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 § 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.
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, 3, 4, 9-11, 13-20, and 42 are rejected under 35 U.S.C. 103 as being unpatentable over Cai et al. (Biomacromolecules 2014, 15, 2540-2547) in view of Duong et al. (US Pat. 11,103,845).
Considering Claims 1, 3, 4, 20, and 42: Cai et al. teaches a method of preparing an aerogel, the method comprising freezing a suspension comprising 0.2 weight percent of cellulose fibers (Section 2.2, Figure 3), the fibers having a diameter of several micrometers (pg. 2542); and freeze drying the frozen suspension to form an aerogel (Section 2.2) with a density of 1.8 mg/cm3 (Abstract, Figure 3b). Cai et al. teaches 2.1 mg/cm3 as being within the error bar of 1.8 mg/cm3 (Fig. 3) and thus the density reads on about 2.1 mg/cm3.
Cai et al. is silent towards the length of the fibers. However, Duong et al. teaches that the fiber size controls the strength and mechanical stability of the aerogel (5:10-15). Cai et al. and Duong et al. are analogous art as they are concerned with the same field of endeavor, namely cellulose based aerogels. As such, a person of ordinary skill in the art would consider the fiber diameter and length to be a result effective variable. It would have been obvious to a person of ordinary skill in the art to have optimized the fiber diameter and length of the fibers through routine optimization, and the motivation to do so would have been, as Duong et al. suggests, to control the strength and mechanical stability of the aerogel.
The original specification defines superelastic as referring to an aerogel capable of undergoing large deformation (e.g., a compression strain of at least 50% to 80% strain or greater) and at least substantially, optionally completely recover the deformation during the unloading phase substantially immediately, for example in a time of less than 10, 5, or 3 seconds. The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients, in the claimed amounts, and teaches the composition as being made by a substantially similar process. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. the superelasticity, would necessarily arise from a composition with all the claimed ingredients in the claimed amounts. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Considering Claim 9: Cai et al. teaches preparing the fibers by mechanical defibrillation (Section 2.2).
Considering Claims 10 and 11: Cai et al. teaches the suspension as being an aqueous suspension (Section 2.2).
Considering Claims 13 and 14: Cai et al. teaches suspension as comprising a polyamide-epichlorohydrin crosslinking resin (Section 2.1-2.2).
Considering Claim 15: Cai et al. does not teach the crosslinker as being present in the claimed amount. However, Duong et al. teaches the crosslinking agent as being 1 to 3 weight percent of the cellulose fibers (6:42-48). It would have been obvious to a person of ordinary skill in the art to have used the crosslinking agent in the amount of Duong et al. in the suspension of Cai et al, and the motivation to do so would have been, as Duong et al. suggests, to enhance the strength and structural integrity of the aerogel (5:20-35).
Considering Claims 16 and 17: Cai et al. does not teach the claimed freezing temperature. Duong et al. teaches the freezing temperature as being -20 ºC (7:40-48). It would have been obvious to a person of ordinary skill in the art to have used the freezing temperature of Duong et al. in the process of Cai et al., and the motivation to do so would have been, it is a suitable temperature for freeze drying a cellulose suspension.
Considering Claims 18 and 19: Cai et al. does not teach surface modifying the aerogel. Duong et al. teaches vapor depositing methyltrimethoxysilane on the surface of the aerogel to render the aerogel hydrophobic (13:10-40). It would have been obvious to a person of ordinary skill in the art to have surface treated the aerogel of Cai et al., as in Duong et al., and the motivation to do so would have been to render the aerogel water-resistant.
Claims 5-8 are rejected under 35 U.S.C. 103 as being unpatentable over Cai et al. (Biomacromolecules 2014, 15, 2540-2547) in view of Duong et al. (US Pat. 11,103,845) as applied to claim 1 above, and further in view of Beluns et al. (Industrial Corps and Products 170 (2021) 113780).
Considering Claims 5-8: Cai et al. and Duong et al. collectively teach the process of claim 1 as shown above.
Cai et al. does not teach the cellulose fibers as being derived from a bast fiber. However, Beluns et al. teaches preparing an aerogel material from delignified hemp fibers (pg. 2-3). Cai et al. and Beluns et al. are analogous art as they are concerned with the same field of endeavor, namely aerogel materials. It would have been obvious to a person of ordinary skill in the art to have sourced the fibers of Cai et al. from the hemp fibers of Beluns et al., and the motivation to do so would have been, as Beluns et al. suggests, it is a zero burden resource that is a cheap resource (pg. 1).
Claim 39 is rejected under 35 U.S.C. 103 as being unpatentable over Cai et al. (Biomacromolecules 2014, 15, 2540-2547) in view of Duong et al. (US Pat. 11,103,845) as applied to claim 20 above, and further in view of Ferreira et al. (Green Chem. 2021, 23, 3542).
Considering Claim 39: Cai et al. and Duong et al. collectively teach the aerogel of claim 20 as shown above. Duong et al. teaches using the aerogel as insulation material (3:66-4:3).
Cai et al. does not teach forming apparel with the aerogel. However, Ferreira et al. teaches using a cellulose aerogel in apparel items (Abstract). Cai et al. and Ferreira et al. are analogous art as they are concerned with the same field of endeavor, namely cellulose aerogel materials. It would have been obvious to a person of ordinary skill in the art to have used the aerogel of Cai et al. to form an insulation material in apparel, and the motivation to do so would have been, as Ferreira et al. suggests, it is a known application for cellulose aerogels.
Response to Arguments
Applicant's arguments filed March 2, 2026 have been fully considered but they are not persuasive, because:
A) The applicant’s argument that the fibril bundles of Cai et al. would not read on the claimed microfibers is not persuasive. During patent examination, the pending claims must be "given their broadest reasonable interpretation consistent with the specification." The Federal Circuit’s en banc decision in Phillips v. AWH Corp., 415 F.3d 1303, 1316, 75 USPQ2d 1321, 1329 (Fed. Cir. 2005) expressly recognized that the USPTO employs the "broadest reasonable interpretation" standard. See MPEP § 2111. The broadest reasonable interpretation of microfiber would include the fibril bundles of Cai et al., which are a fiber shaped article with a diameter of several microns.
B) The applicant’s argument that cellulose nanofibers provide the least favorable elastic performance is not persuasive. Any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected. In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986) (differences in sedative and anticholinergic effects between prior art and claimed antidepressants were not unexpected). See MPEP § 716.02. The applicant has not provided an explanation on how the data establishes an unexpected and significant result.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LIAM J HEINCER whose telephone number is (571)270-3297. The examiner can normally be reached M-F 7:30-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LIAM J HEINCER/ Primary Examiner, Art Unit 1767
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