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 the national stage entry of PCT/JP2022/040373, filed 28 Oct 2022; and claims benefit of foreign priority document JAPAN 2021-177388, filed 29 Oct 2021. This foreign priority document is not in English.
Claims 1-12 are pending in the current application and are examined on the merits herein.
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 1-7 and 9-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP’811 (JP 6751811 B2, published 09 Sep 2020, provided by Applicant in IDS filed 14 Jan 2026).
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 examine 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 specific surface area of the solid material (claim 1), 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 I. 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·s 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.
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.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over JP’811 (JP 6751811 B2, published 09 Sep 2020, provided by Applicant in IDS filed 14 Jan 2026) in view of Homma et al. (US 2018/0265597, published 20 Sep 2018, cited in PTO-892).
JP’811 teaches regarding claims 1-7 and 9-12 as above. JP’811 further teaches the redispersion liquid is not limited and suitable solvents include dimethyl sulfoxide (DMSO).
JP’811 does not specifically disclose the fine cellulose fiber-containing solid material comprising 10 to 1000 ppm of dimethyl sulfoxide (claim 8).
Homma et al. teaches a material comprising ultrafine cellulose fibers, having good dispersibility of fine particles in an aqueous medium containing ultrafine cellulose fibers (abstract). Ultrafine cellulose fibers used according to the present invention preferably have an ionic substituent, but are not particularly limited thereto (page 4, paragraph 82). In some embodiments the ionic substituent is a sulfate (paragraph 104 spanning pages 5-6). The material comprising ultrafine cellulose fibers of the present invention may be re-suspended in a solvent to obtain a redispersion product of ultrafine cellulose fiber. The type of solvents used for preparing the material comprising ultrafine cellulose fibers is not particularly limited. Of the exemplified solvents, a mixture of alcohol and water, a mixture of ether and water, and a mixture of DMSO and water are preferred (page 14, paragraphs 222-223). Alternatively, examples of the solvent to be used in the hydration step include organic solvents and mixtures of an organic solvent and water. In the case where the materials comprising ultrafine cellulose fibers of the present invention comprise an alcohol and water, from the viewpoint of cost reduction and suppression of the amount of the alcohol mixed, the mass ratio between the content of the alcohol and the water is preferably 1/5 to 5/1, and more preferably 1/3 to 1/1, but is not especially limited (page 12, paragraph 204-205).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine JP’811 in view of Homma et al. in order to select the fine cellulose fiber redispersed in a mixture of DMSO and water and to select the amount of DMSO through routine optimization. One of ordinary skill in the art would have been motivated to combine JP’811 in view of Homma et al. with a reasonable expectation of success because both JP’811 and Homma et al. are drawn to cellulose fibers having good dispersibility of fine particles in an aqueous medium, encompassing the cellulose fibers substituted with a sulfate group, and teach the solvent to obtain a redispersion product encompasses water and DMSO, and Homma et al. teaches selecting the mixture of water and DMSO, and Homma et al. generally teaches consideration of the viewpoint of cost reduction and suppression of the amount of the non-aqueous solvent mixed, suggesting it would have been routine experimentation to determine the optimal amount of the DMSO used in the mixture of water and DMSO. See also MPEP 2144.05 at II. providing “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)” In this case Homma et al. generally teaches consideration of the viewpoint of cost reduction and suppression of the amount of the non-aqueous solvent mixed, suggesting it would have been routine experimentation to discover the optimum or workable concentrations of the mixture of water and DMSO.
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 1-7 and 9-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of U.S. Patent No. 11,535,682 in view of JP’811 (JP 6751811 B2, published 09 Sep 2020, provided by Applicant in IDS filed 14 Jan 2026).
