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 .
Claim Objections
Claims 10-11 and 14 are objected to because of the following informalities:
Claim 10 reads “(a) are the same as or different from each other, and each -OR, -OH, -NH2, -NHR, or - NR2” but should read “(a) are the same as or different from each other, and each is -OR, -OH, -NH2, -NHR, or - NR2”.
Claim 11 reads “(a) are the same as or different from each other, and each a hydroxyl group or an amino group” but should read “(a) are the same as or different from each other, and each is a hydroxyl group or an amino group”.
Claim 14 reads “which is in the form of powder, or pellet” but should read “which is in the form of powder.
Appropriate correction is required.
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 3 and 7 are rejected under 35 U.S.C. 112(b)/2nd par. 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 3 requires “the group represented by the formula (a) is introduced in an amount of 1.5 mol/kg or more”, however it is not clear whether the kg is based on the weight of cellulose, cellulose derivative, or an entire composition (which may contain compounds other than cellulose derivative). For the purpose of applying prior art for this Office Action Claim 3 is interpreted as requiring 1.5 mol/kg of cellulose derivative.
Claim 7 requires “L represents a single bond or an oxygen atom” and accompanies a figure reproduced below:
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When L is taken as an oxygen atom the meaning is clear, the cellulose derivative is linked by an ether. However when L is a single bond it appears that the structure requires a carbon atom that is bonded to a single bond (rather than being bound to an atom) which is further bound to a carbon atom. This sort of structure is not known in the art and the intended meaning cannot be guessed. Therefore for the purpose of applying prior art in this Office Action Claim 7 is interpreted as requiring “L represents an oxygen atom”.
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.
Claim 4 is 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.
Claim 4 requires “A boron adsorbent comprising the cellulose derivative according to claim 1.”. However Claim 1 already requires the cellulose derivative according to Claim 1. Therefore the only difference between Claims 1 and 4 is the preamble, which in this case is considered intended use. MPEP 2111.02.II states “If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction.”. In this case the limitations of the claimed invention are fully set forth in the body of the claim and the intended use of adsorbing boron does not suggest structural limitations, meaning that Claim 4 does not further limit Claim 1. To the extent that claim 4’s composition does not necessarily require any additional components other than claim 1’s composition, claim 4 is rejected under 35 USC 112(d)/4th par. for failing to further limit claim 1, which it refers back to and thus requires all the limitations thereof. Additionally and/or alternatively it is understood that the cellulose derivative of Claim 1 is inherently a boron adsorbent, whether it is used for that purpose or not, and therefore Claim 4 does not further limit Claim 1.
Allowable Subject Matter
Claims 1-2, 5-6, 8-9, and 12-13 are allowed. The closest prior art is given by US 20160215068 A1 Edgar et al. in view of NPL “Functionalization of Regenerated Cellulose Membrane via Surface Initiated Atom Transfer Radical Polymerization for Boron Removal from Aqueous Solution” Wei et al.
Claim 1 requires “A cellulose derivative having a repeating unit represented by the following formula (I-1): wherein Ra is the same as or different from each other, and is a hydroxyl group or a group represented by the following formula (a), provided that at least one of all Ra contained in the cellulose derivative is the group represented by the following formula (a): wherein R1 represents a hydrogen atom or a methyl group; R2 represents a hydrogen atom or a hydrocarbon group optionally having a hydroxyl group; R3 represents a hydrogen atom or a hydrocarbon group; and X1 to X3 are the same as or different from each other, and each represent a group that forms a complex with a hard acid in a HSAB theory.”
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Edgar et al. is similarly directly to cellulose derivatives and discloses cellulose with terminal olefins “In embodiments, the present invention provides a method for the cross-metathesis of polysaccharides with one or more olefin-terminated side chains and cross-metathesized products thereof.” [0014] that may alternatively be reacted with amines “An additional option is to react the double bond introduced in the metathesis reaction, in cases where the metathesis partner is an acrylate derivative and thus the metathesis partner has α,β-unsaturated acid, ester, or amide functionality. Addition of a nucleophile Such as amine or thiol to the B-end of the double bond, called a Michael reaction, eliminates the double bond and introduces, e.g., new amine or sulfide functionality.” [0014]. Because this synthesis mirrors the steps of Claim 6 it is understood that a similar cellulose derivative would be obtained, however Edgar et al. does not teach, motivate, or suggest the amine of formula (3) (see Claim 6). In other words Edgar fails to teach the limitations R2 represents a hydrogen atom or a hydrocarbon group optionally having a hydroxyl group; R3 represents a hydrogen atom or a hydrocarbon group; and X to X3 are the same as or different from each other, and each represent a group that forms a complex with a hard acid in a HSAB theory.
Wei et al. is similarly directly to cellulose derivatives and discloses a regenerated cellulose with the same N-methylglucamine functionality use by the instant invention (See Examples 1-4) for the same effect of boron removal (See Page 6020, Section 2.4 Boron Adsorption). However the structure of the cellulose derivative of Wei et al. (see below) differs from the claimed invention in how the N-methylglucamine functional group is attached to cellulose.
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It would not have been obvious to have used the terminal olefin of Edgar et al. as the reactive group to attach the N-methylglucamine of Wei et al. because Wei et al. does not teach any deficiencies in their grafting of poly(glydicyl methacrylate) that might motivate an alternative synthesis. Furthermore, Edgar et al. does not disclose any useful mechanical properties of the terminal olefin linked amine that would have suggested improved features of the membrane of Wei et al.
Claims 2, 5-6, 8-9, and 12-13 are dependent on Claim 1 and are allowed for similar reasons.
Claims 3 and 7 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claim 4 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(d) set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claims 10-11 and 14 would be allowable if rewritten to overcome the minor informalities objected to above.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHUA MAXWELL SPEER whose telephone number is (703)756-5471. The examiner can normally be reached M-F 9am-5pm EST. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anthony Zimmer can be reached at 571-270-3591. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JOSHUA MAXWELL SPEER/
Examiner
Art Unit 1736
/DANIEL BERNS/Primary Examiner, Art Unit 1736
Prosecution Insights