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United States Patent and Trademark Office 



(;MTEf) 5iTA rtCS DEPaRI MENT OF COMMERCE 
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APPLICATION NO. 


PILING DATE 


FiltST NAMED INVENTOR 


ATTORNEY DOC KET NO. 


CONFIJIMATION NO. 


10/687,092 


10/17/2003 


MariastcUa ScaiidoJa 


023349-00283 


9101 



4372 75W 0L'1I..'2«05 

ARENT fox KJNTNER PLOTKIN & KAHN 
1050 CONNECTICUT AVENUE, N.W. 
SUITE 400 

WASHINGTON, DC 20036 



EXAMINER 



ASINOVSKY.OLOA 



ARTUNiT 



PAPER NUMBER 



1711 

DATE MAILED: 01/1 1/2005 



Please find below and/or attached an Office communication concerning this application or proceeding. 



PTa90C (Rev. 10/03) 



Office Action Summary 


Appiicaiioii NO. 

10/687,092 


Applicant(s) ^"^"'^ 
SCANDOLA ET AL. 


Examiner 

Olga Asinovsky 


Art Unit 

1711 





— The MAILING DA TE of this communication appears on the cover sheet with the correspondence address — 
Period for Reply 



A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 3. MONTH(S) FROM 
THE MAILING DATE OF THIS COMMUNICATION. 

- Extensions of time may be available under the provisions of 37 CFR 1 .136(a). In no event, however, may a reply be timely filed 
after SIX (6) MONTHS from the mailing date of this communication. 

- If the period for reply specified above is less than thirty (30) days, a reply within the statutory minimum of thirty (30) days will be considered timely. 

- If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication. 

- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133). 
Any reply received by the Office later than three months after the mailing date of this communication, even If timely filed, may reduce any 
earned patent tenm adjustment. See 37 CFR 1 .704(b). 

Status 

1 )I3 Responsive to communication(s) filed on 1 7 October 2003 . 
2a)n This action is FINAL. 2b)S Jh\s action is non-final. 

3) 0 Since this application is in condition for allowance except for formal nnatters, prosecution as to the merits is 

closed in accordance with the practice under Ex parte Quayle, 1935 CD. 1 1 , 453 O.G. 213. 

Disposition of Claims 

4) K1 Claim(s) 12,14.15,17 and 19 is/are pending in the application. 

4a) Of the above claim(s) is/are withdrawn from consideration. 

5) 0 Claim(s) is/are allowed. 

6) |EI Claim(s) 12,14,15,17 and 19 is/are rejected. 
?)□ Claim(s) is/are objected to. 

8) n Claim(s) are subject to restriction and/or election requirement. 

Application Papers 

9) D The specification is objected to by the Examiner. 

10) K The drawing(s) filed on 17 October 2003 is/are: a)[3 accepted or b)n objected to by the Examiner. 

Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1 .85(a). 
Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1 .121 (d). 

1 1) 0 The oath or declaration is objected to by the Examiner. Note the attached Office Action or fonn PTO-152. 

Priority under 35 U.S.C. § 119 

12) ^ Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 1 19(a)-(d) or (f). 
a)IEI All b)n Some * c)\J None of: 

1 .□ Certified copies of the priority documents have been received. 

2. H Certified copies of the priority documents have been received in Application No, 09/897.984 . 

3. n Copies of the certified copies of the priority documents have been received in this National Stage 

application from the International Bureau (PCT Rule 17.2(a)). 
* See the attached detailed Office action for a list of the certified copies not received. 



Attachment(s) 

1 ) □ Notice of References Cited (PTO-892) 4) □ Inten/iew Summary (PTO-41 3) 

2) □ Notice of Draftsperson's Patent Drawing Review {PTO-948) Paper No(s)/Mail Date. . 

3) S Information Disclosure Statement(s) (PTO-1449 or PTO/SB/08) 5) □ Notice of Informal Patent Application (PTO-1 52) 

Paper No(s)/Mail Date 10/17/2003 . 6) □ Other: . 



U.S. Patent and Trademark Office 
PTOL-326 (Rev. 1-04) 



Office Action Summary 



Part of Paper No./Mail Date 0109 



Application/Control Number: 1 0/687.092 Page 2 

Art Unit: 1711 

DETAILED ACTION 

Claim Rejections - 35 USC §112 

1. Claims 15, 17 and 19 rejected under 35 U.S.C. 112, second paragraph, as being 
indefinite for failing to particularly point out and distinctly claim the subject matter which 
applicant regards as the invention. 

Claim 15 is redundant claim with respect to claim 12. A broad recitation "a composite 
material comprising a polymer" includes nothing more that a polymer-grafted natural 
fibers, wherein the polymer is a polyether in claim 12. 

Claim 17 is redundant claim with respect to claim 14. A broad recitation "a composite 
material using polymer'' includes nothing more that a polymer-grafted natural 
fibers=product-by-process in claim 14. 

