DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 7/14/2026 has been entered.
Claims 1-15 are pending in the application. Claims 7-15 are withdrawn due to a previous restriction requirement.
The previous 35 USC 112 rejection of claim 1 is withdrawn in light of Applicant’s amendment and remarks.
Claim Rejections - 35 USC § 102/103
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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.
Claims 1-6 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Hess et al. (US PG Pub 20180237608 A1).
Regarding claims 1-4, Hess et al. teach composites (Abstract) comprising multiple phases [0049] wherein the phases contain a bicontinuous network [0115], [0131] wherein the network is comprised of cellulose (Abstract, [0044]) thereby reading on the complaint phase of claims 1 and 4 and the solid material of claim 1, wherein inorganic materials such as aluminum oxide, among others [0065] are incorporated into the cellulose thereby reading on the interpenetrating network of claim 1 and further reading on the stiff phase as required by claims 1 and 3 and the solid material of claim 1. For the purposes of examination, the terms “stiff” and “compliant” are being broadly interpreted such that the compliant phase has lower stiffness than the stiff phase and the stiff phase has higher stiffness than the compliant phase. Hess et al. further teach the composites have a bulk modulus of from about 1 Pa to about 106 Pa [0073].
Hess et al. do not particularly teach where the ratio of bulk moduli of the stiff phase to the compliant phase is greater than 2. Regarding claim 2, Hess et al. are further silent on the ratio of bulk moduli of the stiff phase to the compliant phase is from 100 to 3,000.
The bulk moduli is a function of the stiffness of the materials in the composition. Hess et al. teach the same stiff and compliant phases as required by the instant claim as set forth above. Therefore, the mechanical property of bulk moduli film of Hess et al. will be the same mechanical property as required by the instant claims. Case law has held that claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). The courts have stated that 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. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position. In the alternative that the above disclosure is insufficient to anticipate the above listed claims, it would have nonetheless been obvious to the skilled artisan to produce the claimed composition, as the reference teaches each of the claimed ingredients (stiff and complaint phase) within the claimed proportions for the same utility (composite structures).
Further, Hess et al. teach the bulk properties of the composites can be adjusted in order to obtain the desired thermal conductivity, level of stiffness, or flexibility [0027]. Therefore, the ratio of bulk moduli of the stiff phase to the compliant phase can be optimized to reach the desired properties via a routine optimization. The case law has held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Thus, it would have been obvious to one having ordinary skill in the art at the time of the invention was made to adjust the bulk moduli of the stiff phase and the compliant phase within the composite for the intended application via a routine optimization, thereby obtaining the present invention.
Regarding claim 5, Hess et al. teach the cellulose contains nanoparticles having a surface modifying agent wherein the surface modifying agent contains PEG [0011] thereby reading on the compliant phase as required by the instant claim.
Regarding claim 6, Hess et al. teach colloidal particles homogeneously dispersed within the cellulose wherein the colloidal particles are gold or silver nanoparticles [0068] thereby reading on the complaint phase as required by the instant claim.
Claims 1-4 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Deshui, et al. (CN103397576; English Machine Translation incorporated herewith).
Regarding claims 1-4, Deshui et al. teach a composite material comprising a polyacrylamide cellulose interpenetrating network and an inorganic material (Abstract) thereby reading on the composite comprising a plurality of phases and further reading on the at least one stiff phase and at least one compliant phase forming a bi-continuous interpenetrating network, wherein the cellulose reads on at least one compliant phase as required by instant claims 1 and 4, and wherein the inorganic material comprising aluminum oxide reads on the at least one stiff phase as required by instant claims 1 and 3.
Deshui et al. do not particularly teach where the ratio of Young’s moduli of the stiff phase to the compliant phase is greater than 1. Regarding claim 2, Deshui et al. are further silent on the ratio of bulk moduli of the stiff phase to the compliant phase is from 100 to 3,000.
The Young’s moduli and the bulk moduli are functions of the stiffness of the materials in the composition. Deshui et al. teach the same stiff and compliant phases as required by the instant claim as set forth above. Therefore, the mechanical property of Young moduli and bulk moduli film of Deshui et al. will be the same mechanical property as required by the instant claims. Case law has held that claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). The courts have stated that 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. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position. In the alternative that the above disclosure is insufficient to anticipate the above listed claims, it would have nonetheless been obvious to the skilled artisan to produce the claimed composition, as the reference teaches each of the claimed ingredients (stiff and complaint phase) within the claimed proportions for the same utility (composite structures).
Claims 1-3 and 5 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Zhang et al. (CN108624296; English Machine Translation incorporated herewith).
