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 .
Election/Restrictions
Group II (claims 6 and 15-17) and Group III (claim 7) are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 7/8/2025.
Response to Amendment
The amendment filed on 7/23/2026 has been entered. Claim(s) 1 and 7 is/are currently amended. Claim(s) 2, 8-9, 11 and 14 has/have been cancelled. Claim(s) 1, 3-7, 10, 12-13 and 15-17 is/are pending with claim(s) 6-7 and 15-17 withdrawn from consideration. Claim(s) 1, 3-5, 10 and 12-13 is/are under examination in this office action.
Response to Arguments
Applicant's argument, filed on 7/23/2026, with respect to 103 rejection has been fully considered but is not persuasive.
Applicant argued that the requirement that the inorganic and resin powders are "physically interposed" among the cellulose fibers implicitly requires aqueous medium processing, and the melt processing disclosed in Nikkola does not result in such interposition.
In response, there is no disclosure in the specification showing that the inorganic and resin powders "physically interposed" among the cellulose fibers requires aqueous medium processing; and there is no evidence to show that the melt processing disclosed in Nikkola does not result in such interposition.
Applicant argued that Nikkola teaches the thermoplastic polymer and inorganic filler as separate, optional additives to the cellulose fiber precursor material. Nikkola never teaches using both the thermoplastic polymer powder and the inorganic filler together as a "non-interactive powder" combination, nor does it teach or suggest any ratio.
In response, the thermoplastic polymer in Nikkola’s composition is in an amount of 0-7 wt% and is not optional [abstract and claim 1]. The inorganic filler is indeed optional, but the amount of the inorganic filler is 0.1-10 wt% [0118]. It would have been obvious to one of ordinary skill in the art at the time of filing to add 0.1-10 wt% of the inorganic filler to the composition. 0-7 wt% of the thermoplastic polymer and 0.1-10 wt% of the inorganic filler yields a ratio of the inorganic powder to the resin powder is 1:0 to 1:70, overlapping the claimed ratio of 1:0.01 to 1:100. The term "non-interactive powder" is descriptive and does not need to be taught by the prior art as long as the prior art teaches the same material.
Applicant argued that Paragraph [0017] of Bassett teaches a polyolefin, a glass fiber mat of chopped glass fibers of at least 12.7 mm (a half inch) in length and a filler, preferably a talc, mica, calcium carbonate or barium sulphate filler. Bassett's filler is a single category of mineral filler added to the polyolefin/glass fiber composite. There is no teaching of combining an inorganic filler powder with a separate resin powder at all, let alone in a controlled mass ratio. The polyolefin in Bassett is the bulk matrix resin, not a separate "resin powder" combined with the mineral filler as co- present non-interactive powders.
In response, Bassett teaches a polyolefin composite material for molded products comprising fillers including cellulosic fiber, calcium carbonate and silica of particle size from about 2 microns to about 500 microns [0019]. The polyolefin is a thermoplastic resin. The calcium carbonate and silica are inorganic filler. Thus, Bassett’s composition is similar to the claimed composition and Nikkola’s composition. The are in the same field of endeavor because they are all used in molded articles.
Applicant argued that Tsujii discloses that the composite may also contain components other than the fine cellulose fibers and the resin, including a filler, an antistatic agent, a fire retardant, antimicrobials, a colorant, a radical scavenger, a foaming agent, a dispersant, and the like. Tsujii does not teach any inorganic powder at all in the context of its cellulose fiber composites, much less a combination of inorganic powder and resin powder in any ratio. In summary, the references cited in the Office Action treat the thermoplastic polymer and inorganic filler as fundamentally different categories of ingredient (matrix vs. additive), and none contemplates combining them as co-present powders whose mass ratio is controlled for the purpose of mutual aggregation disturbance.
In response, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). Tsujii teaches a composite for molded products comprising fine cellulose fibers and a resin such as polyolefin [abstract, 0081]. Tsujii does not need to teach the inorganic filler, because Tsujii is in the same field of endeavor with Nikkola and Nikkola teaches the inorganic filler. Nevertheless, Tsujii does teach that the composite may also comprise a filler [0083].
