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 .
This communication responds to the application filed January 12/2023 and amended claim set filed September 05/2026. Claims 1-20 are currently pending.
Election/Restrictions
Applicant’s election of Group I, claims 1-16 in the reply filed on September 5, 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)). Claims 1-16 are under examination.
Specification
The abstract of the disclosure is objected to because the inclusion of “said” and the use of “The present invention also describes …”. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
Claim Objections
Claims 2- 6 are objected to because of the following informalities:
Claim 2, 4 and 6 are objected to because of the use of the word “ % wt “. The claim should be amended to recite “ wt% ”.
Claim 3 is objected to because of the missing word “wt ”. The claim should recite “ 80 wt% coconut fiber”.
Claim 5 is objected because of improper Markush group format. According MPEP § 2171.05(h), one acceptable form of alternative expression, which is commonly referred to as a Markush group, recites members as being “selected from the group consisting of A, B and C.” See Ex parte Markush, 1925 C.D. 126 (Comm’r Pat. 1925).
Appropriate correction is required.
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 4-6 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.
Claim 1 recites the limitation “at least one polymer, and at least one composite additive”. Claims 4-6 recite the limitation "polymer", “composite additives”. The claims 4-6 are considered indefinite without the “at least one” language preceding the limitation in all dependent claims. The claims should be amended to recite "at least one polymer”, “ at least one composite additive”.
Claim 5 recites the limitation “ wherein the polymer is selected from a group consisting of latex, natural resin, resin and polymer additives”, which causes confusion because it is not clear what the applicant means by “resin” and “polymer additive”. In view of the specification the term “resin” is interpreted as “synthetic resin” ([0023]-[0024] of US PG Pub. 20230183487 A1). The term “polymer additive” is not defined by the specification, and as such, the term “polymer additive” will be given the broadest reasonable interpretation. Absent a definition in the specification, the term "polymer additive" is considered “ a substance added to modify the properties of a polymer”. The polymer additive is not necessarily a polymer. Does the applicant intent the polymer additive to be a polymer?.
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 1-5,7, 9, 11-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Carruba et al., hereinafter Carruba (US PG Pub 2013/0178561 A1).
Regarding claims 1 and 15, Carruba discloses a composite board manufactured from coconut coir fibers, an a binder being selected from the group consisting of i) a thermoplastic resin selected from the group consisting of olefin homopolymers, olefin copolymers, polyvinyl chloride, polyvinylidene chloride, polystyrene, and mixtures thereof; ii) a thermoset resin (abstract and claims 1, 23-24), thereby reading on the composition comprising coconut fibers and a polymer; wherein the composition further comprises a filler (claim 1, [0018], [0021], [0061]) and additives such as colorants, plasticizers [0017], UV stabilizers, antifungal agents, lubricants, carbide and nitride ceramics ([0019]-[0022],[0027]), as required by the instant claim. This disclosure of the claimed subject matter is sufficiently specific to constitute anticipation under 35 USC 102.
Regarding claims 2-4, Carruba discloses a composition comprising from 20% to 80% by weight of a mixture of coconut coir fibers and filler, based on the total weight of the mixture, with from 20% to 80% by weight of said thermoplastic resin to form said mixture (claim 7, [0061]- [0062]). Carruba further exemplifies a composition comprising 35% by weight recycled polyethylene as a binder, and 65% by weight of vegetable fibers. The vegetable fibers contained a mixture of coconut coir fibers and bamboo fibers; or coconut coir fibers in the absence of bamboo fibers (Example, [0074]), as required by the instant claim.
Regarding claim 5, Carruba discloses a composition comprising a binder selected from thermoplastic resin, thermoset resin (claim 1, 10-13), as required by the instant claim.
Regarding claim 7, The statement “ wherein the composition is a thermos-acoustic insulation composition” is considered as intention of use. While, Carruba does not disclose that the coconut fiber composition is used as a thermos-acoustic insulation composition, it is noted that the composition of Carruba is substantially identical to the claimed invention. Therefore, the coconut fiber composition of Carruba is presumed to be suitable for use as a board and thermo-acoustic insulation.
Regarding claim 9, Carruba discloses a composition to manufacture a composite board as discussed in the rejection of claim 1 (see paragraph 10, [0074]).
Regarding claim 11, Carruba discloses the composition is fire retardant [0072], as required by the instant claim.
Regarding claim 12, Carruba discloses the composition is resistant to mold and water resistant because coir fibers are hydrophobic ([0069]-[0070]), as required by the instant claim.
Regarding claim 13, Carruba discloses a composition substantially identical to the claimed invention. Although Carruba is silent on the composition being hypo-allergenic; in view of the substantially identical composition of Carruba, the composition of Carruba will possess the claimed property because “ hypo-allergenic” is an inherent property. Because the PTO does not have proper means to conduct experiments, the burden of proof is now shifted to Applicant to show otherwise. (See In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977); In re Fitzgerald, 205 USPQ 594 (CCPA 1980).)
