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 .
Status of the Application
Claims 1-19 are pending and under current examination.
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 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 of this title, 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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1-19 are rejected under 35 U.S.C. 103 as being unpatentable over Whitehead (US20160220952 A1), Bowes (US 4144190) and SHI (US20180216256 A1) in combination.
Determining the scope and contents of the prior art
Whitehead teaches a method of removing contaminants from any waste stream including animal or plant fat that is contaminated with contaminant, such as organic and inorganic contaminants (encompass metal ion) using polymer modified carrier, with example of polyamine, polyethyleneimine as a polymer and cellulose as carrier with bond such as amide, carbamate, urea etc., for period of contact time with example of 30 minutes and at room temperature or 20C followed by separation of polymer-modified carrier from the stream, wherein the contaminant may be held by ionic bond, covalent bond, hydrophilic interaction etc. (entire application, especially paragraphs 0009, 0010, 0029-0038, 0040-0072 and claims). The cited prior art teaches that carrier material can be in sizes such as nano-particles and of any shape, such as square, polymorphic etc. (encompass nanocrystal) (see paragraph 0032, 0041).
Ascertaining the differences between the prior art and the claims at issue
Whitehead teaches a method of removing contaminants from any waste stream including animal or plant fat that is contaminated with contaminant, such as organic and inorganic using polymer modified carrier, with example of polyamine, polyethyleneimine as a polymer and cellulose as carrier with bond such as amide, carbamate, urea etc., for period of contact time with example of 30 minutes and at room temperature or 20C followed by separation of polymer-modified carrier from the stream, wherein the contaminant may be held by ionic bond, covalent bond, hydrophilic interaction etc. The cited prior art teaches that carrier material can be in sizes such as nano-particles and of any shape, such as square, polymorphic etc. (encompass nanocrystal). However, the cited prior art fails to teach metal as contamination, contact time of 10 minutes or less, concentration of fat or oil, type of fat or oil, starting material for cellulose nanocrystal.
Resolving the level of ordinary skill in the pertinent art
With regards to the difference of metal as contaminant- Whitehead teaches a method of removing contaminants from any waste stream including animal or plant fat that is contaminated with contaminant, such as organic and inorganic using polymer modified carrier, with example of polyamine, polyethyleneimine as a polymer and cellulose as carrier with bond such as amide, carbamate, urea etc., for period of contact time with example of 30 minutes and at room temperature or 20C followed by separation of polymer-modified carrier from the stream, wherein the contaminant may be held by ionic bond, covalent bond, hydrophilic interaction etc. The cited prior art teaches that carrier material can be in sizes such as nano-particles and of any shape, such as square, polymorphic etc. (encompass nanocrystal). Thus, with the guidance provided by the cited prior art, it would have been prima facie obvious to a person of ordinary skill in the art with a reasonable expectation of success that cellulose modified with polyamine, polyethyleneimine maybe useful in adsorbing inorganic contaminants of any nature, including metal ions, from any stream, such as fat and cooking oil, containing such contaminants.
This deficiency is further cured by the teachings of Bowes and SHI.
Bowes teaches a method of removing metal ions, such as Fe, from any waste stream using polymer modified carrier, with example of polyamine, particularly polyethyleneimine modified cellulose as carrier with bonds such as amide, carbamate, urea etc., for period of contact time, such as 10minutes and temperature preferably 20C-70C followed by separation of polyethyleneimine modified cellulose from the stream and washing with water (entire patent, examples and claims).
SHI teaches a method of removing metal ions from any stream using polyamine, particularly polyethyleneimine modified cellulose nanocrystal (CNC) as a carrier with bonds such as amide, carbamate, urea etc., (entire application).
Thus, with the guidance provided by the combination of Whitehead, Bowes and SHI, it would have been prima facie obvious to a person of ordinary skill in the art with a reasonable expectation of success that cellulose modified with polyamine, polyethyleneimine in any shape and form, such CNC maybe useful in adsorbing inorganic contaminants of any nature, especially metal ions, from any stream, such as fat and cooking oil, containing such contaminants.
