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 .
Response to Amendment
The Amendment filed 22 September 2025 has been entered. Claims 1, 2, 4, 6, 7, 9, 10, 14, 17, and 19 – 22 remain pending in the application.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 2, 4, 7, 10, 14, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Samet ‘155 (US 2015/0107155 A1) in view of Hasegawa (JP 10-191803 A, referencing a machine translation thereof provided with this Office Action).
The rejection of claim 10 further relies on Samet ‘752 (US 2014/0357752 A1). The examiner notes Samet ‘155 references PCT application PCT/IL2011/000739, which corresponds to Samet ‘752 (US 2014/0357752 A1), thus including Samet ‘752 as a portion of Samet ‘155’s disclosure.
Regarding claim 1, Samet ‘155 discloses an article (e.g. Fig. 1, 2A, 2B; ¶¶ [0009] – [0172]) comprising
an organic component (“organic waste component”: e.g. ¶¶ [0009], [0010], [0012], [0017], [0018], [0023], [0027], [0028], [0030] – [0034], [0037], [0066], [0081], [0083], [0086], [0087]), wherein said organic component is, e.g., wood chips (e.g. ¶¶ [0031], [0033]) and
a biopolymer (“organic adhesive component”: e.g. ¶¶ [0010], [0024], [0027], [0029], [0030], [0036] – [0039], [0044], [0047], [0052] – [0054]),
wherein a particle size of said organic component is less than 4 mm (e.g. ¶¶ [0032], [0034]).
Although Samet ‘155 is not explicit as to the article comprising a cured thermoset polymer wherein a weight per weight (w/w) ratio of said organic component to said thermoset polymer within said article is between 4:1 and 10:1, and a w/w concentration of said cured thermoset polymer within the article of the invention is between 2 and 20%, these features would have been obvious in view of Hasegawa.
MPEP § 2143, I, A, states the following regarding combining prior art elements according to known methods to yield predictable results:
To reject a claim based on this rationale, Office personnel must resolve the Graham factual inquiries. Then, Office personnel must articulate the following:
(1) a finding that the prior art included each element claimed, although not necessarily in a single prior art reference, with the only difference between the claimed invention and the prior art being the lack of actual combination of the elements in a single prior art reference;
(2) a finding that one of ordinary skill in the art could have combined the elements as claimed by known methods, and that in combination, each element merely performs the same function as it does separately;
(3) a finding that one of ordinary skill in the art would have recognized that the results of the combination were predictable; and
(4) whatever additional findings based on the Graham factual inquiries may be necessary, in view of the facts of the case under consideration, to explain a conclusion of obviousness.
The rationale to support a conclusion that the claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art. KSR, 550 U.S. at 416, 82 USPQ2d at 1395; Sakraida v. AG Pro, Inc., 425 U.S. 273, 282, 189 USPQ 449, 453 (1976); Anderson’s-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57, 62-63, 163 USPQ 673, 675 (1969); Great Atl. & P. Tea Co. v. Supermarket Equip. Corp., 340 U.S. 147, 152, 87 USPQ 303, 306 (1950). "[I]t can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does." KSR, 550 U.S. at 418, 82 USPQ2d at 1396. If any of these findings cannot be made, then this rationale cannot be used to support a conclusion that the claim would have been obvious to one of ordinary skill in the art.
With respect to (1), as noted before, Samet ‘155 discloses an article as claimed except for the article comprising a cured thermoset polymer wherein a weight per weight (w/w) ratio of said organic component to said thermoset polymer within said article is between 4:1 and 10:1, and a w/w concentration of said cured thermoset polymer within the article of the invention is between 2 and 20%.
However, Hasegawa discloses an article comprising an organic component (“base material”) and a cured thermoset polymer (“binder” selected from a “thermosetting resin group”), wherein a weight per weight (w/w) ratio of said organic component to said thermoset polymer within said article is 2:1 or higher and a w/w concentration of said cured thermoset polymer within the article is 33% or less (100 parts by weight of the “base material” to 50 parts by weight or less of the “binder”: e.g. p. 2, l. 88, to p. 7, l. 448).
