DETAILED ACTION
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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 June 2, 2026 has been entered.
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.
Claims 1, 2, 5, 6, and 8 – 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 6,029,395 to Morgan.
Regarding Claim 1. Morgan teaches a foam slurry composition comprising fibers, i.e. at least one fiber component; a binder; a surfactant as a foaming agent; and an aqueous medium as a dispersant (Column 4, Lines 8 – 9; Column 4, Lines 23 – 24 and 40 – 42). The binder may specifically be beeswax or paraffin wax (Column 3, Lines 52 – 53; and Column 4, Lines 25 – 26). Morgan further teaches homogeneously mixing the aforementioned components (Column 4, Lines 36 – 39) and thus it would be reasonably expected that these components are uniformly dispersed throughout a matrix corresponding to the foam product.
While Morgan does not expressly characterize the foam matrix as moisture resistant, Morgan does teach the beeswax and paraffin wax binders are water-resisting (Column 3, Lines 40 – 54). Moreover, Morgan teaches a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process, i.e. a cellulose-based foam including two of the claimed species of the at least one wax binder which is evenly distributed throughout the foam matrix (Column 4, Lines 36 – 39). According to the original specification, a cellulose-based foam material using wax binders integrated as part of the foam, and not as a coating, is moisture resistant [0025]. Therefore, the claimed effects and physical properties, i.e. a foam matrix that is moisture resistant, would implicitly be achieved in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. See In Re Spada, 911, F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process.
Regarding Claim 2. Morgan teaches the foam composition of Claim 1 wherein the fiber component may be based on wood pulp or shredded wood (Column 2, Lines 52 – 56).
Regarding Claims 5 and 6. Morgan teaches the foam composition of Claim 1 wherein the at least one foaming agent may be sorbitan monostearate (Column 4, Lines 58 – 60), which is a non-ionic sorbitan fatty ester surfactant.
Regarding Claims 8 and 9. Morgan teaches the foam composition of Claim 1 but does not expressly teach it has increased thermal or acoustic insulative properties when compared to a foam composition not comprising at least one wax binder. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Morgan teaches a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process, including the instantly claimed wax binder. Therefore, the claimed effects and physical properties, i.e. a foam composition which has increased thermal and acoustic insulative properties when compared to a foam composition not comprising at least one wax binder, would implicitly be achieved in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. See In Re Spada, 911, F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process.
Regarding Claims 10 – 12. Morgan teaches a foam product and an article of manufacture prepared from the foam composition of Claim 1 and 7 (Column 4, Lines 8 – 9).
Morgan does not expressly characterize the foam product as moisture resistant, stable, dense, or having a higher rigidity than foams produced without a dispersing agent. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Morgan teaches a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. Therefore, the claimed effects and physical properties - i.e. a foam product that is moisture resistant, stable, dense, and which has a higher rigidity than a foam produced without a dispersing agent - would implicitly be achieved in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. See In Re Spada, 911, F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process.
Claim 23 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 6,029,395 to Morgan.
Regarding Claim 23. Morgan teaches a foam composed of fibers, i.e. at least one fiber component; a binder; a surfactant as a foaming agent; and an aqueous medium as a dispersant (Column 4, Lines 8 – 9; Column 4, Lines 23 – 24 and 40 – 42). The binder may specifically be beeswax or paraffin wax (Column 3, Lines 52 – 53; and Column 4, Lines 25 – 26). Morgan further teaches homogeneously mixing the aforementioned components (Column 4, Lines 36 – 39) and thus it would be reasonably expected that these components are uniformly dispersed throughout a matrix corresponding to the foam product.
While Morgan does not expressly characterize the foam and foam matrix as moisture resistant, Morgan does teach the beeswax and paraffin wax binders are water-resisting (Column 3, Lines 40 – 54). Moreover, Morgan teaches a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process, i.e. a cellulose-based foam including two of the claimed species of the at least one wax binder which is evenly distributed throughout the foam matrix (Column 4, Lines 36 – 39). According to the original specification, a cellulose-based foam material using wax binders integrated as part of the foam, and not as a coating, is moisture resistant [0025]. Therefore, the claimed effects and physical properties, i.e. a foam and foam matrix that is moisture resistant, would implicitly be achieved in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. See In Re Spada, 911, F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process.
Claim Rejections - 35 USC § 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 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, 2, and 5 – 14 are rejected under 35 U.S.C. 103 as being unpatentable over US 2020/0308359 to Glenn et al. (hereinafter Glenn) in view of US 6,029,395 to Morgan.
Regarding Claim 1. Glenn teaches a foam composition comprising at least one fiber component, at least one binder, a surfactant which serves as a foaming agent, and at least one dispersant [0012]. The foaming agent and/or dispersant effectively separate the fibers such that they are uniformly dispersed in the foam matrix [0052].
Glenn teaches the binder may be a wax [0049] but does not expressly teach it corresponds to one of the claimed species. However, Morgan teaches the concept of providing beeswax and paraffin wax as binders in foam compositions (Column 3, Lines 52 – 53; and Column 4, Lines 25 – 26). Glenn and Morgan are analogous art as they are from the same field of endeavor, namely foam compositions based on fibers. Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to provide beeswax or paraffin wax as the binder in Glenn. The motivation would have been that it has been held that it is obvious to select a known material based on its suitability for its intended use. See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945); In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960); and MPEP 2144.07. In the instant case, Morgan shows that beeswax and paraffin wax are known in the art as binders for foam compositions based on fibers. Moreover, Morgan teaches these particular binders are water-resisting (Column 3, Lines 40 – 54).
