Detailed Office Action
The communication dated 2/9/2024 has been entered and fully considered.
Claims 1-6 and 8-21 are pending with claims 19-21 withdrawn from consideration.
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 .
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claims 1-6 and 9-17, drawn to a method of making tunicate t-CNC.
Group II, claims 18-21, drawn to a tunicate t-CNC.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Groups I and II lack unity of invention because even though the inventions of these groups require the technical feature of t-CNC, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of BERG, see below.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
During a telephone conversation with Attorney Noel Courage on 5/25/2026 a provisional election was made with traverse to prosecute the invention of Group I, claims 1-6 and 8-17. Affirmation of this election must be made by applicant in replying to this Office action. Claims 18-21 withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Information Disclosure Statement
The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
Allowable Subject Matter
Claims 3 ,4 and 10 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
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.
Claim 1-6 and 8-17 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.
In claim 1 the applicant claims “hot filtering” in lines 7 and 9-10. The term “hot filtering” does not have a specific meaning within the art. Further, if the term “hot” is meant to impart a specific temperature requirement this is relative term. the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. For the purpose of examination the examiner interprets “hot filtering” as “filtering”.
In claim 1 line 6 the applicant claims “then bleaching the deproteinated pulp” but then has multiple steps in the claim that occur after deproteinating and before bleaching (separating and adjusting pH).
Claim 1 recites the limitation "the deproteinated tunic pulp" in line 7. There is insufficient antecedent basis for this limitation in the claim.
Claim 1 recites the limitation "the filtered deproteinated tunic pulp" in line 7. There is insufficient antecedent basis for this limitation in the claim.
The Examiner interprets the claim as follows:
A method for preparing tunicate derived nanocrystalline cellulose (tCNC), comprising:
collecting or providing raw tunicate biomaterial;
fibrillating the tunicate biomaterial to form a crude tunic pulp;
deproteinating the crude tunic pulp under alkaline conditions with heating to solubilize said proteins to form a deproteinated tunic pulp
separating the deproteinated tunic pulp from reaction solution by to form a filtered deproteinated tunic pulp;
adjusting pH of the filtered deproteinated tunic pulp to acid conditions and then bleaching the filtered deproteinated pulp, to produce a solid deproteinated and bleached tunic pulp, optionally with additional washing and
fibrillating the deproteinated and bleached tunic pulp to produce a wet cellulose pulp base material;
and hydrolyzing the wet cellulose pulp base material with a strong acid to produce said t- CNC.
Claims 2-6 and 8-17 depend from claim 1 and are similarly rejected.
Claim 4 recites the limitation "the separated tunic" in line 1. There is insufficient antecedent basis for this limitation in the claim. The Examiner interprets claim 4 to depend from claim 3 which produces the separate tunic pulp
Claim 11 recites the limitation "the acid conditions" in line 1. There is insufficient antecedent basis for this limitation in the claim. The Examiner interprets this as referring to the acid conditions of hydrolysis not bleaching.
Claims 12-14 depend from claim 11 and are similarly rejected.
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, 2, 11-13, 15 and 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by. Preparation of Homogeneous Dispersions of Tunicate Cellulose Whiskers in Organic Solvents by BERG et al., hereinafter BERG, as evidenced by U.S. 2011/0262646 STANCIU et al., hereinafter STANCIU.