Reference claims 1-3 of the reference patent are drawn to cellulose nanofibers, which have an average fiber diameter in the range of 1 nm to 500 nm, and which have sulfate ester modified hydroxyl groups on surfaces of the cellulose nanofibers, wherein the cellulose nanofibers have a sulfur content of from 1.3 wt % to 35 wt %. Reference claims 1 and 3 recite the viscosity of an aqueous dispersion of the cellulose nanofibers of 0.3 wt % aqueous dispersion of the cellulose nanofibers, at 25° C., number of revolutions 2.6 rpm, is from 500 mPa·s to 25,000 mPa·s, corresponding to limitations of claims 2 and 4. Reference claims 1 and 2 recite the thixotropy index (2.6 rpm/26 rpm) of the 0.3 wt % aqueous dispersion of the cellulose nanofibers at 25° C. is from 3 to 30, corresponding to limitations of claims 3-4.
Reference claims 1-3 do not specifically disclose a solid material comprising cellulose nanofibers and water, the amount of sulfur of 0.3 mmol/g or more and 3.0 mmol/g or less, a moisture content of 50% by mass or less, a specific surface area of 1 m2/g or more, and the sulfate in the form of a salt with an n-valent cation (claim 1). The specification of the Reference patent discloses the patent utility of the claimed composition includes use in a dispersion thereof or a film formed by using the dispersion (column 9, lines 15-20).
JP’811 teaches regarding claims 1-7 and 9-12 as above.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the Reference claims in view of JP’811 in order to select from within the scope of the reference claims the cellulose fibers having the properties as claimed. One of ordinary skill in the art would have been motivated to combine the Reference claims in view of JP’811 with a reasonable expectation of success because both the Reference claims and JP’811 are drawn to a sulfate ester modified cellulose fiber characterized by the viscosity of an aqueous dispersion of the cellulose nanofibers, and JP’811 provides guidance to select the properties of the cellulose fiber. Regarding claims 10-12, JP’811 provides guidance to select methods of using or preparing the cellulose fiber, and the specification of the Reference claims defines the utility of the claimed cellulose nanofibers.
Regarding the specific surface area of the solid material (claim 1), as detailed above, JP’811 is silent to this property. However, as detailed above, there is reason to believe that selection of the sulfonated fine cellulose fibers having the same chemical structure, average fiber width, amount of sulfur introduced, moisture content, light transmittance, and haze value as claimed would result in the cellulose fibers necessarily having the same properties of specific surface area as claimed.
Claim 8 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of U.S. Patent No. 11,535,682 in view of JP’811 (JP 6751811 B2, published 09 Sep 2020, provided by Applicant in IDS filed 14 Jan 2026) further in view of Lin et al. (US 2019/0367638, published 05 Dec 2019, provided by Applicant in IDS filed 14 Jan 2026).
Reference claims in view of JP’811 teach as above.
Reference claims in view of JP’811 do not specifically disclose the fine cellulose fiber-containing solid material comprising 10 to 1000 ppm of dimethyl sulfoxide (claim 8).
Lin et al. is the pre-grant publication of the application issued as the Reference patent, and qualifies as prior art under 35 U.S.C. 102(a)(1). Lin et al. teaches working examples of making the cellulose nanofibers using DMSO/acetic anhydride/sulfuric acid (page 14, paragraph 205 and table 1 to page 16, paragraph 217). The produced cellulose nanofibers are purified by centrifugation, washing with water and ethanol, centrifuged, and dried (page 14, paragraph 206-207).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the Reference claims in view of JP’811 further in view of Lin et al. in order to select the amount of DMSO in the fine cellulose fiber-containing solid material. One of ordinary skill in the art would have been motivated to combine the Reference claims in view of JP’811 further in view of Lin et al. with a reasonable expectation of success because all of the Reference claims, JP’811, and Lin et al. are drawn to a sulfate ester modified cellulose fiber characterized by the viscosity of an aqueous dispersion of the cellulose nanofibers, and Lin et al. teaches the working examples of making the cellulose nanofibers of the Reference claims using DMSO and steps to purify the product, suggesting it would have been obvious to minimize the amount of DMSO remaining from the process of making the cellulose nanofibers because it is desired to purify the product.
Conclusion
No claim is found to be allowable.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jonathan S Lau whose telephone number is (571)270-3531. The examiner can normally be reached Monday-Friday 9a-5p Eastern.
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/JONATHAN S LAU/ Primary Examiner, Art Unit 1693
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