With respect to (2), Samet ‘155 mixes their organic component and biopolymer to form a mixture and then molds said mixture to form the article (e.g. ¶¶ [0009], [0010], [0012], [0017], [0021], [0022], [0027] – [0030], [0033], [0036], [0039] – [0043], [0048] – [0051], [0055], [0066] – [0069], [0072] – [0079], [0081] – [0083], [0086] – [0088], [0090], [0096], [0099], [0107], [0110]).
Hasegawa similarly discloses mixing their organic component and cured thermosetting resin to form a mixture and then molding said mixture to form the article (e.g. p. 2, l. 88, to p. 3, l. 146; p. 3, ll. 179 – 184).
Hasegawa notes these ranges provide a sufficient amount of thermosetting resin to hold the organic component in place (e.g. p. 3, ll. 84 – 86) but not so strongly so that the article can disintegrate in soil (e.g. p. 3, l. 86, to p. 4, l. 230; p. 7, ll. 441 – 444).
By comparison, Samet ‘155 states their article can be biodegradable or bioerodible upon exposure to soil (e.g. ¶¶ [0009] – [0012], [0015], [0017], [0018], [0020], [0051], [0083], [0085], [0086], [0088], [0090], [0093], [0094], [0096], [0097], [0099], [0103], [0105], [0107] – [0109]) in order to be suitable as a biodegradable planting article used in greenhouses (e.g. ¶ [0003]) and should remain resistant to saturation by liquids so that they do not disintegrate prior to burial in soil (e.g. ¶ [0004]).
Accordingly, one of ordinary skill in the art would have observed Samet ‘155 and Hasegawa discloses elements which can be combined by known methods and which would perform the same function together as they do separately.
With respect to (3), Hasegawa notes their thermosetting resin has a particular usefulness at aggregating the organic component (e.g. p. 3, ll. 175 – 177), thereby helping plant root development (e.g. p. 2, ll. 85 – 88). Accordingly, adding a cured thermoset resin at the ranges Hasegawa discloses to Samet ‘155’s article would have been understood to assist in obtaining this effect.
With respect to (4), as previously noted, both Samet ‘155 and Hasegawa relate to planting pots which are stable for a sufficient amount of time to contain a plant but also degrade when needed once buried in soil.
Accordingly, it would have been obvious to modify Samet ‘155’s article to comprise a cured thermoset polymer wherein a weight per weight (w/w) ratio of said organic component to said thermoset polymer within said article is at least 2:1, and a w/w concentration of said cured thermoset polymer within the article of the invention is less than 33% as Hasegawa suggests. One of ordinary skill in the art would have made this modification to help plant root development.
Regarding claim 2, in addition to the limitations of claim 1, Samet ‘155 discloses said article further comprises an emulsifying agent (e.g. ¶¶ [0010], [0025], [0040], [0041], [0051], [0052], [0054]), optionally wherein said emulsifying agent is, e.g., PEG (e.g. ¶ [0041]).
Although Samet ‘155 does not specify a w/w range for the emulsifying agent, Samet ‘155 notes emulsifying agent is optional (e.g. ¶¶ [0025], [0040]), indicating embodiments where there is 0% w/w of the emulsifying agent. However, Samet ‘155 also notes emulsifying agent is provided to avoid cracking of the article (e.g. ¶ [0040]), but more emulsifying agent would also decrease the amount of the remaining components, particularly the organic component and the biopolymer, which serve as nutrient material for a plant planted with the article (e.g. ¶¶ [0018] – [0020]).
“[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, 105 USPQ 233, 235 (CCPA 1955). See also MPEP § 2144.05, II, A. Therefore, it would have been obvious for the article to comprise up to 20% w/w of the emulsifying agent to prevent the article from cracking and provide sufficient nutrients for a plant planted with the article.
Regarding claim 4, in addition to the limitations of claim 1, Hasegawa discloses said thermoset polymer comprises, e.g., polyepoxide (e.g. p. 2, ll. 93 – 94).
