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 .
Response to Arguments
Applicant’s arguments with respect to the claims have been considered but are moot because the new ground of rejection does not rely on the combination of references applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant has amended the claims to require both cellulose nanofibrils as well as cellulose nanocrystals to be present in the production, removed the bleaching step, and added a thermal treating or digesting step that occurs before the reefing step.
Applicant also argues that the previously cited references fail to teach nanocrystals.
The Examiner finds this argument to be persuasive in view of the amendments and a new reference will be presented below. It is noted that none of the references teach away form the production of cellulose nanocrystals, all three are simply silent to their presence or production through the production steps.
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.
Claims 1-4 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Blum et al, USP 8,999,491 in view of Heiskanen et al, US Patent Publication 2015/0337493 in further view of Salam et al, US Patent Publication 2015/0361618.
Regarding claims 1-4 and 7, Blum teaches a method for making a corrugated paper board by recycling old corrugated containers through a process of repulping the corrugated paper, deinking (reads on cleaning) screened to remove unwanted non cellulose materials, pulped in an alkaline medium in a chemical thermo mechanical pulping method (reads on thermal treating with a solution including water), adding enzymes, and refined to produce the pulp that is then formed into a new corrugated board (column 2 and claim 1).
Blum teaches all of the claimed steps but is silent on the production of cellulose nanofibrils but instead stops at pulp production through a CTMP process and then reuses that pulp to make a new corrugated board. Blum is simply silent on the production of cellulose nanofibrils or nanocrystals, but does teach the same claimed steps of cleaning, thermal treating, and refining.
In the same field of endeavor, Heiskanen teaches a method of making nanofibriliated [0001] cellulose from a CTMP pulp [0056]. They teach that the collection of the NFC is useful as an additive in papermaking as a strength additive for papers and boards. This is preferably in medium consistency as known in the art [0020]. Heiskanen further teaches the use of enzymes for cellulose degradation of the material [0055] at the claimed points. Heiskanen further teaches the use of chemicals to loosen the structure of the lignocellulose (reads on the solvent for lignin [0055]).
It would have been obvious to one of ordinary skill in the art at the time of the invention to utilize the NFC recovery aspect of the refining of the CTMP pulp that is created in the Blum reference for the benefit of gaining all value added components that can be recovered from the same process of recycling OCC as stated in the primary reference.
Heiskanen teaches the act of producing recoverable strength agents form the pulp to be added but simply doesn’t mention the production of cellulose nanocrystals. Just like in the Blum reference all the claimed steps occur but it just fails to address the creation of nanocrystals.
To show that the production of cellulose nanocrystals is conventional in collection of strength agents from recovered pulp, Salam is presented.
Salam teaches that recovering cellulose nanocrystals from a pulp is commonly used as a strengthening agent when added to a pulp made up of OCC [0093-0095].
It would have been obvious to one of ordinary skill in the art at the time of the invention that the creation of nanocrystals in conjunction with the nanofibrils would be utilized as known strength agents when added back to the OCC pulp in a conventional manner.
The references all teach the same active steps to produce the nanofibrils and nanocrystals, and the secondary references show the known advantageous of utilizing these recovered material as known strength agents in the production of new materials.
It would have been obvious to one of ordinary skill in the art at the time of the invention to generate the nanofibrils and nanocrystals in the same refining step of Blum for the known benefit of increasing the strength of the pulp that is then utilized to make new corrugated containers in a conventional manner.
Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Klyosov et al, USP 5,777,086 in view of Heiskanen et al, US Patent Publication 2015/0337493 in further view of Salam et al, US Patent Publication 2015/0361618.
Regarding claims 1-6, Klyosov teaches a method of recovering material from old corrugated cardboard (OCC, see claim 10) through a CTMP process that includes the addition of sodium sulfate solution during the steaming stage (reads on thermally treating with a solution including water). The feedstock is screened, cleaned, processed, and repulped in order to recover the materials. Klyosov further teaches acidifying the process at multiple points for removal of unwanted components (See examples)
In the seam field of endeavor, Heiskanen teaches a method of making nanofibriliated [0001] cellulose from a CTMP pulp [0056]. They teach that the collection of the NFC is useful as an additive in papermaking as a strength additive for papers and boards. This is preferably in medium consistency as known in the art [0020]. Heiskanen further teaches the use of enzymes for cellulose degradation of the material [0055] at the claimed points. Heiskanen further teaches the use of chemicals to loosen the structure of the lignocellulose (reads on the solvent for lignin [0055]).
It would have been obvious to one of ordinary skill in the art at the time of the invention to utilize the NFC recovery aspect of the refining of the CTMP pulp that is created in the Klyosov reference for the benefit of gaining all value added components that can be recovered from the same process of recycling OCC as stated in the primary reference.
Heiskanen teaches the act of producing recoverable strength agents form the pulp to be added but simply doesn’t mention the production of cellulose nanocrystals. Just like in the Klyosov reference all the claimed steps occur but it just fails to address the creation of nanocrystals.
To show that the production of cellulose nanocrystals is conventional in collection of strength agents from recovered pulp, Salam is presented.
Salam teaches that recovering cellulose nanocrystals from a pulp is commonly used as a strengthening agent when added to a pulp made up of OCC [0093-0095].
It would have been obvious to one of ordinary skill in the art at the time of the invention that the creation of nanocrystals in conjunction with the nanofibrils would be utilized as known strength agents when added back to the OCC pulp in a conventional manner.
The references all teach the same active steps to produce the nanofibrils and nanocrystals, and the secondary references show the known advantageous of utilizing these recovered material as known strength agents in the production of new materials.
It would have been obvious to one of ordinary skill in the art at the time of the invention to generate the nanofibrils and nanocrystals in the same refining step of Klyosov for the known benefit of increasing the strength of the pulp that is then utilized to make new corrugated containers in a conventional manner.
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 are rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of U.S. Patent No. 12,018432 and 10,753,042. Although the claims at issue are not identical, they are not patentably distinct from each other because the difference is the presence of optional limitations and the close ended transitional phrase, which would have been obvious in view of the open ended phrase of the instant application
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACOB T MINSKEY whose telephone number is (571)270-7003. The examiner can normally be reached M-F 8-6 PM.
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, Abbas Rashid can be reached at 5712707475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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JACOB T. MINSKEY
Examiner
Art Unit 1741
/JACOB T MINSKEY/Primary Examiner, Art Unit 1748