DETAILED ACTION
This Office Action is responsive to the amendment filed on 9/11/2025.
The objections and rejections not addressed below are deemed withdrawn.
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 present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
Drawings
The drawings were received on 9/11/2025. These drawings are accepted.
Claim Rejections - 35 USC § 103
Claim(s) 10-16, 18-24, 26-28, and 30-32 are rejected under 35 U.S.C. 103 as being unpatentable over Oguni et al, JP2011231237 (of record), in view of Bouyahyi et al, EP3034546.
A machine translation of Oguni was used to prepare this rejection.
Oguni discloses a composition comprising a polypropylene resin, cellulose fibers, and a compatibilizing agent which is used in the production of molded articles (for claims 26-29) (abstract). Example 1 of Oguni (page 7: lines 33-37; page 8: lines 37-46; Table 1) discloses a composition comprising cellulose fibers, corresponding to the claimed cellulose fibers (for claims 10, 18); an acid-modified polypropylene compatibilizing agent; and a polypropylene resin having a melt flow rate of 17 g/10 min (for claim 19), corresponding to the claimed thermoplastic resin (for claims 10, 14-16, 18, 22-24).
Regarding the diameter and length of the cellulose fibers: Oguni teaches that the cellulose fibers used in the prior art example are characterized by an average length of 28 µm and an average diameter of 20 µm (page 8: lines 43-44). The prior art cellulose fibers therefore have the required dimensions (for claims 10, 18).
Regarding the ratio of cellulose fibers to thermoplastic resin: The prior art composition comprises 24 parts cellulose fiber and 77 parts polypropylene resin for a ratio of fibers to polypropylene of 24: 77 (for claims 10, 12, 13) (Table 1). Note that this corresponds to a fiber content of about 23.8 wt% relative to the combined total of fibers and polypropylene (for claim 18).
Oguni is silent regarding the requirement that an arbitrary 10 sections of the thermoplastic resin have a standard deviation of a proportion of area occupied by cellulose being 15% or less (for claim 10), bending angle of 0 to 60 ° (for claims 11, 20, 21), being aligned in an axial direction (for claims 18, 32), and orientation angle (for claim 32); however, it is reasonably expected that these properties are met by the prior art.
“[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on inherency under 35 U.S.C. 102, on prima facie obviousness under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same…" as that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (MPEP § 2112). As discussed in the previous paragraphs, the prior art discloses a composition which comprises the same components combined in the same ratios as the claimed composition. Furthermore, the prior art fibers have the same dimensions of length and diameter as the fibers of the claimed composition, and the prior art composition is mixed/kneaded in a twin screw extruder. Note that applicant’s specification teaches that the claimed composition is prepared via similar methods (specification ¶0070-0074). As the prior art composition appears to be identical to the claimed invention, the burden is shifted to applicant to provide evidence demonstrating that the claimed properties would not be inherently met by the composition of Oguni.
Regarding the claimed amount of each component: The composition of Oguni comprises (A) polypropylene, (B) rubber, (C) compatibilizer, and (D) cellulose fibers (abstract), wherein the amount of (D) is 5 to 45 parts per 100 parts of the combination of (A)-(C) (page 3: lines 43-44). The combination of (A)-(C) comprises 50 to 95 parts (A), 4.5 to 40 parts (B), and 0.5 to 10 parts (C) (page 3: lines 23-30). Based on these numbers, the amount of compatibilizer is calculated to be in the range of about 0.3 to 9.5 wt%, overlapping the claimed range (for claims 30, 31). The amount of the combination of polypropylene (i.e., the thermoplastic resin) and cellulose fibers in the prior art composition is calculated to be in the range of about 52.3 to 96.5 wt% (for claims 30, 31).
It has been held that a prima facie case of obviousness exists where the claimed ranges and the prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties, see Titanium Metals Corp. of America v. Banner 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). Note that the difference in the total amount of thermoplastic resin and cellulose fiber in the prior art composition and the claimed lower limit of 97% is small-i.e., less than 1. Given that 1) the prior art composition comprises the same components having the same dimensions as the claimed composition and 2) the fact that this difference is so small, an ordinary artisan would reasonably expect that the properties of the prior art composition would not be materially different from those of the claimed invention. The burden is therefore shifted to applicant to provide evidence demonstrating the criticality of the claimed range (for claims 30, 31).
Oguni is silent regarding the use of a compatibilizer which is a block copolymer having a nonpolar, olefin-based segment and a polar segment which is either ester-based or styrene-based.
