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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 10/15/2025 has been entered.
Response to Amendment
This office action is in response to the RCE filed on 10/15/2025 and the amendment filed on 03/05/2026.
Claims 20-21, 23-25, 27-36 and 39-43 are presently pending and under examination; claims 1-19, 22, 26 and 37-38 are canceled; claims 20 and 43 are amended.
The objection to claim 43 is withdrawn in light of the amendments to the claims.
The 35 U.S.C. 102 rejection of claims 20-21, 24, 29-33, 35 and 40-42 over MERKLEY and the 35 U.S.C. 103 rejections of claims 25, 27-28, 36 and 39 over MERKLEY, claim 23 over MERKLEY in view of TB, claim 34 over MERKLEY in view of DEFORD and claim 43 over MERKLEY in view of FRIBERG are maintained.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 07/24/2025 was filed after the mailing date of the final action on 05/15/2025. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 20-21, 24, 29-33, 35 and 40-42 are rejected under 35 U.S.C. 102(a)(1) and/or (a)(2) as being anticipated by Merkley, et al. (U.S. Pub. No. 2004/0145078-A1) (hereinafter, “MERKLEY”; IDS cited reference by Applicant), with evidence from Stanley, “A Close Look at Portland Cement”, <https://synergist.aiha.org/201802-close-look-at-portland-cement> (hereinafter, “STANLEY”) as to the rejection of claim 24, and with evidence from HSA Silica Fume, “Properties of cement compounds and Silica content in cement”, <https://microsilica-fume.com/properties-cement-compounds-silica-content-cement.html> (hereinafter, “HSA”) as to the rejection of claim 32.
Regarding claim 20, MERKLEY teaches a method for generating a composite material (see MERKLEY generally at Abstract), comprising:
(a) providing (1) a cellulosic material characterized by (i) at least a portion of the cellulosic material is delignified (see MERKLEY at paragraph [0061]; MERKLEY teaches that the method comprises providing cellulose fibers with partial or complete removal of lignin components),
(ii) at least a portion of crystal structure of the cellulosic material is maintained (see MERKLEY at paragraph [0061], teaching that the fibers are prepared via the Kraft process, which is a chemical pulping method that maintains at least a portion of cellulose crystal structure, as discussed in Applicant’s specification at paragraph [0127]),
(iii) the cellulosic material comprises a plurality of pores (see MERKLEY at paragraphs [0017], [0054] and [0090], teaching that cellulose fibers comprise pores) and
(iv) the cellulosic material is hygroscopic (see MERKLEY at paragraphs [0035] and [0060], teaching providing hydrophilic cellulose fibers, e.g., kenaf (which is a bast fiber) or wood fibers, which are hygroscopic cellulosic materials of the present invention; see, e.g., present claim 33), and
(2) a binder material comprising lime, wherein the lime comprises calcium oxide or calcium hydroxide (see MERKLEY at paragraphs [0010] and [0057]; MERKLEY teaches that the cementitious binder may be lime and/or Portland cement (which contains calcium oxide); lime is made of calcium oxide and/or calcium hydroxide); and
(b) mixing the cellulosic material and the binder material to generate the composite material (see MERKLEY at paragraph [0035]; MERKLEY teaches mixing the cellulose fibers with the cementitious binder to form a fiber reinforced composite building material).
Regarding claim 21, MERKLEY teaches a method according to claim 20, wherein the cellulosic material is at least partially dried by heat (see MERKLEY at paragraph [0114], [0117] and [0122]-[0123]; MERKLEY teaches drying the cellulose fibers, e.g., in an oven).
Regarding claim 24, MERKLEY teaches a method according to claim 20, wherein the binder material further comprises silica (see MERKLEY at paragraph [0057]; MERKLEY teaches that the cementitious binder can comprise Portland cement, which comprises silica, as evidenced by STANLEY; see STANLEY at Title and pg. 2-3).
Regarding claim 29, MERKLEY teaches a method according to claim 20, further comprising exposing a mixture comprising the cellulosic material and the binder to an external stimulus to transform the binder material into a cementitious material (see MERKLEY at paragraphs [0028]-[0030], [0053], [0159] and [0191], Table 3; MERKLEY teaches exposing the mixture to various external stimuli including autoclave curing (i.e., curing in a heated pressure vessel), hydration or carbonation to form a cementitious material).
