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 .
Claims 1-3, 5-7, 9-10, 14-23, and 25-26 are pending and under examination.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim(s) 1, 5-7, 9-10, 16, 18-20, and 25-26 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wirz (US 2011/0014425).
Regarding claims 1, 5, and 18-19, Wirz discloses a method of manufacturing a composite panel (fiberboard) comprising:
(a) introducing a composite mixture (“fiber mat”) into a press or mold (“one or more press devices” – par. 0029), the composite mixture comprising:
(i) about 4-30% by weight of a binder (5% as in par. 0015 of “resin”) that comprises water (par. 0028) and a particularized plastic (“fibers or fibrous material” and “plastic fibers” – par. 0018) of a size of less than 4 mm (par. 0019 describes 1 mm, 0.1 mm, and 0.2 mm sizes, which are all less than 4 mm);
(ii) about 70-96% by weight of a plurality of substrate (“up to 96 wt% fibers” and “at least 70 wt% fibers” – par. 0013, where the fibers are the “substrate” and are wood fibers – par. 0018-0019); and
(iii) a crosslinking agent (par. 0027);
(b) subjecting the composite mixture to a pressure of about 3000-9000 kPa (3-9 MPa) (par. 0029) and heating the composite mixture to a temperature of 100 C-220 C (par. 0032), and wherein the binder comprises about 20-60% water content (par. 0028) and is in the form of a slurry.
Regarding claims 6-7 and 9, Wirz discloses the subject matter of claim 1, and further discloses that the binder can be plastic fibers of polyethylene, either HDPE or LDPE (par. 0018), which would be of a particle size as outlined above, and would melt at either above or below 130 C.
Regarding claim 10, Wirz discloses the subject matter of claim 1, and these limitations are viewed as the result of producing the steps as recited in claim 1, thus being met by the disclosure above in claim 1 as they describe physical properties of the product resulting from the process as claimed.
Regarding claim 16, Wirz discloses the subject matter of claim 1, and further discloses that the binder has a plastic emulsion of 50% water (par. 0028).
Regarding claim 20, Wirz discloses the subject matter of claim 1, and further discloses that the substrate has a moisture content of less than 10% by weight (after pressing) (par. 0030).
Regarding claim 25, Wirz discloses the subject matter of claim 1, and further discloses that the binder and substrate are placed into a mold of a desired shape (par. 0029).
Regarding claim 26, Wirz discloses the subject matter of claim 1, and further discloses that the board is a fiberboard which would be a particle board or medium density board (par. 0018).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 2-3, 14-15, 17, and 21-23 are rejected under 35 U.S.C. 103 as being unpatentable over Wirz (US 2011/0014425) in view of Dubelsten (US Patent No. 6,821,614) et al., hereinafter Dubelsten, or alternatively, in view of Wold (US Patent No. 5,435,954).
Regarding claims 2, 17, and 21-22, Wirz discloses the subject matter of claims 1/16 above, but does not explicitly disclose that there is a fine/coarse mixture as is required in the claims, or the specific cross-linking agent (as required in claim 17).
However, like Wirz above, Dubelsten discloses a process of producing a composite material from a fiber and a plastic material. Specifically, with respect to the claimed invention, Dubelsten also discloses a method of manufacturing a composite panel comprising: (a) introducing a composite mixture (charge 42) (5:28-5:36; 10:48-10:55) into a press (Figs. 3-6) to form a desired product end shape, the composite mixture comprising: (i) a binder that contains particularized plastic (granulated plastic, or flakes) (6:58-7:24; 15:64-16:26) that can be 3/16 inch (16:20), which is around 4.75 mm or 0.5 inches (15 mm) (16:14); (ii) a “plurality of substrate” (6:19-6:55 – the wood particles are what make up “substrate” and would be wood fiber or wood dust/cellulosic material); and (iii) a crosslinking agent (7:36-8:14 – peroxides are listed as in claim 17); (b) subjecting the composite mixture to pressure of 550 psig (~3.75 MPa) and heating the composite to about 100-220 C (reference uses 250 F = 121.11 C) (19:39-19:46; 27:60-27:63; Example 1) and the particularized plastic would be a plastic emulsion or mixture (7:16). The binder and substrate are in a ratio of 70/30% wood (substrate) to plastic (binder) (17:53-17:56). Dubelsten further discloses the use of a “fine mixture” (wood fines) and a “coarse mixture” (wood flakes) (D, 17:15-17:41) having a 20%/80% large/small flake ratio as in claim 22.
In both Wirz and Dubelsten, one of ordinary skill in the art would have recognized that the wood fibers as configured in Dubelsten (with two distinct fractions making up the total) are a substitutable alternative to that of Wirz above, as in both cases, the fibers act as the “filler” or “substrate” material that is bonded together by a plastic or resin material in the composite. Therefore, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to have specified that the wood fiber material of Wirz above is made up of a mixture of fine and coarse flakes of material as is required in the claims, as a substitution of the fibrous material of Wirz above.
Similarly, Wold discloses a process of making a composite panel with wood and plastic that are both ground into smaller pieces before processing (as in Wold, 6:54-7:37). Wold describes using plastic of a particle size of 1/8 inch (Wold, 8:58-9:21) or less, which would be less than 4 mm as is required in the claims. Wold further describes that the length of the fiber or flake and the type of plastic are dependent upon the material characteristics desired in the final product (Wold, 3:15-3:22).