Regarding claim 7, in addition to the limitations of claim 1, Samet ‘155 discloses said biopolymer is, e.g., flour (e.g. ¶¶ [0036], [0038]).
Regarding claim 10, in addition to the limitations of claim 1, Samet ‘155 discloses said article is in a form of a container (“container” such as “pot” 10 or “tray” 20: e.g. Fig. 1, 2A, 2B; ¶¶ [0009] – [0011], [0014], [0015], [0017], [0018], [0020], [0021], [0042], [0050], [0051], [0055] – [0065], [0070], [0071], [0073], [0074], [0080], [0083] – [0089] – [0101], [0103], [0156], [0158], [0160], [0163] – [0172]), wherein said article comprises a wall being between 1.5 and 9 mm (encompassing the ranges cited for various portions of the “pot”: e.g. ¶¶ [0058], [0165]), optionally wherein said article is a planting article (e.g. ¶¶ [0010], [0011], [0014], [0017] – [0020], [0051], [0055] , [0080], [0084], [0086], [0088] – [0090], [0092], [0093], [0095] – [0101], [0103] – [0109]), and optionally is biodegradable or bioerodible upon exposure to soil (e.g. ¶¶ [0009] – [0012], [0015], [0017], [0018], [0020], [0051], [0083], [0085], [0086], [0088], [0090], [0093], [0094], [0096], [0097], [0099], [0103], [0105], [0107] – [0109]).
Although Samet ‘155 does not explicitly state said planting article being stable under greenhouse conditions for a predefined time period ranging between 2 weeks and 10 months, Samet ‘155 notes biodegradable planting articles are used in greenhouses (e.g. ¶ [0003]) and should remain resistant to saturation by liquids so that they do not disintegrate prior to burial in soil (e.g. ¶ [0004]). For example Samet ‘155 states a scheduled disintegration as Samet ‘752 sets forth should be considered (e.g. ¶ [0094]), which Samet ‘752 states should be “several weeks up to several months” (e.g. ¶ [0044]), e.g. 2 weeks to 3 months (e.g. ¶¶ [0069], [0071], [0072], [0074], [0081], [0082], [0084]). Therefore, Samet ‘155 indirectly discloses articles meeting the claimed predefined time period.
Regarding claim 14, in addition to the limitations of claim 1, Samet ‘155 discloses said article is characterized by a predetermined degradation time suitable for supporting growth of a plant upon transplantation (e.g. ¶¶ [0011], [0018], [0020], [0097], [0099] – [0101], [0108]) wherein said supporting comprises any one of (i) preventing damage to a plant root (e.g. ¶¶ [0020], [0099]), and (ii) facilitating root propagation and penetration of salts, water, and air through a wall of said article (per integration of the article with soil as it disintegrates: e.g. ¶¶ [0018], [0021], [0093], [0099]).
Regarding claim 17, in addition to the limitations of claim 1, Samet ‘155 discloses the article further comprises a coating layer (e.g. ¶¶ [0018], [0055], [0059], [0061], [0064], [0073], [0085], [0088], [0094]), optionally wherein said coating layer comprises a biodegradable polymer (e.g. ¶ [0085]).
Claims 4 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Samet ‘155 and Hasegawa as applied to claim 1 above, and further in view of Huylebroeck (WO 2010/100537 A2) and Hirai (US 2017/0181437 A1).
Regarding claim 4, in addition to the limitations of claim 1, Hasegawa discloses said thermoset polymer comprises, e.g., furan (e.g. p. 2, ll. 93 – 94) but does not specify polyfurfuryl alcohol (PFA).
However, Huylebroeck discloses furans such as polyfurfuryl alcohol are useful for their water resistance and environmental friendliness for making food trays (e.g. p. 2, ll. 9 – 26
Hirai notes food trays and planting trays are equivalent uses of furan resins (e.g. ¶¶ [0067], [0068], [0070], [0073], [0076] [0079], [0090], [0091], [0103], [0138], [0139]). Accordingly, the advantages Huylebroeck would similarly apply to other applications, including planting articles as Samet ‘155 and Hasegawa relate to.