Regarding claim 30, MERKLEY teaches a method according to claim 29, wherein the external stimulus comprises one or more members selected from the group consisting of carbonation, pressure, and heat (see MERKLEY at paragraphs [0028]-[0030] and [0191], Table 3; MERKLEY teaches exposing the mixture to various autoclave curing (i.e., pressure and heat) or carbonation to form a cementitious material).
Regarding claim 31, MERKLEY teaches a method according to claim 29, wherein the external stimulus comprises hydration (see MERKLEY at paragraphs [0053] and [0159]; MERKLEY teaches hydrating the mixture to form a cementitious material).
Regarding claim 32, MERKLEY teaches a method according to claim 29, wherein the cementitious material comprises silicate (see MERKLEY at paragraphs [0053], [0057] and [0159]; MERKLEY teaches that the binder material which forms the cementitious material comprises Portland cement, which comprises silicate in the form of calcium silicates (or, calcium silicate hydrates when exposed to the external stimulus of hydration), as evidenced by HSA; see HSA at pg. 1-3).
Regarding claim 33, MERKLEY teaches a method according to claim 20, wherein the cellulosic material comprises one or more members selected from the group consisting of a bast fiber and wood (see MERKLEY at paragraph [0060]; MERKLEY teaches that the cellulose fibers may be kenaf (which is a bast fiber) or wood).
Regarding claim 35, MERKLEY teaches a method according to claim 20, wherein the composite material is characterized by having a density between 1 pound per cubic foot (lb/ft3) and about 100 lbs/ft3 (see MERKLEY at paragraphs [0180]-[0181] and Table 2; MERKLEY teaches a composite material (Sample A) having a saturated density of 1.48 g/cm3, or 92.4 lbs/ft3, and an oven dry density of 1.3 g/cm3, or 81.2 lbs/ft3).
Regarding claim 40, MERKLEY teaches a method according to claim 20, wherein the composite material exhibits a biocidal activity against a microorganism (see MERKLEY at paragraphs [0079]-[0082]; MERKLEY teaches that the composite comprises biocides).
Regarding claim 41, MERKLEY teaches a method according to claim 20, wherein the cellulosic material exhibits enhanced shelf-life as compared to a cellulosic material that is not characterized by: (i) at least a portion of the cellulosic material is delignified, (ii) at least a portion of crystal structure of the cellulosic material is maintained, and (iii) the cellulosic material comprises a plurality of pores (see MERKLEY at paragraphs [0017] and [0025]-[0026]; MERKLEY teaches chemically treating the cellulose fibers to impart the fibers with hydrophobicity and/or durability in order to enhance the long-term durability/performance and rot resistance (i.e., shelf-life) of the composite material compared to conventional fiber cement products). MERKLEY additionally teaches subjecting the cellulose fibers to bleaching or pulping pretreatment (see MERKLEY at paragraphs [0107]-[0109]), and Applicant’s specification discusses selective depolymerization pretreatment of the cellulosic materials via bleaching or pulping as treatment methods which enhance the shelf-life as compared to the shelf-life of materials without such pretreatment in paragraphs [0047] and [0049].
Regarding claim 42, MERKLEY teaches a method according to claim 20, wherein at least a portion of a hemicellulose of the cellulosic material is broken down (see MERKLEY at paragraph [0061]; MERKLEY teaches that the chemical pulping treatment of the cellulose fibers breaks down and dissolves lignin, which holds cellulose and hemicellulose together, i.e., the treatment breaks down hemicellulose).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 25, 27-28, 36 and 39 are rejected under 35 U.S.C. 103 as being unpatentable over MERKLEY, with evidence from STS Construction Board®, “Enhancing Insulation with Fibre Cement Boards”, <https://www.sts-board.com/enhancing-insulation-with-fibre-cement-boards/#:~:text=Fiber%20cement%20boards%2C%20sometimes%20called,of%20improving%20insulation%20in%20buildings> (hereinafter, “STS”) as to the rejection of claim 39.
