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United States Patent and Trademark Office 



UNITED STATES DEPARTMENT OF COMMERCE 
United States Patent and Trademark OfDce 
Address: COMMISSIONER FOR PATENTS 
P.O. Box 1450 

Alexandria, Virgittta 2231M4S0 
www.iispto.gov 



APPUCATIONNO. 



FILING DATE 



FIRST NAMED INVENTOR 



ATTORNEY DOCKET NO. CONFIRMATION NO. 



10/687.092 



10/17/2003 



Mariastella Scandola 



023349-00283 



9101 



116 7S90 09/30^2005 

PEARNE & GORDON LLP 
1801 east 9TH street 
SUITE 1200 

CLEVELAND, OH 44114-3108 



EXAMINER 



ASINOVSKY,OLGA 



ART UNIT 



PAPER NUMBER 



1711 



DATE MAILED: 09/30/2005 



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



PTO-90C (Rev. 10/03) 



Office Action Summary 


Application No. 
10/687.092 


Applicant(s) 

SCANDOLA ET AL. 


Exanfiiner 
Olga Asinovsky 


Art Unit 
1711 





- The MAILING DATE 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) OR THIRTY (30) DAYS, 
WHICHEVER IS LONGER. 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 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 ABANDON ED (35 U.S.C. § 1 33). 
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 term adjustment. See 37 CFR 1 .704(b). 

Status 

1 )EI Responsive to communication(s) filed on 14 July 2005 . 
2a)^ This action is FINAL. 2b)D This action is non-final. 

3) n Since this application is in condition for allowance except for formal matters, 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) ^ Claim{s) 12,14,15.17 and 20-31 is/are pending in the application. 

4a) Of the above claim(s) is/are withdrawn from consideration. 

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

6) E1 Claim(s) 12, 14. 15,17 and 20-31 is/are reiected. 
?)□ Claim(s) is/are objected to. 

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

Application Papers 

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

10)S The drawing(s) filed on 17 October 2003 is/are: a)^ 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 conreclion is required if the drawing(s) is objected to. See 37 CFR 1.121(d). 
11 )□ The oath or declaration is objected to by the Examiner. Note the attached Office Action or fonm 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)S All b)n Some * c)^ None of: 

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

2. ^ 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. 



Attachments) 

1 ) □ Notice of References Cited (PTO-892) 4) □ Interview Summary (PTO-41 3) 

2) □ Notice of Draflsperson's Patent Drawing Review (PTO-948) Paper No(s)/MaiI Date. . 

3) □ Infomiation Disclosure Statement(s) (PTO-1449 or PTO/SB/08) 5) □ Notice of Informal Patent Application (PTO-152) 

Paper No(s)/Maii Date . 6) □ Other: . 

U.S. Patent and Trademark Offioe 

PTOL-326 (Rev. 7-05) Office Action Summary Part of Paper No./Mail Date 0923 



Application/Control Number: 10/687,092 Page 2 

Art Unit: 1711 

DETAILED ACTION 
Response to Amendment 
Claim Rejections - 35 USC §112 

1. The following is a quotation of the first paragraph of 35 U.S.C. 112: 

The specification sliall contain a written description of the invention, and of the manner and process of 
making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the 
art to which it pertains, or with which it is most nearty connected, to make and use the same and shall 
set forth the best mode contemplated by the inventor of carrying out his invention. 

