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 .
Specification
The disclosure is objected to because of the following informalities: the CROSS-REFERENCE TO RELATED APPLICATIONS section of the Specification does not provide the status of the parent application as an issued patent, i.e., as U.S. Patent No. 12,227,881. Appropriate correction is required.
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.
Claims 1-5 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 U.S. Patent Application Publication No. 2007/0196401 to Naruse et al. (“Naruse”).
With regard to Claims 1, 4, and 5, Naruse discloses a nanofiber compound solutions, emulsions, and gels excellent in homogenous dispersibility and long-term dispersion stability using disarranged nanofibers. See, e.g., Abstract, entire document. Naruse discloses that the nanofibers in the dispersion liquid have a diameter in the range of 1 to 500 nm. Paragraphs [0079] to [0083]. Naruse also discloses that the solid content of the compound solution, emulsion, or gel is preferably in the range of 1% to 5%, by weight. Paragraph [0092]. Naruse discloses that the liquid can be an aqueous system. Paragraph [0151]. Naruse teaches that the thermoplastic polymer used to form the nanofiber can be polyester. Paragraphs [0027], [0029], [0031], [0065], and [0066]. Naruse also discloses that the composition can further include a dispersant. Paragraphs [0151] to [0153]. However, Naruse does not provide measurements for the properties of a dispersion index being 20 or less, as recited in Claim 1, a dispersion stability index being 0.70 or more, as recited in Claim 2, or a thixotropy index being 7.0 or more, as recited in 3. Nonetheless, it is reasonable to presume that the claimed properties are inherent to the material disclosed by Naruse. Support for the presumption is found because Naruse provides overlapping disclosure with respect to the structural limitations in the claims, i.e. ultrafine fibers having a fiber diameter of up to 500 nm present in an aqueous solution in an amount of 1% to 5%, by weight, and because Naruse utilizes similar materials, i.e., polyester nanofibers in the aqueous solution along with a dispersant, and because Naruse emphasizes similar end use properties of the materials, i.e., homogenous dispersibility and long-term stability of the dispersion. The burden is upon the Applicant to show otherwise. The Patent and Trademark Office can require applicants to prove that prior art products do not necessarily or inherently possess characteristics of claimed products where claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes; burden of proof is on applicants where rejection based on inherency under 35 U.S.C. § 102 or on prima facie obviousness under 35 U.S.C. § 103, jointly or alternatively, and Patent and Trademark Office’s inability to manufacture products or to obtain and compare prior art products evidences fairness of this rejection. In re Best, Bolton, and Shaw, 195 USPQ 431 (CCPA 1977). In the alternative, optimization of the dispersion index, dispersion stability index, and thixotropy index would be an obvious modification via the disclosure of Naruse in light of the range of nanofiber concentration used in the liquid, along with the amount of dispersant to control the properties of the dispersant. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456 (CCPA 1955).
Claims 1-3 and 5 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 International Patent Application Publication No. 2017/141779 to Fujihashi et al. (the English equivalent published as U.S. Patent Application Publication No. 2021/0024722 is referenced herein) (“Fujihashi”).
With regard to Claims 1 and 5, Fujihashi discloses a composition of a uniform dispersion comprising cellulose nanofibers. See, e.g., Abstract, entire document. Fujihashi teaches that the composition has excellent dispersibility and stability. Table 5. Fujihashi discloses that the nanofiber has a diameter of up to 100 nm. Paragraph [0077]. Fujihashi also discloses that the nanofibers are present at a solid content concentration of 0.1 to 10%, by weight. Paragraph [0059]. Fujihashi teaches that the nanofibers can be dispersed in an aqueous medium. Paragraphs [0061] and [0062]. Fujihashi discloses that a dispersant can be used in the composition to remove entanglement of the nanofibers. Paragraph [0042]. However, Fujihashi does not provide measurements for the properties of a dispersion index being 20 or less, as recited in Claim 1, a dispersion stability index being 0.70 or more, as recited in Claim 2, or a thixotropy index being 7.0 or more, as recited in 3. Nonetheless, it is reasonable to presume that the claimed properties are inherent to the material disclosed by Fujihashi. Support for the presumption is found because Fujihashi provides overlapping disclosure with respect to the structural limitations in the claims, i.e. ultrafine fibers having a fiber diameter of up to 100 nm present in an aqueous solution in an amount of 0.1% to 10%, by weight, and because Naruse utilizes similar materials, i.e., nanofibers in the aqueous solution along with a dispersant, and because Naruse emphasizes similar end use properties of the materials, i.e., homogenous dispersibility and stability of the dispersion. The burden is upon the Applicant to show otherwise. The Patent and Trademark Office can require applicants to prove that prior art products do not necessarily or inherently possess characteristics of claimed products where claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes; burden of proof is on applicants where rejection based on inherency under 35 U.S.C. § 102 or on prima facie obviousness under 35 U.S.C. § 103, jointly or alternatively, and Patent and Trademark Office’s inability to manufacture products or to obtain and compare prior art products evidences fairness of this rejection. In re Best, Bolton, and Shaw, 195 USPQ 431 (CCPA 1977). In the alternative, optimization of the dispersion index, dispersion stability index, and thixotropy index would be an obvious modification via the disclosure of Fujihashi in light of the range of nanofiber concentration used in the liquid, along with the amount of dispersant to control the properties of the dispersant. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456 (CCPA 1955).
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 1-5 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of U.S. Patent No. 12,227,881 (“the ‘881 Patent”).
Although the claims at issue are not identical, they are not patentably distinct from each other because the ‘881 Patent also claims an ultrafine fiber, that is ultimately dispersed in a liquid, having the same fiber diameter of 100 to 5000 nm, wherein the ultrafine fibers is incorporated into an aqueous medium in the same amount of 0.01 to 10%, by weight, to form a dispersion having a dispersion index measured according to the same method of the same value of 20 or less. While the ‘881 Patent initially had “ultrafine fiber” claims and “fiber dispersion liquid” claims separated into separate inventions via restriction, during the course of prosecution of the ‘881 Patent, amendments to the “ultrafine fiber” claims to recite dispersion of said fibers in a liquid dispersion ultimately changed the classification of those claims, which are similar to those currently recited in this application. As such, even though the present application was technically filed as a divisional application of the parent application, the provisions of 35 U.S.C. 121 are no longer applicable, given the amendments that were made during prosecution of the parent application.
Conclusion
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JEREMY R. PIERCE
Primary Examiner
Art Unit 1789
/JEREMY R PIERCE/Primary Examiner, Art Unit 1789
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