Therefore, it would have been obvious for the thermoset polymer to comprise polyfurfuryl alcohol (PFA) as Huylebroeck and Hirai suggest, the motivation being to ensure water resistance and environmental friendliness of the article.
Regarding claim 9, in addition to the limitations of claim 1, Samet ‘155 and discloses said composition comprises wood chips (e.g. ¶¶ [0031], [0033]), compost (e.g. ¶¶ [0031], [0033]), and flour (e.g. ¶ [0036]).
Although Hasegawa mentions furans as the thermoset polymer in the composition (e.g. p. 2, ll. 93 – 94), Hasegawa is not explicit as to cured PFA.
However, Huylebroeck discloses cured furans such as polyfurfuryl alcohol are useful for their water resistance and environmental friendliness for making food trays (e.g. p. 2, ll. 9 – 26
Hirai notes food trays and planting trays are equivalent uses of furan resins (e.g. ¶¶ [0067], [0068], [0070], [0073], [0076] [0079], [0090], [0091], [0103], [0138], [0139]). Accordingly, the advantages Huylebroeck would similarly apply to other applications, including planting articles as Samet ‘155 and Hasegawa relate to.
Therefore, it would have been obvious for the thermoset polymer to comprise cured PFA as Huylebroeck and Hirai suggest, the motivation being to ensure water resistance and environmental friendliness of the article.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Samet ‘155 and Hasegawa as applied to claim 1 above, and further in view of Wong (US 2008/0179790 A1) and Hirai.
Regarding claim 6, although Samet ‘155 and Hasegawa are not explicit as to a moisture content within said article is less than 5% w/w.
Generally, Hasegawa notes a moisture content of less than 50% (e.g. p. 3, ll. 163 – 164). Wong discloses articles molded from thermoset resins and an organic component (e.g. ¶¶ [0017] – [0117]), wherein the moisture content is below 20% since high moisture can delaminate the article and dilute the thermoset polymer which bonds the article together (e.g. ¶¶ [0011], [0012], [0023], [0042] – [0044]). Wong also notes moisture can be vented during processing to assist in these advantages (e.g. ¶¶ [0028], [0029], [0087], [0089], [0094], [0095], [0097]).
Hirai notes cups and planting trays are equivalent uses of thermosetting resins (e.g. ¶¶ [0067], [0068], [0070], [0073], [0076] [0079], [0090], [0091], [0103], [0138], [0139]). Given Wong can form cups as an example of the article (e.g. ¶ [0116]), the advantages Huylebroeck would similarly apply to other applications, including planting articles as Samet ‘155 and Hasegawa relate to.
“[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, 105 USPQ 233, 235 (CCPA 1955). See also MPEP § 2144.05, II, A. Therefore, it would have been obvious to modify the article so that the moisture content within the article is less than 5% as Wong suggests, the motivation being to prevent delamination of the article and to avoid dilution of the thermoset polymer.
Claims 19 – 21 are rejected under 35 U.S.C. 103 as being unpatentable over Samet ‘155 and Hasegawa as applied to claim 1 above, and further in view of Wong, Hirai, and De Groot (US 6,032,413 A).
Regarding claim 19, Samet ‘155 and Hasegawa collectively disclose a process for manufacturing the article as discussed in the 35 U.S.C. 103 rejection of claim 1, comprising the steps of providing a mixture comprising the organic component and a curable resin, at a w/w ratio of least 2:1, wherein a w/w concentration of said curable thermoset resin within the mixture is about 33% or less, molding said mixture under suitable conditions, thereby manufacturing said article (Samet ‘155: e.g. ¶¶ [0009], [0010], [0012], [0017], [0021], [0022], [0027] – [0030], [0033], [0036], [0039] – [0043], [0048] – [0051], [0055], [0066] – [0069], [0072] – [0079], [0081] – [0083], [0086] – [0088], [0090], [0096], [0099], [0107], [0110]; Hasegawa: e.g. (e.g. p. 2, l. 88, to p. 3, l. 146; p. 3, ll. 179 – 184).
Samet ‘155 and Hasegawa are not explicit as to a moisture content within said article is between 8% and 20% w/w.
