0016). Mcalpine teaches in one example the method comprises treatment of treated hemp pulp (i.e. purified cellulose) with a pretreatment comprising soaking in reverse osmosis water, then adding iron sulfate or copper sulfate catalyst, adding sodium hypochlorite solution at 75 °C (pg. 5, para. 0062, Table 3). Mcalpine teaches in this example, 5.65 mol/kg of biomass was used (pg. 5, para. 0063). The ratio of copper catalyst to biomass is 0.66 mg/g (pg. 5, para. 0065, table 4). Mcalpine teaches after the first redox reaction, the biomass has substantially broken down compared to the start, and the suspension is filtered giving a resulting cake (pg. 5, para. 0066-0067). Mcalpine removing oxidation products of the first redox reaction may result in a more complete and better quality crystalline cellulose product (pg. 5, para. 0068). The filter cake from the first redox reaction was resuspended in 1 L of water and NaOH was added to a pH of 12.0-12.3 and then stirred at 85 °C, then being filtered and washed to form a filter cake (i.e. an aqueous slurry, pg. 5, para. 0068). The filter cake, being a biomass from hemp pulp is interpreted to be encompassed by the phrase "a purified cellulose". McAlpine similarly teaches wood pulp comprising 96% and 91% cellulose can be used in the process (pg. 9, para. 0088). Mcalpine teaches following the alkaline treatment, a second redox reaction similar to the conditions set out in the first redox is utilized, with copper sulfate, and NaClO at 75 °C (pg. 6, para. 0069, table 5). McAlpine teaches wherein the filter cake from alkaline extraction is suspended in water and NaClO is added (i.e. pretreatment step comprises dispersing the cellulose in an aqueous slurry and hypohalite is added to the slurry following pretreatment, pg. 6, para. 0069). The method results in CNC particles that are uniform in size and the average particle size is 212 nm (pg. 6, para. 0073). As shown in figures 6-7 of the drawings the particle size graphs exhibit a singular peak (drawings sheets 8-9, figures 6-7). Mcalpine teaches the method using a hypohalite salt and transition metal catalyst produces a preferably substantially pure CNC, wherein "substantially pure" means that less than 50% of the resulting crystalline cellulose is not CNC (pg. 3, para. 0040). According to the instant specification, use of a transition metal catalyst increased the speed of the reaction, decreases yield, and improves purity (pg. 20, para. 0060).
Taken together it would have been prima facie obvious to a person of ordinary skill in the art to implement additional alkaline wash and redox reaction conditions and source cellulose from wood pulp (91% cellulose) into the copending method as taught by McAlpine and arrive at the claimed method of producing CNCs. A person of ordinary skill in the art would have had the motivation to do so with a reasonable expectation of success as these conditions are known in the art to be successful in preparing a pure CNC for use in cement mixes.
Wherein the general method is rendered obvious in view of McAlpine, the CNC produced necessarily possesses the claimed particle size with a single peak of size distribution as instantly claimed as a result of practicing the method, absent evidence to the contrary.
Given that the copending claims and Mcalpine teach adding an alkaline solution comprising NaOH, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation (See MPEP 2144.05 (II)).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant’s arguments filed September 2, 2026 with respect to the claims have been fully considered but they are not persuasive.
On page 9 of Applicant’s response, Applicant argues the filter cake from the first redox reaction in McAlpine is subject to an alkaline suspension using NaOH and is applied prior to the second redox reaction, and therefore constitutes a pretreatment step, but claim 1 has been amended to clarify that the pretreatment step specifically occurs prior to any oxidation of the purified cellulose (para. 2). Applicant argues in McAlpine, the alkaline suspension is applied as an intermediary step, after the first redox reaction.
