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 .
This office action is in response to applicant’s amendments Claims 1,2,4,6,7,11,14-18,20-26,28 and 29 are pending. Claims 3,5,8-10,12,13,19 and 27 have been cancelled. Claim 1 has been amended. Claims 28 and 29 are new. Claims 15-18 and 20-27 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim.
Claims 1,4,6,7,9,11 and 14 stand rejected under 35 U.S.C. 103 as being unpatentable over Yamauchi (JPH0740311A) for the reasons set forth below.
All other prior art rejections have been withdrawn in view of applicant’s amendments to the claims.
It is noted applicant claims priority to provisional application 63/107133. The provisional application and incorporated journal articles do not contain basis for the concentration ranges or have any claims. The provisional application attempts to incorporate therein non patent and non-patent publication documents or applications (see paragraph 0007). This is not permissible to incorporate by reference based on the MPEP teachings in section 1.57(d) as the concentrations are essential to the invention. Only non-essential material may be incorporated by reference in non-patent publications based on MPEP 1.57 (e). Accordingly, applicant does not have basis for the concentrations in the provisional application and the application claims have a priority date of the filing date of the application which is October 29, 2021. See MPEP 1.57 sections 1.57 (d) and (e) below:
(d) "Essential material" may be incorporated by reference, but only by way of an incorporation by reference to a U.S. patent or U.S. patent application publication, which patent or patent application publication does not itself incorporate such essential material by reference. "Essential material" is material that is necessary to:
(1) Provide a written description of the claimed 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 nearly connected, to make and use the same, and set forth the best mode contemplated by the inventor of carrying out the invention as required by 35 U.S.C. 112(a);
(2) Describe the claimed invention in terms that particularly point out and distinctly claim the invention as required by 35 U.S.C. 112(b); or
(3) Describe the structure, material, or acts that correspond to a claimed means or step for performing a specified function as required by 35 U.S.C. 112(f).
(e) Other material ("Nonessential material") may be incorporated by reference to U.S. patents, U.S. patent application publications, foreign patents, foreign published applications, prior and concurrently filed commonly owned U.S. applications, or non-patent publications. An incorporation by reference by hyperlink or other form of browser executable code is not permitted.
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 1,2,4,6,7,11,14,28 and 29 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cheng (Lightweight and Constructable Magnetic Wood for Electromagnetic Interference Shielding. Adv. Eng. Mater. 2020, 22, 2000257, p1-9. Published June 5, 2020).
Cheng teaches delignified wood uniformly impregnated (page 4/9, left column, last paragraph to right column, first paragraph) with 18.58 wt. % Fe3O4 (about 18% iron oxide, inorganic magnetic material, transition metal salt and pigment; page 6/9, Figure 5(c)) wherein the compositions shows at least about five times enhanced electromagnetic wave attenuation across the X-band 8-12GHz compared to natural wood (page 7/9, Figure 6(c)). Cheng teaches using multiple iron oxide pigments and other organic pigments (page 1/9, right column, last paragraph to page 2/9, left column, first paragraph). Accordingly, the teachings of Cheng are sufficient to anticipate the material limitations of the instant claims.
Claims 1,4,6,7,11,14,28 and 29 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Trey (Controlled Deposition of magnetic particles within the 3-D template of wood: making use of the natural hierarchical structure of wood. RSC Adv. 2014, 4, 35678).
Trey teaches wood uniformly impregnated (page 35679, left column, paragraph 2) with 15-20% Fe3O4 (iron oxide, inorganic magnetic material, transition metal salt and pigment; abstract) and MnFe2O4 and CoFe2O4 (additional pigments) (page 7/9, Figure 6(c)). From 15-20% one of ordinary skill in the art can at once envisage about 18% The word “about” permits some tolerance. At least about 10% was held to be anticipated by a teaching of a content not to exceed about 8%, see In re Ayers, 154 F 2d 182,69 USPQ 109 (CCPA 1946). A pressure limitation of 2-15 pounds per square inch was held to be readable on a reference which taught a pressure of the order of about 15 pounds per square inch, see In re Erickson, 343 F 2d 778, 145 USPQ 207 (CCPA 1965). The same wood treated with the same concentration Fe3O4 would inherently have at least about five times enhanced electromagnetic wave attenuation across the X-band 8-12GHz compared to natural wood. “Products of identical composition cannot have mutually exclusive properties.” 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. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (fed. Cir. 1990). See MPEP 2112.01 II.