As for claim 1, BERG provides raw material tunicates (providing raw tunicate biomaterial; [pg. 1352 col. 2 Materials]). BERG discloses treating tunicates in alkali and agitating (fibrillating the tunicate biomaterial to form a crude tunic pulp [pg. 1352 col. 2 Materials; mechanical agitation and scrubbing are fibrillating processes]). BERG discloses a further treatment with alkali which two more cycles of alkali treatment at 80 degrees C (deproteinating the crude tunic pulp under alkaline conditions with heating to solubilize said proteins [pg. 1352 col. 2 Materials]). BERG discloses washing at a neutral pH (separating the deproteinated tunic pulp from reaction solution by hot filtering [pg. 1352 col. 2 Materials – pg. 1352 col. 1 par. 1]). BERG discloses adjusting the pH to acetic conditions with acetic acid and bleaching with hypochlorite (adjusting pH of the filtered deproteinated tunic pulp to acid conditions, to produce a solid deproteinated and bleached tunic pulp; and then bleaching the deproteinated pulp [pg. 1352 col. 1 par. 1]). BERG discloses additional washing/filtering and then fibrillating using a Warring blender (optionally with additional washing and hot filtering; fibrillating the deproteinated and bleached tunic pulp to produce a wet cellulose pulp base material [pg. 1352 col. 1 par. 1]). BERG discloses hydrolysis with sulfuric acid to form t-CNC (and hydrolyzing the wet cellulose pulp base material with a strong acid to produce said t- CNC [pg. 1352 col. 1 par. 1]). The Examiner notes that BERG calls this cellulose nanowiskers, however, they read on t-CNC as evidence by STANCIO who performs the same process on tunicates and calls in CNC [0049].
As for claim 2, BERG discloses gutting the tunicate to remove the internal organs to treat the outer walls [pg. 1352 col. 2 Materials].
As for claims 11-13, BERG discloses hydrolysis with sulfuric acid a strong acid to make CNC from tunicates [pg. 1352 col. 1 par. 1] at a high sulfuric acid concentration [600 ml water and 960 ml 98% sulfuric acid].
As for claims 15 and 16, the Examiner interprets a warring blender as a grinding mill. The blender would also read on a garburator. As BERG treats the deproteinated and bleached tunicate to form pulp in substantially the same way it is the Examiners position that fibers will not be visually distinguishable (explicitly discloses a “fine cellulose pulp”).
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.
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.
Claims 5, 6, and 8 are rejected under 35 U.S.C. 103 as being unpatentable over BERG.
As for claim 5, BERG discloses KOH and a 24- hour treatment time [pg. 1352 col. 2 Materials]. BERG discloses 5% KOH by weight on 500 grams tunicate walls [pg. 1352 col. 2 Materials] or 25 grams KOH in 3 Liters. BERG discloses 80 degrees C which is slightly higher than the claimed range.
A prima facie case of obviousness is established when the claimed range and the prior art range do not overlap but are close enough such that one skilled in the art would have expected them to have the same [or similar] properties.
Peterson, 315 F.3d at 1329, citing Titanium Metals Corp. v. Banner, 778 F.2d at 783.
Furthermore, differences in temperature will not support non-obviousness absent evidence of criticality [MPEP 2144.05 (II)(A)].
Generally, 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."
In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
(Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.);
As for claim 6, BERG discloses 5% KOH by weight on 500 grams tunicate walls [pg. 1352 col. 2 Materials] or 25 grams KOH in 3 Liters. This is equivalent to 25 grams /3,025 grams KOH solution or. 0.83% KOH by wt.%. which is slightly lower than the claimed range.
A prima facie case of obviousness is established when the claimed range and the prior art range do not overlap but are close enough such that one skilled in the art would have expected them to have the same [or similar] properties.
Peterson, 315 F.3d at 1329, citing Titanium Metals Corp. v. Banner, 778 F.2d at 783.
Furthermore, differences in concentration will not support non-obviousness absent evidence of criticality [MPEP 2144.05 (II)(A)].
Generally, 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."
In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
(Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.);
As for claim 8, BERG teaches the features as per above. However, differences in concentration will not support non-obviousness absent evidence of criticality [MPEP 2144.05 (II)(A)].
Claims 5, 6, 8, 14, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over BERG in view of U.S. 2019/0367704 DAHL et al., hereinafter DAHL.
