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 .
This application is a domestic application, filed 24 May 2024; claims benefit as a DIV of 17/218,372, filed 31 March 2021, issued as Patent 12,018,099; and which claims benefit of provisional application 63/002,634, filed 31 March 2020.
Claims 17-32 are pending in the current application and are examined on the merits herein.
Claim Rejections - 35 USC § 112
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 17-32 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 17 at line 11-12 recites “producing a cellulose-containing material comprising the composition with increased cellulose crystal size.” (emphasis added) Claim 17 recites a mixture (line 4) comprising a first composition (line 6) contacted with a second composition (line 8). There is insufficient antecedent basis for the limitation “the composition” in the claim. It is unclear if “the composition” refers to the mixture, the first composition, or the second composition. If “the composition” refers to the second composition it is unclear if the second composition further comprises unspecified cellulose. Further, it is unclear what is required of the cellulose-containing material other than the crystalline cellulose.
Claim 21 at line 1 recites “the cellulose”. Claim 17 recites a cellulose-containing material (line 1), and a mixture (line 4) comprising a first composition comprising cellulose (line 6). There is insufficient antecedent basis for the limitation “the cellulose” in the claim. It is unclear if this “the cellulose” refers to the produced and claimed cellulose-containing material, the cellulose as a component of the mixture, or the cellulose as a component of the first composition. Further, it is unclear if the structural features of “the cellulose” recited in claim 21 are required to be present in the produced and claimed cellulose-containing material or if they are present in the first composition comprising cellulose prior to the coagulation of the mixture meaning that these features may not be required of the produced and claimed cellulose-containing material which has been manipulated as described.
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.
Claims 17-31 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Stanton et al. (International Journal of Biological Macromolecules, 2018, 108, p333-341, provided by Applicant in IDS filed 24 May 2024)
Stanton et al. teaches microcrystalline cellulose and Bombyx mori silk blended biocomposite films were regenerated using various imidazolium-based ionic liquids. The films were characterized to understand the effect of the inter- and intra-molecular interactions upon the morphology and thermal properties. Results show that the type of ionic liquid has strong influence on the structure of silk-cellulose composites that can form either amorphous or semicrystalline structures. The results have demonstrated that there is a direct relationship between the intermolecular interactions in films and the anion structure of the ionic liquids. The topological image provided information to support morphological effects on the varying ionic liquids and X-ray scattering allowed for insight on the role of ionic liquids on the crystallinity and the spacing differences in biocomposite films (page 333, abstract), meeting limitations of claims 21-22. Silk is important in blending the materials as it allows for the creation of new properties that will enhance the poor properties of the pure cellulose, resulting in utilization of scaffolds for tissue and organ engineering and as implants in the medical industry (page 334, left column, paragraph 1), implying that the biocomposite film produced is a membrane scaffold for tissue growth and meeting limitations of claim 18. The biocomposite forms cellulose crystallites after coagulation by contacting the solution in ionic liquid with water (page 339, figure 8 and paragraph spanning left and right columns).
Claims 17-31 are interpreted as drawn to a product-by-process. See MPEP 2113 providing at I. ‘“[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) … Furthermore, “[b]ecause validity is determined based on the requirements of patentability, a patent is invalid if a product made by the process recited in a product-by-process claim is anticipated by or obvious from prior art products, even if those prior art products are made by different processes.” Amgen Inc. v. F. Hoffmann-La Roche Ltd., 580 F.3d 1340, 1370 n. 14, 92 USPQ2d 1289, 1312, n. 14 (Fed. Cir. 2009)’ In this case the product itself has the structure of a cellulose-containing material comprising cellulose having a crystal structure (claim 1). Regarding claim 22, the cellulose-containing material further comprises at least one of a material including silk. For example, while claims 1 and 31 recite the cellulose crystal size increases relative to a starting material, this is a limitation of the process and not the product itself. For example, a cellulose-containing material (1) that was obtained having an original crystal size of X units is the same as a cellulose-containing material (2) which started with a crystal size of X/1.5 units and was converted into a cellulose-containing material having a new crystal size of X units; that is, the cellulose-containing material (1) has the same structure as the product-by-process cellulose-containing material (2), even though it was made by a different process.
For the reasons above the semicrystalline silk-cellulose composites disclosed in Stanton et al. meet the structural limitations of the claimed product, even though they were made by a different process.
Claims 17, 19-21, and 23-31 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Abushammala et al. (Carbohydrate Polymers, 2015, 134, p609-616, provided by Applicant in IDS filed 24 May 2024).
Abushammala et al. teaches the direct extraction of cellulose nanocrystals (CNCs) from wood by 1-ethyl-3-methylimidazolium acetate ([EMIM][OAc]) treatment. (page 609, abstract) TEM of Wood Residue 2 (WR-2 supernatant dispersion evidenced rod-like nanoparticles. The WAXS diffraction pattern for the freeze-dried supernatant exhibits characteristic convoluted peaks of cellulose I. The absence of a diffraction peak at 2θ equal to 12°, revealing that cellulose II microstructure is not significantly present. (page 612, right column, paragraph 1) CrI and CNC widths (heights) are of the same order although slightly smaller to those reported in the literature for CNCs obtained from pulps with sulfuric acid. (page 612, right column, paragraph 2)
Claims 17, 19-21, and 23-31 are interpreted as drawn to a product-by-process. See discussion of MPEP 2113 above as applied to the claimed invention and the structure of the product so claimed.
For the reasons above the cellulose nanocrystals disclosed in Abushammala et al. meet the structural limitations of the claimed product, even though they were made by a different process.
Claims 17, 19-21, and 23-32 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Liu et al. (Carbohydrate Polymers, 2015, 117, p99-105, cited in PTO-892).
Liu et al. teaches regenerated cellulose was prepared from ionic liquid 1-butyl-3-methylimidazolium acetate ([Bmim]Ac) solution using anti-solvent compressed CO2. Other anti-solvents like water, ethanol and acetonitrile were also employed to regenerate cellulose to provide comparisons. The results show that the crystallinity of cellulose decreases during the dissolution and regeneration process and a crystal transformation of cellulose I to cellulose II was verified (page 99, abstract). Among the regenerated samples, cellulose regenerated using water as an anti-solvent has an XRD peak corresponding to (110) crystallographic planes of cellulose II and a relatively higher crystallinity than those by other anti-solvents (page 103, right column, paragraph 2), meeting limitations of claim 32.
Claims 17, 19-21, and 23-33 are interpreted as drawn to a product-by-process. See discussion of MPEP 2113 above as applied to the claimed invention and the structure of the product so claimed.
For the reasons above the regenerated cellulose having the crystal structure of cellulose II disclosed in Liu et al. meet the structural limitations of the claimed product, even though they were made by a different process.
Conclusion
No claim is found to be allowable.
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/JONATHAN S LAU/ Primary Examiner, Art Unit 1693