DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . The submission filed on 06/21/2024 has been entered. Claims 1-31 are pending in this application and are currently under examination.
Priority
This application is a CON of 16/844,142 filed on 04/09/2020, now PAT 12037712, and claims benefit of US PRO 62/832,311 filed on 04/11/2019.
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 119(e) as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 62/832,311, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. Claims 15-17 recite “a single sheet”, “a plurality of sheets”, and/or “a plurality of oil-infused BNC material in the form of strips, strands, or fibers… interconnected or interlaced to another of the strips, strands, fibers”, which are not disclosed or support by the prior-filed Application No. 62/832,311. Thus, the priority date of claims 15-17 is 04/09/2020.
Information Disclosure Statement
The information disclosure statement (IDS) filed on 07/09/2024 has been considered.
Claim Objections
Claims 2, 3, 5, 8, 9, 18, 27, and 28 are objected to because of the following informalities: In claims 2 and 3, insert the missing phase “fiber network” immediately after the recitation “bacterial nanocellulose” (line 2), which is broader than and encompasses the porous body. In claim 5, insert the missing word “bacterial” immediately before the recitation “nanocellulose fibers” (line 1) to be consistent with the preceding claim; and spell out the abbreviated “XRD” (line 2) to “x-ray diffraction (XRD)”. In claims 8 and 9, change the incorrect recitation “oil comprises” (line 1) to “oil is” because the recited weight percentage cannot be open-ended. In claim 18, change the incorrect recitation “and form” (last line) to “and to form” to be consistent with the preceding “to entrap”. In claim 27, change the incorrect recitation “volume ration” (line 1) to “volume ratio”. In claim 28, insert the missing word “further” immediately before the recitation “includes” because “an emulsifier” is not required in the preceding claim 18. Appropriate correction is required.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-17 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a natural phenomenon or a product of nature without significantly more. The 2019 Revised Patent Subject Matter Eligibility Guidance (issued January 7, 2019)” (https://www.govinfo.gov/content/pkg/FR-2019-01-07/pdf/2018-28282.pdf) and “October 2019 Update: Subject Matter Eligibility (issued October 17, 2019)” (https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.pdf), are followed here. The claim is directed to a statutory category, e.g., a composition of matter (Step 1: YES). The claim is then analyzed in Step 2A (Prong one) to determine whether it is directed to any judicial exception. The claims 1-17 recite an oil-infused bacterial nanocellulose (BNC) material comprising bacterial nanocellulose fibers and oil, which are products of nature. Accordingly, the claim is directed to at least one exception (Step 2A, prong one: YES). The claim is then analyzed in Step 2A (Prong two) and is determined that this judicial exception is not integrated into a practical application because there is no indication that mixing them in the recited quantities or physical properties (i.e., a cellulose content in the range of about 15 mg/cm2 to about 40 mg/cm2; a thickness in the range of about 1 mm to about 10 mm; oil is at least 70% or about 70% to about 95% by weight; a tensile strength in the range of about 275 N/cm2 to about 2100 N/cm2; a tensile load at failure value in the range of about 50 N to about 150 N; a stitch pullout failure load in the range of about 5 N to about 40 N; a single or plurality of sheets; interconnected or interlaced to another of the strips, strands, fibers) changes the structure, function, or other properties of the bacterial nanocellulose fibers and oil in any marked way. Instead, the bacterial nanocellulose fiber or oil retains its naturally occurring structure and properties (e.g., antibacterial activity or hydrophobic substance). Thus, the claimed mixture as a whole does not display markedly different characteristics compared to the closest naturally occurring counterpart. Accordingly, the Step 2A (Prong two) is NO. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because prior to applicant’s invention and at the time of filing the application, mixing of bacterial nanocellulose fibers and oil was well-understood, routine and conventional in the field, as evidenced by the references under the 102/103 rejection below. The recitation of specific quantities or physical properties does not affect this analysis, because it was also well-understood, routine and conventional at the time to mix specific weight ratio of bacterial nanocellulose fibers to oil, e.g., to achieve commercially acceptable chemical complex for different purposes. Thus, the mixing of different weight ratio of bacterial nanocellulose fibers to oil, when recited at this high level of generality, does not meaningfully limit the claim, and the claim as a whole does not amount to significantly more than each “product of nature” by itself (Step 2B: NO). The claim does not qualify as eligible subject matter.
Claim Rejections - 35 USC § 102/103
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.
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 1-31 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Karina et al. (Polymers from Renewable Resources, Vol. 3, No. 4, 139-152, 2012, hereinafter referred to as Karina ‘2012) incorporated by Yudianti et al. (Journal of Applied Sciences 8 (1 ): 177-180, 2008, hereinafter referred to as Yudianti ‘2008).