Accordingly, the teachings of Trey are sufficient to anticipate the material limitations of the instant claims.
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.
Claims 1,4,6,7,11,14,28 and 29 are rejected under 35 U.S.C. 103 as being unpatentable over Yamauchi (JPH0740311A)
Yamauchi teaches treating wood (paragraph 0013) with inorganic magnetic iron oxide (paragraph 0010,0014,0016) at concentrations of at least 0.1% in the wood (paragraph 0018). Yamauchi teaches the iron compound treated wood provides electric wave shielding and electromagnetic wave absorbing (paragraphs 0005,0020, 0057). Yamauchi teaches uniform distribution of the iron compound in the wood (0037,0039-0040). Yamauchi teaches using combinations of inorganic materials (paragraph 0027) , and the iron oxides Fe2O3 (red), Fe3O4 (iron black) and other iron compounds such as Zn ferrite (yellow-brown), Mg ferrite (Tan), geothite (red), FeOOH(yellow) pigments with different colors (paragraph 0017). Using a second iron compound meets the claimed limitation of one or more additional pigments.
Yamauchi does not teach all the claimed limitations in a single example but one of ordinary skill in the art could arrive at the claimed invention from the selection of the teachings of Yamauchi. Yamaguchi does not specify between about 1% and about 50%, between about 10% and about 25% and about 18% by weight iron oxides.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to treat wood materials with iron oxide compounds at the claimed concentrations and additional pigments in a uniform distribution as Yamauchi teaches this treatment with magnetic iron oxides at concentrations above 0.1% provides wood with electromagnetic wave absorbing properties and wood coloration based on the iron compound chosen. It would have been obvious to one of ordinary skill in the art at the time the invention was made to arrive at the claimed at least about five times enhanced electromagnetic wave attenuation across the X-band 8-12GHz compared to natural wood as Yamauchi teaches treating wood in a uniform manner with similar magnetic iron oxides which provide electromagnetic wave absorbing benefits. Selecting the claimed concentration from the range of at least 0.1% iron oxide on the wood would be expected to provide the same electromagnetic wave attenuation across the X-band as this would be an expected property of the same electromagnetic radiation shielding iron oxide material being applied to the same wood in the same uniform distribution. Further the desired degree of electromagnetic wave attenuation across the X-band could be achieved through routine experimentation based on the amount and distribution of the iron oxide in the wood.
Response to Arguments
Applicant's arguments filed regarding Yamaguchi have been fully considered but they are not persuasive. The examiner argues that at least 0.1% certainly reads on the about 1% of Yamaguchi. Since Yamauchi teaches the same iron compound treated wood provides the same benefits of electric wave shielding and electromagnetic wave absorbing, selecting from the concentration range to provide the desired degree of desired degree of electromagnetic wave attenuation across the X-band would be obvious through routine experimentation. Yamaguchi must be considered for the entire range it teaches, which is any value above 0.1%. Applicant’s range of 1%-50% is very broad. The unexpected results applicant alleges for 18.58% Fe3O4 are not commensurate in scope with the claims as claim 1 much broader for any inorganic material at concentration of 1%-50%. Claim 29 reads on about 18% but again for the broad disclosure of any inorganic material. Accordingly, the rejections are maintained.
Conclusion
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 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMINA S KHAN whose telephone number is (571)272-5573. The examiner can normally be reached Monday-Friday, 9am-5:30pm EST.
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/AMINA S KHAN/Primary Examiner, Art Unit 1761