As for claims 5, 6, and 8, BERG discloses alkali treatment at a temperature of 80 degrees C for 24 hours as per above. The Examiner has argued that the temperature and concentrations of the claim are obvious of BERG alone. In the alternative DAHL discloses making CNC from tunicates with an alkali treatment followed by bleaching followed by hydrolysis [0027, Figure 1]. BERG discloses 2% sodium hydroxide and a temperature of 60 to 140 degrees C which overlaps with the instant claimed range. At the time of the invention it would be obvious to apply the known tunicate alkali treatment conditions of DAHL to the tunicate of BERG. At the time of the invention it would be obvious to apply the known techniques of DAHL for alkali treatment of tunicates to the alkali treatments of BERG [MPEP 2143 (I)(D)]. The person of ordinary skill in the art would expect success as both BERG and DAHL discloses alkali treatment of tunicates prior to bleaching and hydrolysis to form t-CNC.
As for claims 14, BERG discloses hydrolysis with sulfuric acid a strong acid to make CNC from tunicates [pg. 1352 col. 1 par. 1] at a high sulfuric acid concentration. BERG does not disclose a lower 1-10% sulfuric acid concentration as claimed. DAHL discloses making CNC from tunicates with an alkali treatment followed by bleaching followed by hydrolysis [0027, Figure 1]. DAHL discloses 2-10% sulfuric acid which falls within the claimed range and would have a pH of less than 3 [0029]. At the time of the invention it would be obvious to apply the known sulfuric acid concentration to form CNC from hydrolysis of cellulose from tunicates by DAHL. The process of BERG is improved by giving the range of sulfuric acid necessary to perform the hydrolysis. The person of ordinary skill in the art would look to use a lower concentration to save money. The person of ordinary skill in the art would expect success as both BERG and DAHL discloses alkali treatment of tunicates prior to bleaching and hydrolysis to form t-CNC.
In addition to the above and as for claim 17, DAHL discloses that after hydrolysis the CNC can be neutralized with thiosulfate, filtered and washed [0048].
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over U.S. 2011/0262646 BERG et al., hereinafter BERG, in view of WO 2015/095641A1 ROWAN et al., hereinafter ROWAN.
As for claim 9, BERG discloses bleaching of the alkali treated tunicate using hypochlorite and acetic acid [pg. 1352 col. 1 par. 1]. BERG discloses specific amounts of hypochlorite and acetic acid but does not disclose the concentrations claim. ROWAN discloses a process of bleaching pulp after alkali treatment and prior to hydrolysis [abstract, 0030]. ROWAN discloses 0.2 to 9% acetic acid which overlaps the claimed range [0030]. ROWAN discloses 0.5 to 4% sodium hypochlorite which is equivalent to an active chlorine of about 0.05 to 3.8% (71/74.4) which is slightly outside the claimed range.
A prima facie case of obviousness is established when the claimed range and the prior art range do not overlap but are close enough such that one skilled in the art would have expected them to have the same [or similar] properties.
Peterson, 315 F.3d at 1329, citing Titanium Metals Corp. v. Banner, 778 F.2d at 783.
Furthermore, differences in concentration will not support non-obviousness absent evidence of criticality [MPEP 2144.05 (II)(A)].
Generally, 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."
In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
(Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.);
At the time of the invention it would be obvious to apply the known sodium hypochlorite and acetic acid concentration for bleaching pulp of ROWAN after alkali treatment prior to hydrolysis for bleaching the pulp of BERG [MPEP 2143 (I)(D)]. The person of ordinary skill in the art would expect success as both BERG discloses bleaching a cellulose pulp acetic acid/sodium hypochlorite.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANTHONY J CALANDRA whose telephone number is (571)270-5124. The examiner can normally be reached Monday-Friday 7:45 AM -4:15 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Abbas Rashid can be reached at (571)270-7457. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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ANTHONY J. CALANDRA
Primary Examiner
Art Unit 1748
/Anthony Calandra/Primary Examiner, Art Unit 1748
Prosecution Insights