Bouyahyi discloses the production of a block copolymer comprising a first polyolefin block and a second polymer block which may be a polyester (abstract; ¶0369). Bouyahyi specifically discloses embodiments which are block copolymers (for claims 10, 18) comprising a polypropylene first block, corresponding to the nonpolar olefin-based block (for claims 10, 18), and the second block is a polar polymer such as polycaprolactone or polylactide, corresponding to the claimed polar block which is ester-based (for claims 10, 18). See, e.g. listed species iPP-PLA, iPP-PCL, aPP-PCL (¶0365; ¶0071-0073 for iPP and aPP referring to polypropylene, PCL being polycaprolactone, and PLA being polylactide). Bouyahyi teaches that the prior art block copolymer can be used as a compatibilizing agent for a polyolefin and cellulose (¶0368).
As taught by Oguni and Bouyahyi, acid modified polyolefins and polyolefin-polar polyester block copolymers were both known in the art to act as compatibilizers for blends of polyolefins and cellulose. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious at the time the invention was effectively filed to modify the composition of Oguni by substituting the polyolefin-polar polyester block copolymers of Bouyahyi for the acid modified polyolefin-based compatibilizer, with the reasonable expectation of obtaining a final composition having improved compatibility between the polyolefin resin and the cellulose fiber (for claims 10, 18).
Claim(s) 10-16, 18-24, 26-28, and 30-32 are rejected under 35 U.S.C. 103 as being unpatentable over Nishida et al, JP2013-245343 (of record), in view of Bouyahyi et al, EP3034546.
Nishida discloses the production of a thermoplastic resin composition comprising cellulose fibers (for claims 10, 18) a thermoplastic resin (for claims 10, 18), and a compatibilizing agent (for claim 10) which is used in the production of molded articles for claims 26-29) (¶0001, 0071). Said cellulose fibers have a diameter in the range of 10 to 20 µm (for claim 10) (¶0046) and a length in the range of 50 µm or more (¶0029), overlapping the claimed range (for claim 10). Said thermoplastic resin may be polypropylene (for claims 14-16, 22-24) (¶0034); further note that Nishida exemplifies the use of thermoplastic resins having a melt flow rate around 13 to 15 g/10 min (for claim 19) (¶0092-0093).
Regarding the ratio of cellulose fibers to thermoplastic resin: The prior art composition comprises 1 to 450 parts cellulose fibers per 100 parts thermoplastic resin (¶0072); this corresponds to a ratio of fibers to thermoplastic resin in the range of 1: 100 to 450: 100, overlapping the claimed range (for claims 10, 12, 13). This also corresponds to a fiber content in the range of about 0.9 to 81.2 wt% relative to the combined amount of fibers and thermoplastic resin, overlapping the claimed range (for claim 18).
Regarding the amounts of each component: The prior art composition comprises 100 parts thermoplastic resin, 1 to 450 parts cellulose fiber, and 1 to 50 parts compatibilizer (¶0071-0072). Based on these numbers, it is estimated that the combination of thermoplastic resin and cellulose fibers may account for about 66.2 to 99.8 wt% of the composition, overlapping the claimed range (for claims 30, 31). The prior art compatibilizer may be present in an amount of about 0.2 to 33.1wt%, overlapping the claimed range (for claims 30, 31).
Nishida is silent regarding the requirement that the that an arbitrary 10 sections of the thermoplastic resin have a standard deviation of a proportion -of area occupied by cellulose being 15% or less (for claim 10), bending angle of 0 to 60 ° (for claims 11, 12, 20, 21), being aligned in an axial direction (for claims 18, 32), and orientation angle (for claim 32); however, it is reasonably expected that these properties are met by the prior art.
Regarding the standard deviation: Note that the prior art specifically states that the fibers do not clump but are instead uniformly dispersed throughout the composition (¶0089, 0091, 0093). Nishida therefore teaches that the prior art composition does not display aggregation of the fibers, and that the fibers are evenly dispersed throughout the composition. As the fibers are described to be evenly distributed throughout the composition, it is reasonably expected that the standard deviation would be in the required range (for claim 10).
Regarding the bending angle (for claims 11, 20, 21) and orientation (for claims 18, 32): The prior art teaches that the fibers are fed longitudinally into the kneader (¶0089) and that the composition is uniaxially stretched (¶0088). Said processes are reasonably expected to result in an alignment of the fibers and reduction in bending, resulting in the claimed properties. The prior art therefore appears to teach a composition comprising the same components in the same amounts as the claimed invention, and is prepared via a method that would be expected to result in alignment of the fibers. The burden is therefore shifted to applicant to provide evidence of an unobvious difference between the claimed invention and the prior art; see In re Fitzgerald cited earlier in this Action.