Generally, Hasegawa notes a moisture content of less than 50% (e.g. p. 3, ll. 163 – 164). Wong discloses articles molded from thermoset resins and an organic component (e.g. ¶¶ [0017] – [0117]), wherein the moisture content is below 20% since high moisture can delaminate the article and dilute the thermoset polymer which bonds the article together (e.g. ¶¶ [0011], [0012], [0023], [0042] – [0044]). Wong also notes moisture can be vented during processing to assist in these advantages (e.g. ¶¶ [0028], [0029], [0087], [0089], [0094], [0095], [0097]).
Hirai notes cups and planting trays are equivalent uses of thermosetting resins (e.g. ¶¶ [0067], [0068], [0070], [0073], [0076] [0079], [0090], [0091], [0103], [0138], [0139]). Given Wong can form cups as an example of the article (e.g. ¶ [0116]), the advantages Huylebroeck would similarly apply to other applications, including planting articles as Samet ‘155 and Hasegawa relate to.
“[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, 105 USPQ 233, 235 (CCPA 1955). See also MPEP § 2144.05, II, A. Therefore, it would have been obvious to modify the article so that the moisture content within the article is less than 5% as Wong suggests, the motivation being to prevent delamination of the article and to avoid dilution of the thermoset polymer.
Although Samet ‘155 and Hasegawa are not explicit as to the mixture comprising a catalyst, this feature would have been obvious in view of De Groot.
As an example of the thermoset polymer, Hasegawa discloses furans (e.g. p. 2, ll. 93 – 94) as does Hirai (e.g. ¶ [0079]). De Groot notes the addition of a catalyst is useful for forming furans (e.g. Col. 2, l. 66 to Col. 3, l. 8; Col. 3, ll. 38 – 40). One of ordinary skill in the art would have appreciated a catalyst lower the activation energy of a chemical reaction, thereby expediting the formation of the furan resin.
Accordingly, it would have been obvious to add a catalyst to the mixture as De Groot suggests in order to expedite the formation of the furan resin.
Regarding claim 20, in addition to the limitations of claim 19, Samet ‘155 discloses said suitable conditions comprise exposing said mixture to (i) a pressure and (ii) a thermal radiation (e.g. ¶¶ [0070], [0071], [0083], [0087]). Hasegawa corroborates these conditions (e.g. p. 2, l. 88, to p. 3, l. 146; p. 3, ll. 179 – 184).
Regarding claim 21, in addition to the limitations of claim 20, Hasegawa discloses said thermal radiation is sufficient for curing said curable resin (e.g. p. 3, ll. 175 – 177).
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Samet ‘155 and Hasegawa, Wong, Hirai, and De Groot as applied to claim 19 above, and further in view of Huylebroeck.
Regarding claim 22, although Hasegawa mentions furans as the curable resin (e.g. p. 2, ll. 93 – 94), Hasegawa is not explicit as to furfuryl alcohol.
However, Huylebroeck discloses furans such as furfuryl alcohol resin are useful for their water resistance and environmental friendliness for making food trays (e.g. p. 2, ll. 9 – 26
Hirai notes food trays and planting trays are equivalent uses of furan resins (e.g. ¶¶ [0067], [0068], [0070], [0073], [0076] [0079], [0090], [0091], [0103], [0138], [0139]). Accordingly, the advantages Huylebroeck would similarly apply to other applications, including planting articles as Samet ‘155 and Hasegawa relate to. Furthermore, De Groot’s disclosure applies to furans made from furfuryl alcohol (e.g. Col. 2, ll. 28 – 29).
Therefore, it would have been obvious for the thermoset polymer to comprise cured PFA as Huylebroeck and Hirai suggest, the motivation being to ensure water resistance and environmental friendliness of the article.
Response to Arguments
Applicant’s arguments, see p. 5 of the Remarks, filed 22 September 2025, with respect to the rejections under 35 U.S.C. 112 have been fully considered and are persuasive. These rejections have been withdrawn.