Regarding claim 25, as applied to claim 24 above, MERKLEY teaches a method according to claim 24, wherein a weight ratio of silica (S) and lime (L) overlaps with the claimed range of between about 1:1 and about 1:5 (S:L) (see MERKLEY at paragraphs [0057] and [0063]-[0069]; MERKLEY teaches a mixture comprising, by weight, 20% to 80% silica and 10% to 80% cementitious binder, wherein the cementitious binder can be lime, i.e., a maximum S:L ratio of 0.8:0.1 (i.e., about 1:0.1), and a minimum S:L ratio of 0.2:0.8 (i.e., 1:4)), therefore rendering the claimed range obvious. As set forth in MPEP § 2144.05, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)).
Regarding claim 27, as applied to claim 20 above, MERKLEY teaches a method according to claim 20, wherein a weight of the binder material (BM) is present in an amount overlapping with the claimed range of greater than a weight of the cellulosic material (CM) (see MERKLEY at paragraphs [0063]-[0069]; MERKLEY teaches a mixture comprising by weight, 10% to 80% cementitious binder and 0.5% to 20% cellulose fibers; i.e., MERKLEY discloses a minimum of 10% of BM and 0.5% of CM which would meet the limitation of BM>CM). As set forth in MPEP § 2144.05, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)).
Regarding claim 28, as applied to claim 20 above, MERKLEY teaches a method according to claim 20, wherein a weight ratio of the binder material (BM) to the cellulosic material (CM) overlaps with the claimed range of between about 1:10 and about 30:10 (see MERKLEY at paragraphs [0063]-[0075]; MERKLEY teaches a mixture comprising by weight, 10% to 80% cementitious binder and 0.5% to 20% cellulose fibers, i.e., minimum BM:CM weight ratio of 0.1:0.2 (i.e., 1:2) and a maximum BM:CM weight ratio of 0.8:0.005 (i.e., about 1:0.006)). MERKLEY teaches a range of BM:CM weight ratios between about 1:2 (which, by multiplying each side of the ratio by 10/2, is equal to a ratio of about 5:10) and about 1:0.006, (which, by multiplying each side of the ratio by 10/0.006, is equal to a ratio of about 1,667:10); i.e., a range of between about 5:10 and about 1,667:10, therefore rendering the claimed range obvious. As set forth in MPEP § 2144.05, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)).
Regarding claim 36, as applied to claim 20 above, MERKLEY teaches a method according to claim 20. However, MERKLEY fails to explicitly teach that the composite material is characterized by having a bulk density of at least about 100 lbs/ft3.
MERKLEY teaches an oven dry density (i.e., bulk density) of 1.3 g/cm3, or 81.2 lbs/ft3 (see MERKLEY at paragraphs [0180]-[0181] and Table 2), and further teaches that varying the oven dry density (i.e., bulk density) of the composite material will affect the values of mechanical properties (see MERKLEY at paragraph [0181]). MERKLEY further discloses a method for generating a composite material which is substantially similar to Applicant’s invention, wherein the composite material includes cellulosic fibers and a binder material (see MERKLEY at Abstract and paragraphs [0035], [0057] and [0060]-[0061]). Although there is no disclosure on the composite material being characterized by having a bulk density of at least about 100 lbs/ft3, it has long been an axiom of United States patent law that it is not inventive to discover the optimum or workable ranges of result-effective variables by routine experimentation. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Boesch, 617 F.2d 272, 276 (CCPA 1980) ("[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art."); In re Aller, 220 F.2d 454, 456 (CCPA 1955) ("[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation."). "Only if the 'results of optimizing a variable' are 'unexpectedly good' can a patent be obtained for the claimed critical range." In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting In re Antonie, 559 F.2d 618, 620 (CCPA 1977)), see MPEP 2144.05 (II). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to vary the bulk density of the composite material, including bulk densities of at least about 100 lbs/ft3, in order to optimize the resulting mechanical properties of the composite material as taught by MERKLEY (see MERKLEY at paragraph [0181]).
Regarding claim 39, as applied to claim 20 above, MERKLEY teaches a method according to claim 20. MERKLEY does not explicitly mention acoustic or thermal insulation.
However, MERKLEY teaches a method according to claim 20, forming a composite material having a chemical composition and structural features as recited by claim 20, therefore the composite building material taught by MERKLEY would be expected to be able to perform the intended use of providing acoustic or thermal insulation for a building. Further, MERKLEY explicitly teaches that the fiber cement composite building material can be used as, for example, tile backers (see MERKLEY at paragraph [0198]), which are building materials used to provide both waterproofing and acoustic insulation in buildings, as evidenced by STS (see STS at pg. 4-5, discussing how fiber cement boards, also called tile backers, provide acoustic insulation in buildings). Therefore, one of ordinary skill in the art would have found it obvious that the composite building material taught by MERKLEY is usable as a thermal or acoustic insulator for a building.
Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over MERKLEY in view of Traditional Building, “Hydrated Lime vs Hydraulic Lime”, < https:// www.traditionalbuilding.com/opinions/hydrated-vs-hydraulic-lime>, published online on July 31, 2018 (hereinafter, “TB”).
Regarding claim 23, as applied to claim 20 above, MERKLEY teaches a method according to claim 20, wherein the binder material comprises lime (see MERKLEY at paragraph [0057] teaching lime, which is comprised of calcium oxide and/or calcium hydroxide). However, MERKLEY fails to explicitly mention that the lime comprises both calcium oxide and calcium hydroxide.
TB teaches varieties of lime that are commonly used in building materials (see TB at pg. 1). TB teaches that non-hydraulic limes, such as Type N lime (which comprises both slaked and unslaked lime, i.e., both calcium oxide and calcium hydroxide), set by reabsorbing carbon dioxide from the air (see TB at pg. 4, paragraph 3, pg. 5, paragraph 6 and pg. 6).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the method of MERKLEY by using a commonly known lime such as a non-hydraulic lime, e.g., Type N lime, comprising both calcium oxide and calcium hydroxide as taught by TB as the lime in the method taught by MERKLEY. One of ordinary skill in the art would have been motivated to use Type N lime as it reabsorbs carbon dioxide from the atmosphere thereby providing environmental benefits, as taught by TB (see TB at pg. 4, paragraph 3 and pg. 6). Further, as taught by TB, the use of lime comprising both calcium oxide and calcium hydroxide in building materials is known in the art, and MPEP § 2144.07 states that “The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)”.
Claim 34 is rejected under 35 U.S.C. 103 as being unpatentable over MERKLEY in view of DeFord, et al. (U.S. Pub. No. 2002/0139082-A1) (hereinafter, “DEFORD”).
Regarding claim 34, as applied to claim 20 above, MERKLEY teaches a method according to claim 20, wherein the cellulosic material comprises a bast fiber (see MERKLEY at paragraph [0060]; MERKLEY teaches that the cellulose fibers may be kenaf, which is a bast fiber).
However, MERKLEY fails to explicitly teach that the cellulosic material comprises a hemp bast fiber.
DEFORD teaches a method for generating a composite building material comprising providing and mixing a partially delignified lignocellulose material and a cementitious binder (see DEFORD at Abstract and paragraphs [0043] and [0047]-[0048]) wherein the cellulosic material comprises hemp fibers (see DEFORD at paragraph [0046]). DEFORD teaches that the hemp fibers can be used in place of wood fibers or kenaf fibers to make the composite material (see DEFORD at paragraph [0046]).
MERKLEY teaches that the cellulosic material may comprise wood or kenaf fibers (see MERKLEY at paragraph [0060]), or may alternatively comprise any other form of lignocellulosic materials in place of the wood or kenaf fibers (see MERKLEY at paragraph [0109]). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the method of MERKLEY by simply substituting the kenaf bast fiber with hemp bast fiber as taught by of DEFORD. One of ordinary skill in the art could have made such a substitution with a reasonable expectation of success, yielding the predictable results of forming a fiber cement building composite with desired characteristics such as, for example, water resistance and rot resistance (see MERKLEY at paragraph [0026]; see DEFORD at paragraphs [0006] and [0012]).
Claim 43 is rejected under 35 U.S.C. 103 as being unpatentable over MERKLEY in view of Friberg (U.S. Pat. No. 4,799,961-A) (hereinafter, “FRIBERG”).