Thus, Wold recognizes that the size/shape of the fibers is a result-effective variable. It has been held that the optimization of a result-effective variable is within routine skill in the art and supports a prima facie case of obviousness. Accordingly, one of ordinary skill in the art would have found it obvious to have specified that the fibers are configured as specified in Wold (with two distinct fractions of coarse and fine fibers) as is required in the claims, as an optimization of the material characteristics of the product to be obtained.
Regarding claim 3, Wirz/Dubelsten or Wirz/Wold discloses the subject matter of claim 1, and further discloses that the crosslinking agent can be present in a percentage of 3% (Wold, 10:3-10:4).
Regarding claims 14-15, Wirz/Dubelsten or Wirz/Wold discloses the subject matter of claims 1/9, and further discloses that the plastic can be a combination of HDPE and LDPE (Wold, 3:9-3:19) in a blend (see Wold, Example A, Table, columns 17-18).
Regarding claim 23, Wirz/Dubelsten or Wirz/Wold discloses the subject matter of claim 2, and it is inherent that a moisture content of the fine mixture is higher than the coarse mixture, given the same volume of slurry as the fibers would take up a larger portion of the slurry in the coarse mixture at equal volume.
Response to Arguments
Applicant's arguments filed 8/14/2026 have been fully considered but they are not persuasive. Applicant’s arguments will be referred to below in the response.
In response, Examiner first refers to MPEP 2123, which states that patents are relevant as prior art for everything they contain, including non-preferred embodiments. Thus, the fact that Wirz may also describe something in the reference as “preferred” does not support a finding of not teaching or not disclosing an alternative, especially when said alternative also appears in the text. Additionally, the disclosures are not unrelated, but instead, all related to the same product being produced in Wirz that can be produced in different variations, similarly as in the claimed invention that provides for a variety of the range of binder material. Importantly, par. 0015 of Wirz describes an embodiment with “less than 5 wt% resin” but also “a high of about 5 wt% resin” which points to a value of about 5% resin, which clearly falls within the range of 4-30%. This paragraph does not “teach to omit” the resin or binder when read as a whole, taking into consideration the provisions of MPEP 2123. It would also not be considered to “teach away from” the claimed invention in an obviousness analysis as even non-preferred embodiments constitute prior art, which applies even if one is described to be slightly less superior. Additionally, Wirz also describes that the slurry has the same water content as in the claimed invention (par. 0028), which would seem to meet the claim limitation rather than teach away from it.
Also, the term “binder” is similar to “resin” as would have been understood by one of ordinary skill in the art before the effective filing date of the claimed invention and the claim defines “binder” as including a “particularized plastic.” The “fibers” of plastic material as taught in Wirz, would still be considered to meet the limitation regarding “particularized plastic” (see p. 6, Remarks) as plastic fibers are “particles” of plastic. Because claim 1 does not specify what size or shape of plastic is required, this broad disclosure in Wirz is considered to meet the corresponding claim limitation(s) under BRI.
Additionally, regarding claim 5, Wirz, par. 0028 clearly describes a “fiber/liquid slurry” that is formed with “water.” This paragraph is not read in a vacuum, but in view of the entire reference, which provides for the resin (see also ref. claim 1 and par. 0015 above). Also importantly, there is no “discrete binder phase” required in the claim, as the binder is only included in a “mixture” – and does not specify how or in what order the components are mixed. The fact that the binder is incidentally included does not change the fact that it would be inherently present in the disclosure of Wirz.
Furthermore, along the same lines as above, claim 20 does not specify a time where the substrate must have a moisture content of less than 10% by weight – especially when claim 1 does not provide for mixing of the material but only “introducing a composite mixture” – which is much broader language than a hypothetical mixing step where a binder is explicitly mixed with a substrate, and then with water, etc. or any selected order of adding ingredients. Also, because the BRI of method claim 1 is disclosed in Wirz, claim 10 is considered met since it describes the properties created from performing the steps of claim 1.
Regarding the crosslinking agent, Wirz clearly mentions inclusion of such an element (“crosslinker” – par. 0027) and there is no requirement that the term appears in the same paragraph, when it is understood from this paragraph that the crosslinker would be part of the mixture (which includes the substrate and the binder/water). These are not considered separate embodiments because they are in separate paragraphs of the same reference. Furthermore, there is no claimed amount of crosslinking agent (in claim 1) and so an amount is not considered pertinent to claim 1. MPEP 2121 allows for the examiner to presume that the disclosure is enabling and this limitation is considered very broad in scope. Claim 3 cites a secondary reference for this amount when this is limited in scope. Each claim is addressed separately above – and claim 3 is not subject to an anticipation analysis.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Wirz describes (par. 0028) that the fiberboard can be made using a wet process, a dry process, or a wet/dry process. As such, one of ordinary skill in the art would have seemingly found a dry process (as in Dubelsten/Wold) to have been obvious as well as a wet process/substitutable to one another with a reasonable expectation of success and so the size of the fibers selected would seem to be immaterial to this selection. See MPEP 2143. As such, the argument presented on p. 9 with respect to the distinction between the wet and dry processes is not found persuasive. Accordingly, the rejections are maintained as outlined above.
Conclusion
THIS ACTION IS MADE FINAL. 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 ANDREW D GRAHAM whose telephone number is (469)295-9232. The examiner can normally be reached Monday - Friday 7:30AM-4:00PM (CST).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christina Johnson can be reached at (571) 272-1176. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREW D GRAHAM/Primary Examiner, Art Unit 1742
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