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 .
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, and 5 – 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2020/0308359 to Glenn et al. (hereinafter Glenn).
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 binder may be a soy wax [0049]. The foaming agent and/or dispersant effectively separate the fibers such that they are uniformly dispersed in the foam matrix [0052].
While Glenn does not expressly characterize the foam matrix as moisture resistant, Glenn does teach the disclosed wax binders improve and/or confer moisture resistance ([0049] and [0059]). Moreover, Glenn 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 (soy wax) which is evenly distributed throughout the foam matrix [0049]. 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 of Claim 1 comprising at least one binder which may specifically be a wax [0049] 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 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 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].
Response to Arguments
Applicant's arguments filed January 20, 2025 have been fully considered. The Office responds as follows:
Election/Restrictions
Applicant’s acknowledgement of the finality of the Restriction requirement of July 15, 2025 and withdrawal of Claims 15 – 22 from further consideration is noted.
Information Disclosure Statement
Applicant’s identification of the correct publication number of US 2020/0308359 (instead of US 2002/0308359) on the Information Disclosure Statement of July 10, 2024 is noted. The Office agrees that no new Information Disclosure Statement need be filed, as US 2020/0308359 was cited by the Office on the PTO-892 mailed October 20, 2025.
Claim Objections
The Office agrees that the amendments to the claims are sufficient to overcome the outstanding claim objections. Accordingly, all claim objections have been withdrawn.
Remarks regarding 35 U.S.C. 112(b)
Applicant’s arguments with respect to the outstanding rejection of Claim 4 under 35 U.S.C. 112(b) are found persuasive. Accordingly, this rejection has been withdrawn.
The Office additionally agrees that the amendment to Claim 6 is sufficient to overcome the outstanding rejection of this claim under 112(b). Accordingly, this rejection has also been withdrawn.
Remarks regarding 35 U.S.C. 112(d)
The Office agrees that the amendments to the claims are sufficient to overcome the outstanding rejection of under 112(d). Accordingly, this rejection has also been withdrawn.
Remarks regarding 35 U.S.C. 102(a)(1)
Applicant argues that Glenn does not teach or suggest that the foam compositions are moisture resistant or comprise one of the claimed species of wax binder. Applicant notes [0010] of the instant specification teaches the foams prepared in Glenn “had limited resistance to water contact” which is “due to moisture vulnerability of the binder”.
However, the Office respectfully submits that Glenn does teach at least one of the instantly claimed species of wax binder, namely soy wax (see [0049] of Glenn). 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. Id. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) Thus, the soy wax binder taught by Glen must function equivalently to the claimed soy wax binder.
Glenn also expressly teaches the disclosed wax binders improve and/or confer moisture resistance ([0049] and [0059]). Moreover, Glenn 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 (soy wax) which is evenly distributed throughout the foam matrix [0049]. 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).
The outstanding rejection under 35 U.S.C. 102(a)(1) has consequently been maintained.
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.
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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/MELISSA A RIOJA/Primary Examiner, Art Unit 1764