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall 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 nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall 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 nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 3-5, 10 and 12-13 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites “wherein the inorganic powder and the resin powder are physically interposed among fibers of the fibrous cellulose to block hydrogen bonding between cellulose molecules” which is not supported by the originally filed specification. The originally filed specification only disclosed that the resin powder are physically interposed among fibers of the fibrous cellulose to block hydrogen bonding between cellulose molecules [0120 spec.]. No inorganic powder is mentioned that are physically interposed among fibers of the fibrous cellulose to block hydrogen bonding between cellulose molecules.
Claims 3-5, 10 and 12-13 are rejected likewise as depending on claim 1.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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) 1, 3-5, 10, and 12-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nikkola et al (US 20220235186 A1) in view of Tsujii et al (US 20200115471 A1) and Bassett et al (EP 0945253 A2).
Regarding claim 1, Nikkola teaches a natural fiber plastic composite precursor material for molded products comprising cellulosic fibers having an average fiber length less than 1 mm and a thermoplastic polymer such as polyolefin [abstract, 0066] used for cellulose reinforced composite [0039].
Nikkola does not teach that the fibrous cellulose having an average fiber width of 0.1 to 19 um, and having hydroxyl groups partially or fully substituted with carbamate groups at a rate of substitution with the carbamate groups of 1.0 mmol/g or higher.
In the same field of endeavor, Tsujii teaches a composite for molded products comprising fine cellulose fibers and a resin such as polyolefin [abstract, 0081]. The fine cellulose fibers have an average fiber diameter of 0.1 µm to 10 µm [0039], a degree of substitution with carbamate group of 0.37 [Production Example 8, Table 1] which is equivalent to 2.3 mmol/g (considering the molecular weight of anhydroglucose unit in cellulose = 162 g/mol).
It would have been obvious to one of ordinary skill in the art at the time of the invention to form the natural fiber plastic composite precursor material according to Nikkolas including cellulosic fibers having diameter of 0.1 µm to 10 µm and a degree of carbamate substitution of 2.3 mmol/g, as Tsujii demonstrates these values to be suitable for similar resin-cellulose composite. This represents the use of a suitable range of cellulose fiber diameter and degree of carbamate substitution in resin-cellulose fiber composite which are compositionally similar to those of Tsujii and which is used in similar application. "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416-21 (2007). See MPEP 2141.
The cellulosic fibers diameter of 0.1 µm to 10 µm and a degree of carbamate substitution of 2.3 mmol/g meet the claimed width of 0.1-19 µm and rate of carbamate substitution of 1.0 mmol/g or higher.
Nikkola teaches that the thermoplastic polymer is preferably provided in a powder form [0070]. The thermoplastic polymer include polyolefin. [0066], which is art recognized as non-interactive with the fibrous cellulose, and as evidenced by the applicant [0099, 0149, 0150 spec.], and therefore read on the claimed resin powder. Nikkola teaches that the powder has an average particle size of 100 to 800 micrometers [0075].
Nikkola teaches that inorganic fillers such as calcium carbonate and silica can be added to the composite [0118]. Nikkola does not teach the particle size of the inorganic filler.
In the same field of endeavor, Bassett teaches a polyolefin composite material for molded products comprising fillers including cellulosic fiber, calcium carbonate and silica of particle size from about 2 microns to about 500 microns [0019].
It would have been obvious to one of ordinary skill in the art at the time of the invention to form a polyolefin/cellulose fiber composite according to Nikkola including an inorganic filler such as calcium carbonate and silica of particle size from about 2 microns to about 500 microns, as Bassett demonstrates this size range to be suitable for an inorganic filler used in similar resin-cellulose composite. This represents the use of a suitable range of particle size for inorganic fillers in resin-cellulose composite which are compositionally similar to those of Bassett and which is used in similar application. "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416-21 (2007). See MPEP 2141.