Applicant’s arguments, see pp. 6 – 8 of the Remarks, filed 22 September 2025, with respect to the rejections of claims 1, 2, 4, 6, 7, 9, 10, 14, 17, and 19 – 22 under 35 U.S.C. 103 have been fully considered but they are not persuasive.
Applicant asserts Hasegawa teaches 50 parts by weight or less of a binder, e.g. 44 parts by weight, and thus exceeds the claimed amount of cured thermoset resin.
A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). See also MPEP § 2123, I. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). See also MPEP § 2123, II.
Therefore, Hasegawa’s 44 parts by weight should not be considered as a limiting disclosure, and Hasegawa explicitly mentions this (e.g. p. 4, ll. 258 – 261). Moreover, the upper bound of 50 parts by weight Hasegawa discloses, which corresponds to a w/w concentration of about 33% (noting the 100 parts by weight basis of “base material” compared to “50 parts by weight or less” as cited in the rejections, emphasis added by the examiner), encompassing the claimed range.
“[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness.” In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). See MPEP § 2144.05, I.
Applicant also remarks the claimed maximum of 20% w/w for the thermoset resin exists as compositions with more than this are considered non-degradable. However, the examiner notes Applicant’s arguments rely on a single example to make this assertion. This is inconsistent with the instant specification, which explicitly states some embodiments will be non-degradable over 20% w/w of cured thermoset polymer (e.g. ¶ [068]). Additionally, the instant specification gives a generic definition for “biodegradable” and synonyms (e.g. ¶¶ [0145], [0146]) which is broader than the examples of the instant specification.
As noted in the rejections, Hasegawa discloses articles which “disintegrates” (a synonym for “degrades”) in soil. It therefore stands to reason that, all other things being equal, an article with less of Hasegawa’s cured thermoset polymer and more of an organic component such as wood chips (or other degradable materials) as Samet ‘155 discloses will degrade in a shorter time, this time being tailorable to the particular needs of the article.
Applicant also assets Hasegawa’s teachings are directed to primarily mineral based articles. However, the examiner finds Hasegawa does not limit the “base material” to any particular mixture based on the predominance of organic or inorganic material (e.g. p. 2, ll. 88 – 92, mention suitable species in general, and the examples Hasegawa discloses are, as mentioned before, non-limiting).
Applicant further asserts Huylebroeck teaches non-degradable articles (due to their water resistance) and include an excess of thermoset resin as compared to the claims.
MPEP § 2145, III, states the following regarding arguing that prior art devices are not physically combinable:
"The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference.... Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art." In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981). See also In re Sneed, 710 F.2d 1544, 1550, 218 USPQ 385, 389 (Fed. Cir. 1983) ("[I]t is not necessary that the inventions of the references be physically combinable to render obvious the invention under review."); and In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973) ("Combining the teachings of references does not involve an ability to combine their specific structures.").
However, the claimed combination cannot change the principle of operation of the primary reference or render the reference inoperable for its intended purpose.
In the case of Huylebroeck, the examiner’s conclusion of obviousness relies on Hasegawa’s establishment of the correct amount of thermoset resin, which is discussed above, as well as the correct species of thermoset resin. Huylebroeck is cited for a particular species of thermoset resin which is within the scope of Hasegawa’s disclosure, using Hirai as a nexus disclosure to show an equivalence of uses.
Hasegawa notes that some water resistance is needed to maintain integrity of the article prior to planting in soil (e.g. p. 1, l. 36, to p. 2, l. 55). So, Huylebroeck is reasonably considered for the intrinsic water resistance of a species suitable for Hasegawa’s purposes, noting that Hasegawa would have informed one of ordinary skill in the art of the appropriate amount thereof to use.
For these reasons, the examiner maintains the rejections under 35 U.S.C. 103 to the extent consistent with the present amendments.
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 ETHAN A UTT whose telephone number is (571)270-0356. The examiner can normally be reached Monday through Friday, 7:30 A.M. to 5:00 P.M. Central.
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/ETHAN A. UTT/Examiner, Art Unit 1783
/MARIA V EWALD/Supervisory Patent Examiner, Art Unit 1783