2. Claims 12, 14, 15, 17 and 20-31 are rejected under 35 U.S.C. 112. first 
paragraph, as based on a disclosure which is not enabling. Missing functional group Y 
in the formula (I) in each independent claims 12, 14, 15 and 17 is critical or essential to 
the practice of the invention, but not included in the claim(s) is not enabled by the 
disclosure. See In re Mayhew, 527 F.2d 1229, 188 USPQ 356 (CCPA 1976). A 
polyether must have a functional end group. The issue of the Invention is that the 
functionalized polyether is chemically reacted by grafting with natural fibers (for claims 
12 and 15) wherein said natural fibers have salified alcoholate groups (for claims 14 and 
17). In the specification at page 1 1 , lines 18-20 and 24-26 "the polyether chains are 
ready-made before being grafted on the activated fiber." "Preferably the polyether is one 
having an aliphatic or aliphatic/aromatic group at one end and a leaving group at the 
other end." In the present amendment both ends can have an aliphatic or 
aliphatic/aromatic group because "x" can be (-CH2-)n by formula (II) at page 12. The 
functionalized polyether having formula (I) at page 12, line 5, having Y functional leaving 
group is critical in the present invention. Moreover, in the amended claims formula (I) 
the polyether even has no "OH" terminal group. 



Application/Control Number: 10/687,092 



Art Unit: 1711 



Pages 



Claim Objections 

3. Claims 12, 14, 15 and 17 are objected to because of the following infomnalities: 
the "X=" is confusing because "=" could be considered a double bond. Suggested, 
where X is ... Appropriate correction is required. 

Claim Rejections - 35 USC § 102 

4. The following is a quotation of the appropriate paragraphs of 35 U.S.C. 1 02 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. 

5. Claims 12, 15 and 20-27 are rejected under 35 U.S.C. 102(b) as being 
anticipated by GB 1,590,176. 

The present claims do not require that the natural fiber be pretreated. By the 
amendment of July 14, 2005, there is no requirement that a polyether has been 
functionalized. 

Reference has been discussed in the office action mailed on 01/1 1/2005. 
GB'176 discloses modified cellulose hydrate material with an oxyalkylene polymer 
having functional groups, pages 6-13. The oxyalkylene polymer in GB'176 is readable 
in applicants' claims (for example, claims 23 and 25). The cellulose hydrate materials 
having naturally OH functional group on their surface have been reacted with a 
polyethylene glycol or its derivatives, pages 6-13. The polyoxyalkylene at page 6, line 



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

Art Unit: 1711 

5. having "n" in tlie range between 1-120 is within the range specified in the present 
claims. 

Claim Rejections - 35 USC § 103 

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

(a) A patent may not be obtained though the invention is not identically disclosed or described as set 
forth in section 1 02 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, 17 and 28-31 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 ,590,176. 

Lee discloses a cellulose material having hydroxyl groups that are converted to 
sulfonate groups, and than, a graft polymerization of said modified cellulose material 
with polymerizable monomer having at least one vinyl group and functional group(s), 
col. 2, lines 14-30 and col. 8, lines 20-62. 
Lee does not disclose functionalized polyether. 
GB'176 has been discussed in the paragraph 5 above. 

The polyoxyalkylene having functional group "OH" and amino group is readable in the 
present applicants' claims. The present claims do not specify functional groups. In the 
amended claims 14 and 17 in the formula (I) there is no functional group. 
Both references disclose a chemical reaction between the cellulose material and 
functional group of other polymer. It would have been obvious to one of ordinary skill in 



Application/Control Number: 10/687,092 Page 5 

Art Unit: 1711 

the art to modify a grafted cellulose material in Lee invention by employing an 
oxyalkylene polymer having functional group(s) 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 polymer grafted on to a cellulose 
backbone, Lee, col. 2, lines 10-12. 

Conclusion 

8. Applicant's amendment necessitated the new ground(s) of rejection presented in 
this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP 
§ 706.07(a). 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 
extension fee 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 date of this final action. 

Any inquiry concerning this communication or earlier communications from the 
examiner should be directed to Olga Asinovsky whose telephone number is 571-272- 
1066. The examiner can normally be reached on 9:00 to 5:30 pm. 



Application/Control Number: 10/687,092 Page 6 

Art Unit: 1711 

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 571-273-8300. 

Information regarding the status of an application may be obtained from the 
Patent Application Infomiation 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). 

OA 

September 23, 2005 




James J. Seidleck 
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