The calcium carbonate and silica powder are art recognized as non-interactive with the fibrous cellulose, as evidence by the applicant [0159 spec.], and therefore read on the claimed inorganic powder.
The particle size of 2-500 micron for the inorganic powder and 100-800 micron for the resin powder result in a ratio of an average particle size of the inorganic powder to an average particle size of the resin powder of 1:0.2 to 1:400, as calculated by the examiner, falling within the claimed range of 1:0.1 to 1:10000.
Nikkola does not teach any water in the natural fiber plastic composite precursor material. Therefore, the water content is negligible. The recited “the fibrous cellulose-containing material following processing of a mixed liquid comprising the fibrous cellulose and the non-interactive powder has a moisture percentage of less than 18%” is a product-by-process limitation. Product-by-process claims are not limited to the manipulations of the recited steps, only to the structure implied by the steps. If the product in a product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the product was made by a different process. See MPEP 2113(1). The product obtained through this recited process is a fibrous cellulose-containing material having a moisture percentage of less than 18%. The same product could be achieved through a different process, for example by melt processing of thermoplastic polymer(s) and cellulosic fibers. As long as the prior art teaches a final product of the fibrous cellulose-containing material same as the claimed one having a moisture percentage of less than 18%, the recited limitation of “following processing of a mixed liquid comprising the fibrous cellulose and the non-interactive power” has no patentable weight.
The recited “wherein the inorganic powder and the resin powder are physically interposed among fibers of the fibrous cellulose to block hydrogen bonding between cellulose molecules” is a property of the product. “Products of identical chemical 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. “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)). See MPEP 2112.01. Since the prior art teaches the same product as the current invention, the recited property is expected to be present.
The thermoplastic polymer in Nikkola’s composition is in an amount of 0-7 wt% [abstract and claim 1]. The amount of the inorganic filler is 0.1-10 wt% [0118]. It would have been obvious to one of ordinary skill in the art at the time of filing to add 0.1-10 wt% of the inorganic filler to the composition comprising 0-7 wt of the thermoplastic polymer. 0-7 wt% of the thermoplastic polymer and 0.1-10 wt% of the inorganic filler yields a ratio of the inorganic powder to the resin powder is 1:0 to 1:70, overlapping the claimed ratio of 1:0.01 to 1:100. A prima facie case of obviousness exists where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" (MPEP 2144.05.I).
Regarding claim 3, Nikkola teaches that the lignin content in the cellulosic fiber material is preferably under 1 wt% [0054].
Regarding claims 4 and 10, Nikkola is silent about the claimed brightness value measured in Japanese standard JIS P 8148. However, Nikkola teaches bleaching to enhance brightness and brightness may be advantageous in fiber-based polymer composite objects [0050]. It would have been obvious to one of ordinary skill in the art at the time of filing to optimize the brightness by bleaching through routine experimentation to arrive at the claimed 50% or higher, with a reasonable expectation of successfully obtaining the desired advantages in the fiber-based polymer composite objects. See MPEP 2144.05. "[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 Boesch, 617 F.2d 272,276 (CCPA 1980). "[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." In re Aller, 220 F.2d 454, 456 (CCPA 1955).
Regarding claims 5 and 12-13, according to the applicant, the fine fiber percentage refers to the percentage in terms of mass of the pulp fibers having a fiber length of 0.2 mm or shorter [0071 spec.].
Nikkola teaches that cellulosic fibers have an average fiber length of less than 1 mm and preferably the length of at least 80% (w/w) of the fibers is in said range [0057]. This means that there can be as much as 20% of the fibers having lengths longer than 1 mm. In other words, the fine fiber percentage can be 80% or lower, meeting the claimed 99% or lower.
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 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 JIANGTIAN XU whose telephone number is (571)270-1621. The examiner can normally be reached Monday-Thursday.
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, Robert Jones can be reached on (571) 270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JIANGTIAN XU/Primary Examiner, Art Unit 1762
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