It has been held that in the case where the claimed ranges overlap or lie inside ranges disclosed in the prior art, a prima facie case of obviousness exists; see 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). 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; see In re Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (" (MPEP § 2144.05). The prior art ranges overlap the ranges recited in the instant claims. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to prepare a composition comprising the required amount of cellulosic fibers having a length in the claimed range.
Nishida is silent regarding the use of a compatibilizer which is a block copolymer having a nonpolar, olefin-based segment and a polar segment which is either polyester-based or styrene-based.
As discussed earlier in this Action, Bouyahyi discloses the production of a block copolymer comprising a first polyolefin block and a second polymer block which may be a polyester (abstract; ¶0369). Bouyahyi specifically discloses embodiments which are block copolymers (for claims 10, 18) comprising a polypropylene first block, corresponding to the nonpolar olefin-based block (for claims 10, 18), and the second block is a polar polymer such as polycaprolactone or polylactide, corresponding to the claimed polar block which is ester-based (for claims 10, 18). Bouyahyi teaches that the prior art block copolymer can be used as a compatibilizing agent for a polyolefin and cellulose (¶0368).
As taught by Nishida and Bouyahyi, acid modified polyolefins and polyolefin-polar polyester block copolymers were both known in the art to act as compatibilizers for blends of polyolefins and cellulose. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious at the time the invention was effectively filed to modify the composition of Nishida by substituting the polyolefin-polar polyester block copolymers of Bouyahyi for the acid modified polyolefin-based compatibilizer, with the reasonable expectation of obtaining a final composition having improved compatibility between the polyolefin resin and the cellulose fiber (for claims 10, 18).
Response to Arguments
Regarding the rejection under 35 U.S.C. 102(a)(1) over Oguni et al, JP2011231237: Applicant argues that Oguni does not teach a compatibilizer which is a block copolymer as defined in the independent claims; see arguments pages 10-11, filed 9/11/2025. This argument is persuasive. However, upon further consideration, a new ground(s) of rejection is made in view of the combination of Oguni in view of Bouyahyi et al, EP3034546, as discussed earlier in this Action.
Regarding the rejection under 35 U.S.C. 103 over Nishida et al, JP2013-245343: Applicant argues that Nishida does not teach a compatibilizer which is a block copolymer as defined in the independent claims; see arguments pages 11-12, filed 9/11/2025. This argument is persuasive. However, upon further consideration, a new ground(s) of rejection is made in view of the combination of Nishida in view of Bouyahyi et al, EP3034546, as discussed earlier in this Action.
Applicant further argues that Nishida only discloses the use of a compatibilizer to combine incompatible resins, and not to improve dispersibility of cellulose fibers within the resin. In response, it is noted that Nishida specifically teaches that a polymer may be added to improve the affinity between the thermoplastic resin and the cellulose fibers (¶0071)-i.e., to act as a compatibilizer between the two. Contrary to applicant’s argument, Nishida therefore envisions the use of a polymer as a compatibilizing agent between the thermoplastic resin and the cellulose fibers.
Applicant further argues that the claimed invention yields unexpected results, citing the data from Tables 1, 3, and 4 in the specification (see arguments pages 8-9, 13).
It is well settled that applicant must compare the claimed subject matter with the closest prior art to be effective to rebut a prima facie case of obviousness; see MPEP 716.02(e). As disclosed in applicant’s specification (specification ¶0078, 0081) Examples 1-29 were all prepared using the polymer Kayabrid 002PP-NW as the compatibilizer. Kayabrid 002PP-NW is a commercially available maleic anhydride-modified polypropylene. See the attached printout from https://prime.nc-net.com/, which identifies Kayabrid 002PP-NW as a MAPP compatibilizer. See also Qiu et al, published in European Polymer Journal vol. 41 (abstract), and Kim et al, published in Composites: Part A vol. 38 (title), showing that MAPP is a known abbreviation for maleic anhydride modified polypropylene.
In contrast, independent claims 10 and 18 both require a compatibilizer that is a block copolymer comprising a polyolefin block and a polar block which is either ester-based or styrene-based. As reported in the specification, applicant’s Examples do not disclose compositions which include the required block copolymer and therefore do not fall within the scope of the instant claims. The data obtained from said examples therefore cannot be relied on as evidence that the claimed invention yields unexpected results. Applicant’s argument therefore is not persuasive, as no evidence has been provided that the invention as defined in the instant claims yields unexpected results.
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.
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/JEFFREY S LENIHAN/Examiner, Art Unit 1765