DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. 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
2. The amendment filed by Applicant on February 19, 2026 has been fully considered. The amendment to instant claims 1 and 9 is acknowledged. Specifically, claim 1 has been amended to recite the limitations of the hardwood chemical pulp having a wall thickness of 3.0 to 7.0 µm and comprising kraft pulp made from maple, Fagus crenata or Aspen. These limitations in their combination were not previously presented and were taken from instant specification. In light of the amendment, all previous rejections are withdrawn. The new grounds of rejections necessitated by Applicant’s amendment are set forth below. Thus, the following action is properly made final.
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.
3. Claims 1, 3-7, 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Takaoka et al (JP 2013-107987, based on translation submitted in IDS on 01/30/23) in view of Kavalew et al (US 2013/0186580).
4. Takaoka et al discloses a composition for making molded articles ([0008]) comprising:
A) a thermoplastic resin including polypropylene or a biodegradable resin, such as polylactic acid resin or polybutylene succinate resin ([0014]-[0015], as to instant claims 3-7);
B) 10-90%wt ([0017]) of a cellulose powder which is a chemical woody pulp that is pulverized to have particle size of 20 micron or more ([0011]-[0012], [0009], as to instant claims 1, 9).
Specifically exemplified is a hardwood pulp pulverized to prepare powder with a mean particle diameter of 32 micron (Example 1, [0022]).
5. Based on the teachings of Takaoka et al, it would have been obvious to a one of ordinary skill in the art to choose and use chemical woody pulp as the pulp for pulverization and further use it as the component B) in the composition of Takaoka et al as well, since it would have been obvious to choose material based on its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958).
6. All ranges in the composition of Takaoka et al are overlapping with the corresponding ranges of those as claimed in instant invention. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
7. Takaoka et al does not specify the wood pulp used for pulverizing being derived from maple or aspen raw material and having fiber width of 1-25 micron and a wall thickness of 3-7 micron.
8. However, Kavalew et al disclose a hardwood pulp fiber composite comprising 30-90%wt ([0123]) of chemical hardwood pulp ([0075]) having fiber width of 14.15 micron or less (as to instant claim 10) and wall thickness of about 5.98 micron ([0041]), or less than 5.94 micron ([0130], as to instant claims 9-10), further in combination with resins including dry strength resins and polyesters ([0207]), wherein the hardwood pulp fibers are chemical craft pulps ([0075]) derived from Maple or Aspen ([0076]).
Based on the teachings of Kavalew et al, it would have been obvious to a one of ordinary skill in the art to choose and use hardwood kraft pulp fibers having wall thickness of about 5.98 micron, made from Aspen or Maple in amount of 80%wt or 90%wt, further in combination with resins, such as polyesters, to form the fibrous structures, since it would have been obvious to choose material based on its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045).
9. Since 1) Takaoka et al discloses the use of hardwood chemical pulp to make the pulverized product of the component B) used in combination with thermoplastic resins including polyesters (e.g. polybutylene succinate) of the component A), but does not specify said hardwood pulp being derived from Maple or Aspen and having wall thickness of 3-7 micron, and 2) Kavalew et al teaches the use of hardwood kraft pulp fibers having wall thickness of about 5.98 micron, made from Aspen or Maple to be used in combination with resins, including polyesters, to form fibrous structures, therefore, based on the combined teachings of Kavalew et al and Takaoka et al, it would have been obvious to a one of ordinary skill in the art to choose and use the hardwood chemical pulp made of Aspen or Maple of Kavalew et al to form the pulverized cellulose powder component B) in the composition of Takaoka et al, since such Aspen-based or Maple-based kraft pulp is taught in the art as being used in combination with resins such as polyesters to form fibrous structures and it would have been obvious to choose material based on its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958). The key to supporting any rejection under 35 USC 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 USC 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141
10. All ranges in the composition of Takaoka et al in view of Kavalew et al are overlapping with the corresponding ranges of those as claimed in instant invention. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
11. Claims 1, 3-10 are rejected under 35 U.S.C. 103 as being unpatentable over Takaoka et al (JP 2013-107987, based on translation submitted in IDS on 01/30/23) in view of Kavalew et al (US 2013/0186580) and Uemura et al (JP 2017-137470, based on translation submitted in IDS on 01/30/23).
12. The discussion with respect to Takaoka et al in view of Kavalew et al set forth in paragraphs 3-10 above, is incorporated here by reference.
13. Though Takaoka et al teaches the composition further comprising a compatibilizer ([0018]), Takaoka et al does not recite the amount of added compatibilizer.
14. However, Uemura et al disclose a thermoplastic resin composition comprising a thermoplastic resin including a polypropylene ([0015]) and 5-70 pbw of cellulose wood pulp product [0009]) and further 4-20 pbw of a compatibilizer ([0009], [0031]), wherein said compatibilizer improves dispersibility of the cellulose pulp product and stabilizes the interface between the cellulose product and the thermoplastic resin ([0025]).
15. Since both Takaoka et al and Uemura et al are related to compositions based on thermoplastic resins, cellulose/wood pulp products and compatibilizer, used for making molded articles, and thereby belong to the same field of endeavor, wherein Uemura et al specifies the compatibilizer being used in amount of 4-20 pbw to improve dispersibility of said cellulose product and to stabilize the interface between the cellulose product and the thermoplastic resin, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Takaoka et al and Uemura et al, and to use, or obvious to try to use the compatibilizer in the composition of Takaoka et al in amount of 4-20 pbw, since the compatibilizer in such amount is taught in the art to improve dispersibility of the cellulose product in the thermoplastic resin and to stabilize the interface between the cellulose product and the thermoplastic resin in the composition of Takaoka et al as well, and since it would have been obvious to choose material based on its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045).
Response to Arguments
16. Applicant's arguments filed on February 19, 2026 have been fully considered but they are moot in light of new grounds of rejections set forth above.
17. In addition, it is noted that:
1) The above rejections are based on the combination of references. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
2) Kavalew et al (US 2013/0186580) is a secondary reference, which was applied for the specific teachings. Secondary reference does not need to teach all limitations. “It is not necessary to be able to bodily incorporate the secondary reference into the primary reference in order to make the combination.” In re Nievelt, 179 USPQ 224 (CCPA 1973).
3) Though some of the claimed limitations are not specifically exemplified by Takaoka et al (JP 2013-107987, based on translation submitted in IDS on 01/30/23) or Kavalew et al (US 2013/0186580), this does not negate a finding of obviousness under 35 USC 103 since a preferred embodiment such as an example is not controlling. Rather, all disclosures “including unpreferred embodiments” must be considered. In re Lamberti 192 USPQ 278, 280 (CCPA 1976) citing In re Mills 176 USPQ 196 (CCPA 1972).
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 IRINA KRYLOVA whose telephone number is (571)270-7349. The examiner can normally be reached 9am-5pm EST M-F.
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/IRINA KRYLOVA/Primary Examiner, Art Unit 1764
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