With regards to the difference of contact time of 10 minutes or less, concentration of fat or oil, type of fat or oil- Whitehead teaches a method of removing contaminants from any waste stream including animal or plant fat that is contaminated with contaminant, such as organic and inorganic using polymer modified carrier, with example of polyamine, polyethyleneimine as a polymer and cellulose as carrier with bond such as amide, carbamate, urea etc., for period of contact time with example of 30 minutes and at room temperature or 20C followed by separation of polymer-modified carrier from the stream, wherein the contaminant may be held by ionic bond, covalent bond, hydrophilic interaction etc. The cited prior art teaches that carrier material can be in sizes such as nano-particles and of any shape, such as square, polymorphic etc. (encompass nanocrystal). Thus, with the guidance provided by the cited prior art, it would have been prima facie obvious to a person of ordinary skill in the art with a reasonable expectation of success that cellulose modified with polyamine, polyethyleneimine maybe useful in adsorbing inorganic contaminants of any nature, including metal ions, from any stream, such as fat and cooking oil of any type, containing such contaminants. Further, it would have been prima facie obvious to a person of ordinary skill in the art with a reasonable expectation of success that the contact time and concentration of fat or oil maybe adjusted depending on the amount of contaminant in the stream and desired quality of the end product.
With regards to the difference of source of cellulose-The cited prior art teaches same cellulose nanocrystal and its use in making polyamine modified cellulose nanocrystal as an adsorbent for metal ions. Thus, with the guidance provided by the cited prior art, it would have been prima facie obvious to a person of ordinary skill in the art with a reasonable expectation of success that cellulose derived from any type of cotton may be useful in making polyamine modified cellulose nanocrystal.
Based on the above established facts, it appears that the combination of teachings of above cited prior art read applicants’ process.
Therefore, all the claimed elements were known in the prior art and one skilled person in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention.
Considering objective evidence present in the application indicating obviousness or nonobviousness
To establish a prima facie case of obviousness, three basic criteria must be met: (1) the prior art reference must teach or suggest all the claim limitations; (2) there must be some suggestion or motivation, either in the references themselves or in the knowledge generally available to one of ordinary skill in the art, to modify the reference or to combine reference teachings; and (3) there must be a reasonable expectation of success; and (MPEP § 2143).
In this case, Whitehead teaches a method of removing contaminants from any waste stream including animal or plant fat that is contaminated with contaminant, such as organic and inorganic using polymer modified carrier, with example of polyamine, polyethyleneimine as a polymer and cellulose as carrier with bond such as amide, carbamate, urea etc., for period of contact time with example of 30 minutes and at room temperature or 20C followed by separation of polymer-modified carrier from the stream, wherein the contaminant may be held by ionic bond, covalent bond, hydrophilic interaction etc. The cited prior art teaches that carrier material can be in sizes such as nano-particles and of any shape, such as square, polymorphic etc. (encompass nanocrystal). Bowes teaches a method of removing metal ions, such as Fe, from any waste stream using polymer modified carrier, with example of polyamine, particularly polyethyleneimine modified cellulose as carrier with bonds such as amide, carbamate, urea etc., for period of contact time and temperature preferably 20C-70C followed by separation of polyethyleneimine modified cellulose from the stream. SHI teaches a method of removing metal ions from any stream using polyamine, particularly polyethyleneimine modified cellulose nanocrystal (CNC) as a carrier with bonds such as amide, carbamate, urea etc.
So, the combination of prior art read applicants claims.
In KSR International Vo. V. Teleflex Inc., 82 USPQ2d (U.S. 2007), the Supreme Court particularly emphasized “the need for caution in granting a patent based on a combination of elements found in the prior art,” (Id. At 1395) and discussed circumstances in which a patent might be determined to be obvious. Importantly, the Supreme Court reaffirmed principles based on its precedent that “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” (Id. At 1395). See MPEP 2143 - Examples of Basic Requirements of a Prima Facie Case of Obviousness [R-9].
In this case at least prong (E) “Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success would apply.
The rationale to support a conclusion that the claim would have been obvious is that “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103.”KSR, 550 U.S. at ___, 82 USPQ2d at 1397. If any of these findings cannot be made, then this rationale cannot be used to support a conclusion that the claim would have been obvious to one of ordinary skill in the art. Further, there is a reasonable expectation of success that cellulose modified with polyamine, polyethyleneimine may be useful in adsorbing inorganic contaminants of any nature, including metal ions, from any stream, such as fat and cooking oil, containing such contaminants and can be made by combination of the above cited prior art.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention by taking advantage of the teaching of the above cited references and to make the instantly claimed process with a reasonable expectation of success.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PANCHAM BAKSHI whose telephone number is (571)270-3463. The examiner can normally be reached M-Thu 7-4.30 EST.
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/PANCHAM BAKSHI/Primary Examiner, Art Unit 1623
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