DETAILED ACTION
This Office Action is in response to the Amendment filed on 1/20/2026. Claims 1-15 are pending in the application. Claims 7-15 are withdrawn due to a previous restriction requirement.
The previous objections to the Drawings, the previous objection to claim 5 and the previous 35 USC 112 rejections of claims 1-6 are withdrawn in light of Applicant’s amendment and remarks.
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.
Claim 1 is 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.
Amended claim 1 now recites “both the at least one stiff phase and the at least one complaint phase are solid materials.” However, the requirement that both the stiff phase and compliant phase are solid materials is not described in the specification in such a way to reasonably convey that the inventors had possession of the claimed invention. The claim fails to comply with the written description requirement.
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).
The disclosure of Hess et al. is adequately set forth on pages 6-7 of the Office Action dated 10/23/2025 and is incorporated herein by reference.
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.
Response to Arguments
Applicant's arguments filed 1/20/2026 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 multiple solid components that form an interpenetrating network.”
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].
It is for these reasons that Applicant’s arguments are not found to be persuasive.
Conclusion
THIS ACTION IS MADE FINAL. 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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/ARRIE L REUTHER/ Supervisory Primary Examiner, Art Unit 1764