Regarding claim 14, Carruba discloses the composition is resistant to termites and other insects, [0073], thereby reading on the composition is insect resistant. Further, in view of the substantially identical composition of Carruba, the composition of Carruba will possess he claimed properties because “ dust mite resistant and antimicrobial” are inherent properties. Because the PTO does not have proper means to conduct experiments, the burden of proof is now shifted to Applicant to show otherwise. (See In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977); In re Fitzgerald, 205 USPQ 594 (CCPA 1980).).
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 6 is rejected under 35 U.S.C. 103 as being unpatentable over Carruba (US PG Pub 2013/0178561 A1).
Regarding claim 6,Carruba teaches the coconut fiber composition of claim 1 as set forth above and it is incorporated herein by reference. Carruba further teaches the additives provide the composite board improved properties such as color, strength and density (fillers), resistance to degradation (UV stabilizers), resistance to mold (antifungals agents), scratch resistance (hard mineral fillers), processing (lubricants)([0017]-[0022].
Carruba is silent on the content of composite additives.
However, Carruba’s disclosure would have indicated to one of ordinary skill in the art before the effective filing date of the claimed invention that the amount of additives (variables) in the composition determine (affect) the strength, resistance to degradation, processability, scratch resistance, resistance to mold, (properties) of the final product. Thus, the amount of additives would be considered a result effective variable by one of ordinary skill in the art before the effective filing date of the claimed invention. As such, without showing unexpected results, the claimed amount of additives cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the amount of additives present in the coconut fiber composition of Carruba to reach the desired properties, since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (See MPEP 2144.05(b).). In re Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012) ("A recognition in the prior art that a property is affected by the variable is sufficient to find the variable result-effective."). In re Boesch, 617 F.2d 272, 276 (CCPA 1980) ("[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.")
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Carruba (US PG Pub 2013/0178561 A1) in view of Lalancette (US 2008/0203604).
Regarding claim 10, Carruba teaches the coconut fiber composition of claim 1 as set forth above and it is incorporated herein by reference. Carruba teaches a composite board comprising coconut fibers and a binder is prepared by spraying the resin onto the coir fibers, followed by compression molding under pressures between two and three megapascals and temperatures between 140°C and 220° C. This process sets and hardens the thermosetting resin. The resulting boards are then cooled, trimmed and sanded ([0063], claim 9).
Carruba is silent on the density of the board.
However, Lalancette teaches composite boards comprising non-wood plant fibers (title), including coconut fibers [0017],[0029], claim 18) and a binder (claim 1, 26), wherein the density of a board is modified by changing the processing conditions, that include the amount and type of resin and lignocellulosic fiber type and composition used, and the pressure under which the composite mixture is compressed while the resin is being cured [0005]. Lalancette further teaches the board composite has a density between 100 to about 1000 kg/m3 ([0037], claim 3). ] It would have been obvious to one of ordinary skill in the art at the time of the invention to form board composition according to Carruba having a density of 100-1000 kg/m3, as Lalancette demonstrates this range as being suitable for similar board compositions. This represents the use of a suitable range of density in a similar coconut fiber board composition application. "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416-21 (2007). See MPEP 2141. Further, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).) It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range taught by Carruba in view of Lalancette.
Claims 8 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Carruba (US PG Pub 2013/0178561 A1) in view of Welteke et al., hereinafter Welteke (EP0808953).
Carruba teaches the coconut fiber composition of claim 1 and 7 as set forth above and it is incorporated herein by reference.
Regarding claims 8 and 16, Carruba is silent on the insulation material comprising the composition. Carruba is further silent on the density of the thermos-acoustic insulation composition.
However, Welteke teaches an thermo-acoustic insulation material [0008] comprising natural fibers including coconut fibers and binder (claim 1), wherein the insulation material is pressed into insulation boards with a density of 40-110 kg/m3 and it can be also used as loose insulating material with a density of 25- 60 kg/m3(claims 2-3). Thus, Welteke demonstrates that a pressed composition containing coconut fibers and binder can provide a thermo-acoustic insulation material having a low density. Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form a thermo-acoustic insulation composition according to Carruba having a density of 25- 60 kg/m3 or 40-110 kg/m3 , as Welteke demonstrates this range as being suitable for thermo-acoustic insulation compositions. This represents the use of a suitable range of density in a thermo-acoustic insulation composition application. See MPEP 2141. Further, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).) It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range taught by Carruba in view of Welteke.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OLGA L. DONAHUE whose telephone number is (571)270-1152. The examiner can normally be reached M-F 8:00-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, JOSEPH DEL SOLE can be reached at 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/OLGA LUCIA DONAHUE/Examiner, Art Unit 1763 /JOSEPH S DEL SOLE/Supervisory Patent Examiner, Art Unit 1763
