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 .
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-9, 16 and 17 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The term “reinforcing” in claim 1 is a relative term which renders the claim indefinite. The term “reinforcing” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Claims are confusing as to intent because it can not be determined what materials such as fillers, pigments, or other substantive materials are intended to be included and/or excluded by the fillers identified by claim 1 to be “reinforcing fillers” as opposed to other fillers, pigments, or other materials with any substantive make-up without the claims identifying what degree of reinforcement is intended to be included and/or excluded by this terms use in the claims.
The ambiguity is highlighted by claim 5 which introduces further allowed materials that may be, could be or, perhaps, may even not be “reinforcing” fillers to any degree that may be intended by the use of this term in the claims.
Claims are further confusing as to intent because it can not be determined based on the above identified ambiguity what amounts of filler/reinforcement filler from the standpoint of patentability are intended to be allowed for by the metes and bounds of the claims when claim 1 recites that 0% or 0.05-20% of ambiguously defined “reinforcing” filler is included, but claim 5, which is intended to further narrow claim 1, recites that the mixture of claim 1 “further comprises” materials that constitute fillers, pigments, or other materials with any substantive make-up. Accordingly, it can not be determined if claims are intended to allow for inclusion of fillers, from the standpoint of patentability, that may be considered “reinforcing” beyond the ranges recited by claim 1.
Appropriate correction is required.
For purposes of examination, claim 1 will be treated as reciting what it sets forth, and claim 5 will be treated as setting forth an additional/further limitation. However, ambiguity of the intended metes and bounds of the claims regarding material employment and intended amounts thereof remain. Accordingly, for purposes of examination, claim 5 will be treated as a further added element that is not limited by the range of values associated with the “reinforcing” filler of claim 1.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1-6, 8, 9, 16 and 17 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Grigsby(2016/0333240).
Grigsby discloses methods for forming products comprising mixing and stirring plant proteins, including soy protein and wheat gluten [note claims 3 & 16] as defined by applicants’ claims, polyphenolic tannins [note claim 2] meeting the tanning agent requirements of applicants’ claims, and water and other agents including glycerol and other denaturing agents meeting the plasticizer requirements of applicants’ claims [note claims 4 & 17] with no requirement for “reinforcing filler” to any degree that may be required by the claims {note rejection above under 35USC112}, wherein the mixing and stirring are sufficient to meet the fluidizing and kneading requirements of the claims to the degree defined by the claims, and the mixing and stirring is followed by compressing as required by applicants’ claims{see abstract, paras [0001], [0002],[0006]-[0013], [0060]-[0072], [0131]-[0138], [0263]-0282], [0525]-[0528], the Examples, including Examples 5-16, and the claims}. From the standpoint of patentability and in that any article can be further treated and/or acted upon, it is held that the formed articles of Grigsby are semi-finished to any degree required by applicants’ claims, including to any limited degree that may be afforded in any patentable sense through any definition that may be set forth by applicants’ originally filed specification {note: page 3 of the same}. Regarding claim 5 various additives, viscosity modifiers, and pH modifiers, including NaOH, and fillers, including wood fibres are disclosed to meet the requirements of this claim {see paras [0106] & [0243] and the Examples, including Examples 5 & 6}. Regarding claim 6, fluidized in water at 70°C is sufficient to meet the requirements of this claim {see Example 6}. Regarding claim 8, the various formed boards and mattresses are sufficient to meet the formed article requirements of this claim {see Examples}. Regarding claim 9, in that a finished board placed in ambient conditions will cool and begin to dry, placement in an ambient environment is the most readily envisioned place to arrange the articles formed through the operations of Grigsby, and this placement would inherently meet the cooling and drying operations to the degree claimed {see Examples]. Additionally, without specific, distinguishing dimensions, the articles of Grigsby are sufficient to meet at least the technical profile alternative requirements of this claim.
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.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Grigsby(2016/0333240) as applied to claims 1-6, 8, 9, 16 and 17 above, and further in view of TW M411171 U.
Grigsby differs from applicants’ claim in that extruders are not particularly disclosed to be utilized. However, TW M411171 U discloses utilization of extruders in hot-press article formation to be known for purposes of forming pressed/shaped articles {see page 3 of accompanying translation}. Accordingly, it would have been obvious for one having ordinary skill in the art before the effective filing date of the invention to have utilized the extruder of TW M411171 U in forming the articles of Grigsby for the purpose of providing shaping/pressing of articles formed in order to arrive at the processes of applicants’ claims with the expectation of success in the absence of a showing of new or unexpected results. Further, it would necessarily follow that employment of an extruder would include an extrusion outlet or head to any degree as required by the claims.
Response to Arguments
Applicants’ arguments have been considered. However, rejections as set forth above in reflection of amendments to the claims are maintained for the reasons set forth above.
Correction of typographical error to include claim 9 in the statement of the rejection(s) above has been made. It is clear from the PTOL-326 and specific address of claim 9 in the rejection(s) that this correction is purely typographical.
Regarding applicants’ arguments concerning rejection under 35USC102, amendments to the limits of the claims have been addressed in the body of the rejection above. Though it is held from the standpoint of patentability that Example 6 is sufficient to meet the requirements of the claims in that the adhesive without added filler is blended onto the wood fibres, establishment of anticipation in this way is not necessary because anticipation is based on the totality of Grigsby’s teaching. The totality of Grigsby’s anticipatory teaching includes the wood veneer materials adhered by its adhesives that do not require inclusion of “reinforcing” additive {see, again, paras [0256] & [0257] and Examples 5 & 10-16, as well as the claims}.
Regarding applicants’ arguments concerning rejection under 35USC103, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Applicants’ arguments do not serve to identify insufficiency in TW M411171 U’s combination with Grigsby in resolving the deficiencies of Grigsby identified in the rejection above, and at this time none is seen based on the totality of the preponderant evidence of record.
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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to John Cooney whose telephone number is 571-272-1070. The examiner can normally be reached on M-F from 9 to 6. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Heidi Riviere Kelley, can be reached on 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JOHN M COONEY/ Primary Examiner, Art Unit 1765
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