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, 5-7, and 9-10 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.
Regarding claim 2, the claim is rendered indefinite because the claim stipulates on the “solvent in the chitosan solution,” while requiring that the solvent concentration is between 0.2 and 3.0 volume %. It is unclear how a mixture comprising only between 0.2 and 3.0 volume % of solution is capable of forming a solution, and therefore one having ordinary skill in the art would be unable to determine what compositional limitations are actually required by the claim.
Regarding claims 5-7, the limitations using the term “wherein” render the claims indefinite because it is unclear whether these clauses are included for the purpose of indicating additional process steps or are included to indicate intended use. One having ordinary skill in the art would therefore be unable to determine the intended meaning behind these limitations.
Regarding claims 9-10, the claims are directed towards “application” of the claimed film/solution (tantamount to processes of using), but do not set forth any steps involved in the process of “application.” According to MPEP 2173.05(q), claims that recite a process without setting for any steps involved therein generally raise an issue of indefiniteness.
It is improper to reject a claim based on an obviousness rationale wherein considerable speculation must be employed to determine the scope of a claim (see MPEP 2143.03.I.). In this case, considerable speculation would be required to determine the scope of claims 2, 5-7, and 9-10.
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.
Claims 1, 3, and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Zhou (CN 114958094 A, hereinafter referring to the attached ESPACENET translation) in view of Liu (CN 113718362 A, hereinafter referring to the attached ESPACENET translation).
Regarding claim 1, Zhou teaches an aqueous MXene nanocellulose-based functional ink (p. 2, [n0001]). Zhou further teaches a method of producing the inventive ink, comprising mixing MXene nanosheets with nanocellulose (which may be nanofibers, p. 8, [n0010]), additives (including chitosan at p.8, [n0011]), and water (p. 9, [n0012]). The invention likewise includes a subsequent step of applying the ink to prepare a functional film (pp. 9-10, [n0014]). Zhou teaches that the resulting film has good mechanical strength and is suitable for thermal management applications (pp. 17-18, [n0030]).
Regarding the specifically claimed process steps, which indicate the mixing of the phosphorylated cellulose nanofibrils and chitosan in solution form with each other, followed by the subsequent addition of an MXene solution to prepare a precursor solution, as described above Zhou teaches the mixing of all ingredients together at once. However, selection of any order of mixing is prima facie obvious (see MPEP 2144.04.IV.C.). Therefore, it would have been obvious to one having ordinary skill in the art at the time of filing to mix the ingredients of Zhou in the order as claimed, including separately mixing each of the claimed ingredients with water to form solutions before mixing said solutions together in the same order as claimed.
Zhou differs from claim 1 because it is silent with regard to the use of phosphorylated cellulose nanofibrils.
In the same field of endeavor, Liu teaches flame-retardant regenerated cellulose fibers ([n0001]), which are phosphorylated cellulose fibers (pp. 8-9, [n0011]), and which are specifically indicated as being compatible with MXenes in forming flame-retardant fiber compositions (pp. 10-11, [n0015]-[n0016]). It is prima facie obvious to select a known material based on its art-recognized suitability for its intended purpose (see MPEP 2144.07), and as described above, Zhou contemplates heat resistance in its inventive composition (pp. 17-18, [n0030]). Therefore, it would have been obvious to one having ordinary skill in the art at the time of filing to phosphorylate the nanocellulose within the composition of Zhou, as Liu teaches said phosphorylation as suitable for the formation of flame retardant compositions alongside MXenes.
In so doing, the composition of Zhou as modified by Liu meets all of the claimed limitations.
Regarding claim 3, Zhou teaches that the additives (which include chitosan), cellulose nanofibers, and MXene are blended in mass ratios of 0-10:10-90:10-90 ([n0008]), each of which overlap/encompass their respectively claimed ranges, establishing prima facie cases of obviousness.
Regarding claim 8, Zhou teaches the formation of a film from the inventive composition (pp. 9-10, [n0014]).
Claims 4 is rejected under 35 U.S.C. 103 as being unpatentable over Zhou (CN 114958094 A, hereinafter referring to the attached ESPACENET translation) in view of Liu (CN 113718362 A, hereinafter referring to the attached ESPACENET translation) and further in view of Qin (Carbohydrate Polymers 2006, vol. 63, pp. 367-374).
Regarding claim 4, Kim as modified by Liu teaches all of the limitations of claim 1, as described above. Kim teaches the incorporation of chitosan and teaches an aqueous solution for the inventive ink, but differs from claim 1 because it is silent with regard to the chitosan’s claimed molecular weight and degree of deacetylation characteristics.
In the same field of endeavor, Qin investigates the water-solubility of chitosan and its antimicrobial activity (Abstract), and teaches a series of prepared chitosan samples (p. 369, Table 1). Within these prepared samples, a chitosan having a molecular weight of 1,400 g/mol and a degree of deacetylation of 88%, designated as sample CS6, is specifically indicated as having high solubility in pure water (i.e., water which has not been acidified; see p. 369, 3.1. Preparation of chitosan samples section and p. 367, 1. Introduction section). It is prima facie obvious to choose a material based on its art-recognized suitability for its intended use (See MPEP 2144.07), and Kim specifically teaches the use of chitosan to form a solution (i.e., the chitosan within Kim is soluble in water, e.g., p. 4, [n0003]). It therefore would have been obvious to one having ordinary skill in the art at the time of filing to utilize chitosan having a molecular weight of 1,400 g/mol and a degree of deacetylation of 88% within the composition of Kim as modified, as Qin teaches said chitosan as free soluble in water. The values of 1,400 g/mol and 88% deacetylation fall within their respectively claimed ranges, establishing prima facie cases of obviousness.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHUA CALEB BLEDSOE whose telephone number is (703)756-5376. The examiner can normally be reached Monday-Friday 8:00 a.m. - 5:00 p.m. EST.
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/JOSHUA CALEB BLEDSOE/ Examiner, Art Unit 1762
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