Regarding claims 1-3 and 5, Zhang et al. teach a composite solid-solid material comprising a polyethylene glycol, carbon nanotube and boron nitride (Abstract), wherein the composite material forms a three-dimensional structure by interpenetrating network (Claim 1) thereby reading on the composite comprising a plurality of phases and further reading on the at least one stiff phase and at least one compliant phase forming a bicontinuous interpenetrating network, wherein the polyethylene glycol reads on at least one compliant phase as required by instant claims 1 and 5, and wherein the boron nitride and carbon nanotube reads on the at least one stiff phase as required by instant claims 1 and 3.
Zhang et al. do not particularly teach where the ratio of Young’s moduli of the stiff phase to the compliant phase is greater than 1. Regarding claim 2, Zhang et al. are further silent on the ratio of bulk moduli of the stiff phase to the compliant phase is from 100 to 3,000.
The Young’s moduli and the bulk moduli are functions of the stiffness of the materials in the composition. Zhang et al. teach the same stiff and compliant phases as required by the instant claim as set forth above. Therefore, the mechanical property of Young moduli and bulk moduli film of Zhang et al. will be the same mechanical property as required by the instant claims. Case law has held that claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). The courts have stated that 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. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position. In the alternative that the above disclosure is insufficient to anticipate the above listed claims, it would have nonetheless been obvious to the skilled artisan to produce the claimed composition, as the reference teaches each of the claimed ingredients (stiff and complaint phase) within the claimed proportions for the same utility (composite structures).
Claims 1-3 and 6 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Nguyen, et al. (EP 0 306 100).
Regarding claims 1-3 and 6, Nguyen et al. teach a composite material comprising a metal substrate wherein the metal substrate is an alloy comprising iron and aluminum (Abstract) wherein the metal substrate forms interpenetration causing excellent adhesion adherence between the layers of the substrate (p. 4 line 51) thereby reading on the composite comprising a plurality of phases and further reading on the at least one stiff phase and at least one compliant phase forming a bicontinuous interpenetrating network, wherein the iron reads on at least one compliant phase as required by instant claims 1 and 6, and wherein the aluminum reads on the at least one stiff phase as required by instant claims 1 and 3.
Nguyen et al. do not particularly teach where the ratio of Young’s moduli of the stiff phase to the compliant phase is greater than 1. Regarding claim 2, Nguyen et al. are further silent on the ratio of bulk moduli of the stiff phase to the compliant phase is from 100 to 3,000.
The Young’s moduli and the bulk moduli are functions of the stiffness of the materials in the composition. Nguyen et al. teach the same stiff and compliant phases as required by the instant claim as set forth above. Therefore, the mechanical property of Young moduli and bulk moduli film of Nguyen et al. will be the same mechanical property as required by the instant claims. Case law has held that claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). The courts have stated that 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. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position. In the alternative that the above disclosure is insufficient to anticipate the above listed claims, it would have nonetheless been obvious to the skilled artisan to produce the claimed composition, as the reference teaches each of the claimed ingredients (stiff and complaint phase) within the claimed proportions for the same utility (composite structures).
Response to Arguments
Applicant's arguments filed 6/9/2026 have been fully considered but they are not persuasive.
Regarding the rejections over Hess, Applicant states “Hess appears to show ‘cellulose-based flexible gels’ (Abstract). However, in describing only gels, Hess only appears to show a fluid component and a network component within the fluid. Hess does not show bi-continuous components where a ratio of Young’s moduli of a stiff phase to a compliant phase is great er than 1. Applicant further states “Young’s modulus applies only to solid materials, and the fluid phase of the gel in Hess does not have a meaningful Young’s modulus.”
In response, attention is drawn to the disclosure of Hess, wherein Hess teaches cellulose enabled inorganic or polymeric composites (Abstract) in addition to the cellulose-based gels. There are many recitations within Hess that show the films are an alternative embodiment to the gels (Abstract, [0060], [0066], among others). Further, Hess teaches the compliant and stiff phases are solid materials (e.g. cellulose, aluminum oxide, etc.) as set forth the rejection above. Hess et al. teach the resulting cellulose nanomaterial film that is solid material [0063]. Additionally, Young’s modulus can be determined for gels, as evidenced by the additional references provided herewith (Peng, et al. “A Method to Determine Young’s Modulus of Soft Gels for Cell Adhesion”, Published May 30, 2009, Vol. 25, p. 565-570) and “Stiffness Hydrogel Design” (https://hydrogeldesign.org/Stiffness/).
It is for these reasons that Applicant’s arguments are not found to be persuasive.
Conclusion
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/ARRIE L REUTHER/ Supervisory Primary Examiner, Art Unit 1764
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