Regarding claim 43, MERKLEY teaches a method according to claim 20, wherein the cellulosic material is characterized by having at least a portion of at least one component removed from the cellulosic material via a pretreatment (see MERKLEY at paragraphs [0025] and [0060]; MERKLEY teaches pretreating the cellulose fibers, e.g., wood fibers, to remove impurities). MERKLEY teaches pretreating the cellulose fibers via bleaching and/or pulping, e.g, via the Kraft process (see MERKLEY at paragraphs [0060]-[0061]), and Applicant’s specification discusses selective depolymerization pretreatment of the cellulosic materials via bleaching or pulping as treatment methods which remove components such as free lipids, fats, oils, sugars or dust particles in paragraph [0047] and [0217], and specifically includes the Kraft process as one such method of chemical selective depolymerization of the cellulosic material in paragraph [0127]. The method of pretreatment taught by MERKLEY is substantially similar to the pretreatment method of the present invention.
However, MERKLEY does not explicitly mention free lipids, fats, oils, sugars, and dust particles.
FRIBERG teaches a method for generating a composite material comprising calcium oxide, Portland cement and cellulosic (wood) fibers which are at least partially delignified (see FRIBERG at Abstract, col. 3, lines 39-58, and col. 6, lines 17-18 and 34-37), wherein the cellulosic (wood) fibers are characterized by having oils and other raw wood materials removed (see FRIBERG at col. 6, lines 34-37). FRIBERG further teaches that treating the wood fibers to remove various substances, including oils, avoids effects caused by such impurities which are deleterious to the cementitious reactions and composition (see FRIBERG at col. 2, lines 40-46 and col. 6, lines 34-37).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to use the pretreatment process of MERKLEY (see MERKLEY at paragraphs [0025] and [0060]-[0061]) to remove raw wood materials including oils from the cellulosic (wood) fibers for the benefit of avoiding effects which are deleterious to the cementitious reactions and composition as taught by FRIBERG (see FRIBERG at col. 2, lines 40-46 and col. 6, lines 34-37).
Response to Arguments
Applicant's arguments filed 10/15/2025 have been fully considered but they are not persuasive.
Applicant argues:
“Merkley is directed to a cellulose fiber reinforced cement composite material with reduced water absorption… The material specifically relies on fibers that are treated with resins to become hydrophobic… the cellulose fibers are made hydrophobic by treating them with sizing compounds… Merkley does not disclose or suggest the use of hygroscopic (hydrophilic) cellulose fibers” (see Remarks at pg. 5).
However, for at least the following reasons the Examiner finds these arguments unpersuasive:
In response to Applicant’s argument that MERKLEY does not disclose or suggest providing hygroscopic cellulosic material, the Examiner respectfully disagrees, as MERKLEY explicitly discloses providing hydrophilic/hygroscopic cellulose fibers, e.g., kenaf (bast fiber) or wood fibers, which are hygroscopic cellulosic materials of the present invention (see MERKLEY at paragraphs [0035] and [0060] and claim 33 of the present application).
Amended claim 20 recites “A method for generating a composite material, comprising (a) providing (1) a cellulosic material characterized by… (iv) the cellulosic material is hygroscopic, and (2) a binder… and (b) mixing the cellulosic material and the binder, to generate the composite material”. The only added limitation is that cellulosic material which is hygroscopic must be provided; this material is subsequently mixed with binder to form a composite material, and the claim uses the open language comprising, so additional, unrecited steps between (a) and (b) could be included and still meet the limitations of the claim, and/or additional, unrecited materials could be included and still meet the limitations of the claim. The limitation of providing hygroscopic cellulosic material is explicitly disclosed by MERKLEY.
Further, contrary to Applicant’s assertion that MERKLEY relies solely on hydrophobic fibers, MERKLEY explicitly states throughout the disclosure that the embodiments do not only include sizing the fibers to increase hydrophobicity, but also include other chemical treatments which are not directed toward sizing the fibers and increasing hydrophobicity (see MERKLEY at Abstract and paragraphs [0025] and [0050]). As set forth in MPEP § 2123, patents are relevant for all they contain, and disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. It is also noted that even in embodiments wherein the fibers are sized to increase hydrophobicity, MERKLEY explicitly states that only at least a portion of the fibers must undergo this treatment (i.e., another portion is left hygroscopic), and also explicitly states that the sizing agents may be used to only temporarily block the hydrophilic sites on the fibers (see MERKLEY at paragraphs [0035], [0089] and [0150]).
Consequently, for at least these reasons, the Examiner finds Applicant’s arguments unpersuasive.
Conclusion
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/S.C.C./Examiner, Art Unit 1731
/ANTHONY J GREEN/Primary Examiner, Art Unit 1731