2. Claim 19 provides for the use of a polymer-grafted natural fibers, but, since the 
claim does not set forth any steps involved in the method/process, it is unclear what 
method/process applicant is intending to encompass. A claim is indefinite where it 
merely recites a use without any active, positive steps delimiting how this use is actually 
practiced. 

Claim 19 is rejected under 35 U.S.C. 101 because the claimed recitation of a 
use, without setting forth any steps involved in the process, results in an improper 
definition of a process, i.e., results in a claim which is not a proper process claim under 
35 U.S.C. 1 01 . See for example Ex parte Dunki, 1 53 USPQ 678 (Bd.App. 1967) and 
Clinical Products, Ltd. yj.Brennen 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966). 



Application/Control Number: 10/687,092 Page 3 

Art Unit: 1711 

Claim Rejections - 35 USC § 102 

3. 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 - 

(b) the invention was patented or described In a printed publication in this or a foreign country or in public 
use or on sale in this country, more than one year prior to the date of application for patent in the United 
states. 

4. Claims 12 and 15 are rejected under 35 U.S.C. 102(b) as being anticipated by 
Coleman-Kammula U.S. Patent 4,857,588 or Lawrie et al U.S. Patent 2,109,295. 

5. GB'1 76 discloses a reaction product of cellulose 
Coleman-Kammula discloses cellulose fibrous material pretreated with sodium 
hydroxide solution and than reacted with an organic compound comprising a 
hydrocarbyl chain comprising epoxy group, column 5, claim 1 and column 6. lines 2-3. 
A hydrocarbyl compound having epoxy groups is readable in applicants* claimed 
polyether. The product-by-process in Coleman-Kammula's invention is the analogous 
to a product in the present claims. 

Lawrie discloses a process for treating a cellulose fabric with an alkali solution and an 
alkylene oxide compound of the general formula recited at column 3, line 45. An 
alkylene oxide compound is readable in applicants' claimed polyether. 

Claim Rejections - 35 USC § 103 

6. The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all 
obviousness rejections set forth in this Office action: 



Application/Control Number: 10/687,092 Page 4 

Art Unit: 1711 

(a) A patent may not be obtained though the invention is not identically disclosed or described as set 
forth in section 102 of this title, if the differences between the subject matter sought to be patented and 
the prior art are such that the subject matter as a whole would have been obvious at the time the 
invention was made to a person having ordinary skill in the art to which said subject matter pertains. 
Patentability shall not be negatived by the manner in which the invention was made. 

7. Claims 14 and 17 are rejected under 35 U.S.C. 103(a) as being unpatentable 
over Lee U.S. Patent 3,492,082 in view of GB 1 ,590,1 76. 

8. Lee discloses a cellulose material having hydroxyl groups that are converted to 
sulfonate groups, and than, a graft polymerization with polymerizable monomer having 
at least one vinyl group and functional group(s), column 2, lines 14-30 and column 8, 
lines 20-62. 

9. Lee does not disclose functionalized polyether. 

10. GB'176 discloses modified cellulose hydrate materials with an oxyalkylene 
polymer having functional groups, pages 6-13. The oxyalkylene polymer in GB'176 is 
readable in applicants' claims as being a polyether having functional group(s). 

11. It would have been obvious to one of ordinary skill in the art to modify a grafted 
cellulose material in Lee invention by employing an oxyalkylene polymer as disclosed 
by GB'176 because any additional functionalized polyether for treating a cellulose 
material is expected in Lee invention as being an additional hydroxyl-containing 
polymers grafted on to a cellulose backbone. Lee, column 2, lines 10-12. 

Conclusion 

12. The prior art made of record and not relied upon is considered pertinent to 
applicant's disclosure. 



Application/Control Number: 10/687,092 



Page 5 



Art Unit: 1711 

Any inquiry concerning this communication or earlier communications from the 
examiner should be directed to Olga Asinovsky whose telephone number is 571-272- 
1 066. The examiner can normally be reached on 9:00 to 5:30 pm. 

If attempts to reach the examiner by telephone are unsuccessful, the examiner's 
supervisor, James Seidleck can be reached on 571-272-1078. The fax phone number 
for the organization where this application or proceeding is assigned is 703-872-9306. 

Information regarding the status of an application may be obtained from the 
Patent Application Information Retrieval (PAIR) system. Status information for 
published applications may be obtained from either Private PAIR or Public PAIR. 
Status information for unpublished applications is available through Private PAIR only. 
For more information about the PAIR system, see http://pair-direct.uspto.gov. Should 
you have questions on access to the Private PAIR system, contact the Electronic 
Business Center (EBC) at 866-217-9197 (toll-free). 




Olga Asinovsky 
Examiner 
Art Unit 1711 



January 9, 2005 




James J. ^eldlecfc 
Sipervisory Patent Examirwr 
Technology Center 1700