With regard to structural limitations “an (or a textile material comprising a single sheet or a plurality of sheets or strips or fibers of an) oil-infused bacterial nanocellulose (BNC) material (or a thickness of about 1 mm to about 10 mm) comprising: a porous body comprising a (or never-dried; or pure; or fully dehydrated) bacterial nanocellulose fiber network (or having a crystallinity of at least 65% by XRD measurement) defining a plurality of interconnected pores; and, an oil infused within the plurality of pores (or further comprising one or more dyes or sealing agents)” (claims 1-5, 7, and 13-17), and “a method comprising: fermenting (or at a temperature of about 30±2°C; or in a pH of about 4.1 to about 4.6; or for a time period of about 5 days to about 30 days) bacteria to form a porous body of bacterial nanocellulose fibers having a three-dimensional network defining a plurality of interconnected pores (or further purifying the porous body after fermentation); mechanically pressing the porous body; dehydrating the porous body (or using one or more water-miscible organic solvents, wherein the solvent is heated to boiling or the weight to volume ratio of the nanocellulose fibers to the solvent is about 15:1 to about 8:1); and, infusing the porous body with an oil infusion fluid (or heated; or volume ratio of the nanocellulose fibers to the oil infusion fluid is about 15:1 to about 1:1) including an oil (or further including an emulsifier or a water miscible organic solvent; or an oil to emulsifier ratio by volume of about 90:10 to about 10:90; or further comprising dying)” (claims 18-31):
Karina ‘2012 disclosed a bacterial cellulose (BC) impregnated with 0.5-2.5% (w/v) of esterified palm oil (EPO) in acetone water. The scanning electron microscope exhibited that EPO filling up the cellulose fiber and covered the porous cellulose structure provided the thicker and smoother surface. Subjection of EPO into BC gave rise to inconsiderable change in crystallinity and resulted in reduced tensile strength and Young’s modulus but increased the fracture work and elongation at break. EPO expelled water in BC which was indicated by the decline of water absorption capacity. BC gel with around 10-mm thickness and 95% of water content was prepared. The crystallinity index of BC is 82%, which is slightly higher than the crystallinity index (77.08–73.60%) of BC-EPO with 0.5–2.5% EPO. BC is a biomaterial produced from the activity of bacteria such as Acetobacter xylinum (Gluconacetobacter xylinus) in a medium growth containing glucose. BC was first confirmed as pure cellulose in 1886. BC has been used in several applications such as conductive film, paper making, and adsorbent. BC has been reinforced with several various synthetic polymeric materials for the production of composites with acrylic, phenol formaldehyde, and polyethylene oxide. A 5% (v/v) polyvinyl alcohol solution has been either added directly to the BC growth medium or impregnated into BC gel (page 139, Abstract and para. 1; page 141, para. 3; page 147, para. 1; page 140, para. 1 to 2). BC gel with around 10-mm thickness and 95% of water content was prepared using coconut water as the main sources of saccharides containing sucrose, ammonium sulphate, and acetic acid according to a method described elsewhere (reference #27, Yudianti et al.). BC was washed thoroughly by running tap water until its pH was neutral, then boiled with NaOH solution (2% w/v) for 1 h to remove its impurities. EPO was dissolved in acetone and water (50% v/v). A concentration of 0.5-2.5% w/v of EPO solution in acetone-water was prepared by stirring it for 5 min at room temperature. Treatment of the gel-like pellicles of BC with EPO was performed after removal of water by squeezing and freeze dried. A sample of 1 g of freeze dried BC gel was immersed with 100 mL EPO solution in room temperature allowing the EPO molecules to penetrate BC. Around 10% of palm oil and its products are used for non-edible applications (page 141, para. 3 to 4; page 140, para. 3). Yudianti ‘2008 (incorporated here cited by Karina ‘2012) disclosed BC gel produced from fermentation of coconut water by Acetobacter xylinum under static condition and incubated at room temperature for several days to reach 5-6 mm in thickness (page 178, left col., para. 2).
Thus, these teachings of Karina ‘2012 incorporated by Yudianti ‘2008 anticipate Applicant’s claims 1-18, 22, 23, and 28-31, and would also carry and/or achieve the intended properties or results recited in claims 6 and 8-12, and, in an alternative, are obvious to skilled artisan to optimize the generic method of making EPO-impregnated BC for temperature, pH, and a time period of fermentation, for heating the solvent to melt, and for the weight to volume ratio or volume to volume ratio of reagents to obtain proper tensile strength, Young’s modulus, and fracture work and elongation at break, as described above, to arrive claims 19-21, and 24-27.
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 1-31 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-29 of U.S. Patent No. 12,037,712 (Czaja et al., July 16, 2024). Although the claims at issue are not identical, they are not patentably distinct from each other because Pat ‘712 recite “An oil-infused bacterial nanocellulose (BNC) material comprising: a porous body comprising a three-dimensional network of pure, never-dried bacterial nanocellulose fibers, the nanocellulose fiber network defining a plurality of interconnected pores; and, an oil infused within the plurality of pores, wherein the oil by weight is selected from at least 70% of the total weight of the oil-infused BNC material” (claim 1), “A textile material comprising: an oil-infused bacterial nanocellulose (BNC) material, the BNC material comprising a porous body comprising a three-dimensional network of pure, never-dried bacterial nanocellulose fibers, the nanocellulose fiber network defining a plurality of interconnected pores; and, an oil infused within the plurality of pores, wherein the oil by weight is selected from at least 70% of the total weight of the oil-infused BNC material” (claim 12), and “A method of preparing an oil-infused bacterial nanocellulose (BNC) material comprising: fermenting bacteria to form a porous body of bacterial nanocellulose fibers having a three-dimensional network defining a plurality of interconnected pores; mechanically pressing the porous body; dehydrating the porous body; and, infusing the porous body with an oil infusion fluid including an oil so as to entrap the oil in the pores of the porous body and to form an oil-infused BNC material, wherein the oil by weight is selected from at least 70% of the total weight of the oil-infused BNC material” (claim 16), reading on or encompassed by claims 1-3, 8, 14, and 18 of this Application. Claims 2-11, 13-15, and 17-29 of Pat ‘712 further read on claims 4-7, 9-13, 15-17, and 19-31 of this Application, respectively.
Conclusion
No claims are allowed.
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/YIH-HORNG SHIAO/Primary Examiner, Art Unit 1691
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