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 § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 15-16 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 15 is rendered indefinite because of the term “type”. The addition of the word “type” to an otherwise definite expression [e.g. filament] extends the scope of the expression so as to render the claim indefinite. See MPEP 2173.05(b).
Claim 16 is rendered indefinite because the claim depends upon itself. For purposes of examination, Examiner is interpreting the claim to depend on claim 13.
Claim Rejections - 35 USC § 102
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.
Claims 1-5 and 17-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Oh et al., KR 20200073189.
Regarding claims 1-2, 5 and 17-18, Oh discloses a boron nitride nanosheet-cellulosic nanofiber composite film [0032]. Paragraph 0046 discloses that the boron nitride nanosheet is exfoliated. Paragraph 0018 discloses that the weight ratio of boron nitride nanosheets and cellulose nanofibers ranges from 0.1:99.9 to 10:90 [see also paragraph 0037]. Paragraph 0048 discloses that boron nitride nanosheet has a thickness ranging from 1 to 30 nm.
Regarding claim 3, it is disclosed in paragraph 0049 that the cellulose nanofibers have a width ranging from 1 to 50 nm [diameter].
Regarding claim 4, paragraph 0049 discloses that the length of the cellulose nanofibers range from 5 to 50 µm.
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 1-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 and 8-18 of U.S. Patent No. 12,264,416. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in both the present application and the patented reference recite
A composition comprising: a boron nitride nanomaterial and a cellulose nanomaterial, wherein: wherein the boron nitride nanomaterial comprises exfoliated boron nitride; wherein the exfoliated boron nitride nanomaterial comprises boron nitride nanosheets; wherein the cellulose nanomaterial comprises cellulose nanofibers, cellulose nanocrystals, or combinations thereof; and wherein the boron nitride nanomaterial and the cellulose nanomaterial are present in a weight ratio of from about 10:1 to about 1:10 as recited in present claim 1 and patented claim 1.
The claims in both the present application and the patented reference recite wherein the boron nitride nanosheets have an average thickness of from about 5 nm to about 15 nm as recited in present claim 2 and patented claim 2.
The claims in both the present application and the patented reference recite wherein the cellulose nanomaterial comprises cellulose nanofibers having an average diameter of less than about 500 nm as per present claim 3 and patented claim 3.
The claims in both the present application and the patented reference recite wherein the cellulose nanomaterial comprises cellulose nanocrystals having an average particle size of less than about 500 nm in the longest dimension as per present claim 4 and patented claim 4.
The claims in both the present application and the patented reference recite wherein the boron nitride nanomaterial and the cellulose nanomaterial are present in a weight ratio of from about 5:1 to about 1:5 as per instant claim 5 and patented reference claim 5.
The claims in both the present application and the patented reference recite wherein the composition further comprises a component selected from an acid-based coagulant, an electrolyte coagulant, a plasticizer, a lipid, and combinations thereof as per present claim 5 and patented claim 8.
The claims in both the present application and the patented reference recite wherein the plasticizer is an epoxidized soybean oil, castor oil, cardanol, citrate or derivative thereof, succinate or derivative thereof, isosorbide, glycerol, or combinations thereof as per present claim 7 and patented claim 9.
The claims in both the present application and the patented reference recite wherein the acid-based coagulant comprises citric acid as per present claim 8 and patented claim 10.
The claims in both the present application and the patented reference recite wherein the electrolyte coagulant comprises a cationic polymer as per present claim 9 and patented claim 11.
The claims in both the present application and the patented reference recite wherein the cationic polymer comprises chitosan as per present claim 10 and patented claim 12.
The claims in both the present application and the patented reference recite wherein the lip comprises cottonseed oil, sunflower oil, linseed oil, beeswax, or combinations thereof as per present claim 11 and patented claim 13.
The claims in both the present application and the patented reference recite a filament as per present claim 13 and patented claim 14.
The claims in both the present application and the patented reference recite a yarn comprising the filament as per present claim 15 and patented claim 15.
The claims in both the present application and the patented reference recite an article the filament as per present claim 16 and patented claim 16.
The claims in both the present application and the patented reference recite a film, a sheet, a cast material, or a molded material comprising the composition as per present claim 17 and patented claim 17.
The claims in both the present application and the patented reference recite an article comprising the film, the sheet, the cast material, or the molded material as per instant claim 18 and patented claim 18.
In regards to present claim 12, the patented reference is silent to the plasticizer being present in an amount from about 0.1 wt% to about 50% based on the dry mass of the composition. However, this is an optimizable feature. A plasticizer affects the flexibility of the composition. One of ordinary skill in the art before the effective filing date of the invention to optimize the amount of plasticizer to about 0.1 wt% to about 50% based on the dry mass of the composition for enhanced flexibility of the composition.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CAMIE S THOMPSON whose telephone number is (571)272-1530. The examiner can normally be reached 8:30 am - 5:30 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer Boyd, can be reached at 571-272-7783. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CAMIE S THOMPSON/Primary Examiner, Art Unit 1786
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