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 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 2-4 and 6-7 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.
Claims 2-4 and 6-7 are confusing as they are drawn to “the fine cellulose powder according to claim 1, wherein an aqueous dispersion…, prepared by dispersing the fine cellulose powder in water…” and then sets forth various properties of the product of claim 1 once dispersed in water. However, these claims merely define what properties the dispersed product has, but does not clearly set forth that the dispersed product is being claimed. The examiner is interpreting the claims as “The fine cellulose powder according to claim 1 in an aqueous dispersion, wherein the aqueous dispersion has a concentration of fine cellulose fiber of 0.3% by mass, prepared by…”.
Claim Rejections - 35 USC § 103
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 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.
Claim(s) 1-14 are rejected under 35 U.S.C. 103 as being unpatentable over JP6751811B2 – as provided by applicants in their IDS filed 1/14/26, in view of US 2021/0155717.
JP'811 discloses a fine cellulose fiber-containing dry solid having excellent redispersibility in water (abstract). The cellulose fibers are refined to an average fiber width of 1 nm to 1000 nm (paragraph 8 and 44). The fine cellulose fiber is a sulfonated fine cellulose fiber in which a sulfo-group is introduced into a part of a hydroxyl group, and the amount of sulfur introduced due to the sulfo group is 0.5 mmol/g or more and 3.0 mmol/g or less (paragraph 8, 16-17, and 41). The solid material has a water content of 50% or less (paragraph 8 and 13). The viscosity characteristics of the sulfonated fine cellulose fiber dispersion can be evaluated by the B-type viscosity of the dispersion. Such viscosity is preferably measured in a fine cellulose fiber dispersion having a solid content concentration of sulfonated fine cellulose fibers of 0.5% by mass and a temperature of 25 °C. under a measurement condition of 12 rpm and 3 minutes. It is 500 mPa.s or more, more preferably 1000 mPa-s, still more preferably 1500 mPa-s, and particularly preferably 2000 mPa⸱s or more (paragraph 55), addressing limitations of claim 2 and 4. JP'811 discloses the working example 1 in which the sulfonated fine cellulose fiber is neutralized by adding an excess amount of sodium hydrogen carbonate, and then thoroughly washed with pure water (paragraphs 72-79), implying that the Zr+ is the alkaline earth metal cation sodium, addressing limitations of claim 5 and 9. The total light transmittance is preferably adjusted so that the haze value of the dispersion liquid is within the above range and the total light transmittance is 90% or more, more preferably 95% or more (paragraph 51), addressing limitations of claim 6. The sulfonated fine cellulose fiber dispersion liquid or redispersion liquid has a haze value of the dispersion is preferably 20% or less, more preferably 15% or less, still more preferably 10% or less (paragraphs 48-49), addressing limitations of claim 7. The redispersion liquid is prepared by dispersing the sulfonated fine cellulose fiber material in a water-soluble solvent such as preferably water (paragraph 67-68), addressing limitations of claim 10. The fine cellulose fiber redispersion liquid can be suitably used as a transparent base material for transparent films (paragraph 118), implicitly addressing limitations of claim 11. The method of producing the sulfonated fine cellulose fiber comprising a drying step (paragraph 58-59), addressing limitations of claim 12.
JP'811 is silent as to the viscosity of the aqueous dispersion in terms of mPa⸱s in the specific conditions measured (claim 2), or the viscosity of the aqueous dispersion in terms of thixotropic index (claim 3-4). MPEP 2112.01 especially at citing In re Best, 562 F.2d 1252, 195 USPQ 430 (C.C.P.A. 1977) and In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) discusses the support of rejections wherein the prior art discloses subject matter which there is reason to believe inherently includes functions that are newly recited or is identical to a product instantly claimed. In such a situation the burden is shifted to the applicants to show the products of the applicant and the prior art are not the same or that the prior art products do not necessarily possess the characteristics of the claimed product. In this case JP'811 discloses the sulfonated fine cellulose fibers having the same chemical structure, average fiber width, amount of sulfur introduced, moisture content, light transmittance, and haze value. Further, JP'811 discloses the sulfonated fine cellulose fibers having the viscosity of the aqueous dispersion in terms of mPa measured in the conditions close to the conditions of the claim. Therefore, there is reason to believe that products disclosed in the prior art inherently and necessarily possess the same characteristics of the claimed product as recited in the claims.
Additionally, JP’811 fails to teach the additional step of pulverizing the solid product produced prior to redispersion as set forth by the present claims and is the manner in which the present powders were formed.
‘717 teaches to form powders of cellulose nanofibers which have greater usability. ‘717 teaches that a powder obtained by drying a dispersion of cellulose nanofibers, pulverizing the resultant product, and classifying to have a certain size range is favorable in workability, hardly forms clumps (aggregate) when added to water (see [0009]). The means of pulverization are dry pulverization (see [0087]) and the process includes drying the cellulose nanofibers, scraping the dried product and pulverized with an impact type mill (dry pulverization) to obtain a dry pulverized product having a water content of 5% by mass, which was then classified using a 30-mesh sieve, thereby obtaining their powder cellulose nanofibers (see example 1, [0111]).
As such, it would have been obvious to one of ordinary skill in the art at the time of the invention to perform one more step on the products of JP’811, and perform the additional dry pulverization step as in ‘717 to arrive at the powder composition claimed herein. One would have been motivated as ‘717 teaches that powdered cellulose nanofiber products have improved workability and decreased chances of clumping in the additional redispersing steps later performed.
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 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of copending Application No. 18/704,516 in view of US 2021/0155717.
The products of ‘516 are seen to be substantially similar to those claimed herein, having the same properties and features, except ‘516 is drawn to a fine cellulose fiber solid material and the present application is drawn to a fine cellulose fiber powder.
The present application and ‘516 are seen to embrace the same fine cellulose fibers, wherein the present powders are prima facia obvious in view of the solid products of ‘516 in view of ‘717. ‘717 teachings are noted above, wherein ‘717 provides rationale and motivation for performing an additional dry pulverization step on a solid product of fine cellulose powders (cellulose nanofibers) to arrive at powder forms. This additional step would provide for the powder forms claimed herein from the solid forms of ‘516. As such, the present powder forms are prima facia obvious over the solid forms of ‘516 in view of ‘717.
This is a provisional nonstatutory double patenting rejection.
Claims 1-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of copending Application No. 19/157,81.
It is noted that the claims of both applications are seen to be substantially overlapping as they are both drawn to a fine cellulose powder comprising a fine cellulose fiber and water (see claim 3-4 of ‘814) and also comprising an ammonium salt (see claim 9 herein) wherein the fibers have the same sizes and properties and sulfate ester groups. A skilled artisan would see the applications are substantially overlapping.
This is a provisional nonstatutory double patenting rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TRAVISS C MCINTOSH III whose telephone number is (571)272-0657. The examiner can normally be reached Monday-Friday 9AM-5:30PM 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, Scarlett Goon can be reached at 571-270-5241. 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.
/TRAVISS C MCINTOSH III/ Primary Examiner, Art Unit 1693
Prosecution Insights