The references do not expressly teach the foam obtained by their combination is moisture resistant. However, Glenn, when modified with Morgan in the manner proposed, teaches a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process, i.e. a cellulose-based foam including one of the claimed species of the at least one wax binder (beeswax or paraffin wax) which is evenly distributed throughout the foam matrix. According to the original specification, a cellulose-based foam material using wax binders integrated as part of the foam, and not as a coating, is moisture resistant [0025]. Therefore, the claimed effects and physical properties, i.e. a foam matrix that is moisture resistant, would implicitly be achieved in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. See In Re Spada, 911, F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process.
Regarding Claim 2. Glenn teaches the foam composition of Claim 1 wherein the fiber component may be crop waste fibers, wood, lignocellulosic fibers, or a fiber crop [0047].
Regarding Claim 5. Glenn teaches the foam composition of Claim 1 wherein the foaming agent preferably corresponds to an anionic or cationic surfactant [0051].
Regarding Claim 6. Glenn teaches the foam composition of Claim 1 wherein a preferred foaming agent is sodium dodecyl sulfate [0051].
Regarding Claim 7. Glenn teaches the foam composition of Claim 1 wherein preferred dispersants include polyvinyl alcohol (PVA); pregelatinized starches; carboxymethyl cellulose, hydroxymethylcellulose, and their derivatives; and water-soluble viscosity modifiers [0054].
Regarding Claims 8 and 9. Glenn teaches the foam composition but does not expressly teach it has increased thermal or acoustic insulative properties when compared to a foam composition not comprising at least one wax binder. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Glenn, when modified by Morgan in the manner proposed, teaches a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. Therefore, the claimed effects and physical properties, i.e. a foam composition which has increased thermal and acoustic insulative properties when compared to a foam composition not comprising at least one wax binder, would implicitly be achieved in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. See In Re Spada, 911, F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process.
Regarding Claims 10 – 12. Glenn teaches a foam product and an article of manufacture prepared from the foam composition of Claim 1 and 7 ([0012]; [0049]; [0052]; and [0054]). Glenn teaches the foam products obtained are stable [0018].
Glenn does not expressly further characterize the foam product as moisture resistant, dense, or having a higher rigidity than foams produced without a dispersing agent. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Glenn, when modified by Morgan in the manner proposed, teaches a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. Therefore, the claimed effects and physical properties - i.e. a foam product that is moisture resistant, dense, and having a higher rigidity than a foam produced with a dispersing agent - would implicitly be achieved in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. See In Re Spada, 911, F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process.
Regarding Claim 13. Glenn teaches the article of manufacture of Claim 12 may be compression molded [0045].
Regarding Claim 14. Glenn teaches the article of manufacture of Claim 12 may be a packing material for a shipping container [0035].
Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over US 2020/0308359 to Glenn et al. (hereinafter Glenn) in view of US 6,029,395 to Morgan.
Regarding Claim 23. Glenn teaches a foam composition composed of at least one fiber component, at least one binder, a surfactant which serves as a foaming agent, and at least one dispersant [0012]. The foaming agent and/or dispersant effectively separate the fibers such that they are uniformly dispersed in the foam matrix [0052].
Glenn teaches the binder may be a wax [0049] but does not expressly teach it corresponds to one of the claimed species. However, Morgan teaches the concept of providing beeswax and paraffin wax as binders in foam compositions (Column 3, Lines 52 – 53; and Column 4, Lines 25 – 26). Glenn and Morgan are analogous art as they are from the same field of endeavor, namely foam compositions based on fibers. Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to provide beeswax or a paraffin wax as the binder in Glenn. The motivation would have been that it has been held that it is obvious to select a known material based on its suitability for its intended use. See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945); In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960); and MPEP 2144.07. In the instant case, Morgan shows that beeswax and paraffin wax are known in the art as binders for foam compositions based on fibers. Moreover, Morgan teaches these particular binders are water-resisting (Column 3, Lines 40 – 54).
The references do not expressly teach the foam or foam matrix obtained by their combination is moisture resistant. However, Glenn, when modified with Morgan in the manner proposed, teaches a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process, i.e. a cellulose-based foam including one of the claimed species of the at least one wax binder (beeswax or paraffin wax) which is evenly distributed throughout the foam matrix. According to the original specification, a cellulose-based foam material using wax binders integrated as part of the foam, and not as a coating, is moisture resistant [0025]. Therefore, the claimed effects and physical properties, i.e. a foam and foam matrix that is moisture resistant, would implicitly be achieved in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. See In Re Spada, 911, F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process.
Response to Arguments
Applicant's arguments filed May 6, 2026 have been fully considered. Applicant argues that Glenn does not teach any of the species of wax binder now claimed. The Office agrees and accordingly has withdrawn the outstanding rejections under 35 U.S.C. 102(a)(1) in view of Glenn.
However, the instant application is not in condition for allowance in light of the new grounds of under 35 U.S.C. 102(a)(1) over US 6,029,395 to Morgan and under 35 U.S.C. 103 over Glenn in view of US 6,029,395 to Morgan. As detailed in the corresponding rejections above, Morgan teaches the concept of providing beeswax and paraffin wax as binders in foam compositions (Column 3, Lines 52 – 53; and Column 4, Lines 25 – 26).
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MELISSA RIOJA whose telephone number is (571)270-3305. The examiner can normally be reached Monday - Friday 10:00 am - 6:30 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie Lanee Reuther can be reached at (571)270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MELISSA A RIOJA/Primary Examiner, Art Unit 1764
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