However, although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims (see MPEP 2145 (VI)). The claims recite that the “pretreating occurs before oxidizing of the purified cellulose”, not before “any” oxidation step. The claims do not clearly exclude any other additional steps undertaken by the prior art, so long as a purified cellulose is pretreated and then oxidized. McAlpine teaches an alkaline treatment step of a purified cellulose structurally, prior to an oxidation step, and this anticipates the method of the claim. The filter cake of McAlpine from the first redox reaction is necessarily a purified cellulose. For Example, McAlpine teaches the first redox reaction, the cellulose fraction remains a solid, while lignin and hemicellulose fractions can be separated (i.e. the first redox reaction yields a purified cellulose) (pg. 4, para. 0053). McAlpine teaches that removing oxidation products of the redox reaction may result in a more complete reaction and better quality crystalline cellulose product, which is performed via alkaline treatment (i.e. constitutes a pretreatment step that results in a more complete reaction and better quality crystalline cellulose product (pg. 4, para. 0054).
On page 9 of Applicant’s response, Applicant argues the present specification demonstrates that the alkaline pretreatment provides an unexpected benefit the pretreatment step at an elevated pH, enables a single stage, one pot redox reaction (pg. 9, para. 4). Applicant argues McAlpine is not concerned with providing a single stage, one-pot redox reaction, and consistently emphasizes at least two stages of redox reaction (pg. 9, para. 5). Applicant argues that a successful one-pot CNC production requires alkaline pretreatment sufficient to activate the cellulose materials showing improved CNC formation. Applicant argues that certain biomass samples appeared to provide higher than expected CNC yields with alkaline activation prior to oxidation (pg. 9, para. 6).
However, although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims (see MPEP 2145 (VI)). The claims do not require that the process occur in a single stage or one-pot redox reaction.
On page 10 of Applicant’s response, Applicant argues that the method provides a single, stage one-pot redox reaction, rather than the two stage reaction in McAlpine (para. 1). Applicant attached the declaration of McAlpine, filed September 2, 2026, to demonstrate single stage reaction are not predictable or straightforward modification of known multistage oxidative processes (para. 2). Applicant argues that the present application presents a single stage rather than two stage process, it produces comparable and in some respects superior CNC purity to McAlpine. (paras. 3-4).
However, although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims (see MPEP 2145 (VI)). The claims do not require that the process occur in a single stage or one-pot redox reaction.
On page 11 of Applicant’s response, Applicant argues the 103 rejections are similarly improper for the reasons described above (para. 1).
However, see response to arguments above.
On page 11 of Applicant’s response, Applicant argues the double patenting rejections over US 11,168,151 are overcome because the claimed methods require alkaline pretreatment prior to any redox reaction and further does not claim a two-stage redox reaction (paras. 4-5).
However, see response to arguments above, wherein the claims do not require that the process occur in a single stage or one-pot redox reaction..
On page 11 of Applicant’s response, Applicant argues the double patenting rejections over US 12,528,886 are overcome because it comprises reaction of the cellulose material, followed by an alkaline wash because the claimed methods require alkaline pretreatment prior to any redox reaction (paras. 7-8).
However, see response to arguments above, wherein claims recite that the “pretreating occurs before oxidizing of the purified cellulose”, not before “any” oxidation step. The claims do not clearly exclude any other additional steps undertaken by the prior art, so long as a purified cellulose is pretreated and then oxidized.
On page 12 of Applicant’s response, Applicant argues the double patenting rejections over US 12,017,955 are overcome because it comprises reaction of the cellulose material, followed by an alkaline wash because the claimed methods require alkaline pretreatment prior to any redox reaction (paras. 1-2).
However, see response to arguments above, wherein claims recite that the “pretreating occurs before oxidizing of the purified cellulose”, not before “any” oxidation step. The claims do not clearly exclude any other additional steps undertaken by the prior art, so long as a purified cellulose is pretreated and then oxidized.
On page 12 of Applicant’s response, Applicant argues the double patenting rejections over copending application 18664020 are overcome for the reasons described above (paras. 3-4).
See response to arguments above.
Applicant’s reply is considered to be a bona fide attempt at a response and is being accepted as a complete response. The 35 USC § 102, 103, and double patenting rejections are maintained for reason of record and foregoing discussion.
Conclusion
No claims are allowed in this action.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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/S.L.G./Examiner, Art Unit 1693
/ANDREA OLSON/Primary Examiner, Art Unit 1693
