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 .
Election/Restrictions
Applicant’s election without traverse of group I, claims 1-8 in the reply filed on September 01, 2025 is acknowledged.
Specification
A substitute specification excluding the claims is required pursuant to 37 CFR 1.125(a) because the specification recites a fungal mycelium which as indicated by applicants is a typographical error and thus should be corrected in the specification. Note that the amended to the specification filed on September 01, 2025 is improper, because definition cannot be entered as a matter of right and include terms, e.g., “not new matter…” that cannot be part of the specification, but actually can be entered as arguments in a response. Note also that the definition, i.e., Juncao, is considered new matter, because it was never part of the original specification and no evidence was supplied that Oasis No.1 is actually Juncao, nor applicants have shown what part of the translation of specification the word Juncao was incorrectly translated as “fungal mycelium.”
A substitute specification must not contain new matter. The substitute specification must be submitted with markings showing all the changes relative to the immediate prior version of the specification of record. The text of any added subject matter must be shown by underlining the added text. The text of any deleted matter must be shown by strike-through except that double brackets placed before and after the deleted characters may be used to show deletion of five or fewer consecutive characters. The text of any deleted subject matter must be shown by being placed within double brackets if strike-through cannot be easily perceived. An accompanying clean version (without markings) and a statement that the substitute specification contains no new matter must also be supplied. Numbering the paragraphs of the specification of record is not considered a change that must be shown.
The title of the invention is not descriptive for the reasons indicated above, i.e., contains the phrase “fungal mycelium.” A new title is required that is clearly indicative of the invention to which the claims are directed.
Claim Objections
Claims 1-8 are objected to because of the following informalities: the claims format is improper. The claim or claims must commence on a separate physical sheet or electronic page and should appear after the detailed description of the invention. Any sheet including a claim or portion of a claim may not contain any other parts of the application or other material. While there is no set statutory form for claims, the present Office practice is to insist that each claim must be the object of a sentence starting with "I (or we) claim," "The invention claimed is" (or the equivalent). If, at the time of allowance, the quoted terminology is not present, it is inserted by the Office of Data Management. Each claim begins with a capital letter and ends with a period. Periods may not be used elsewhere in the claims except for abbreviations. See Fressola v. Manbeck, 36 USPQ2d 1211 (D.D.C. 1995). Where a claim sets forth a plurality of elements or steps, each element or step of the claim should be separated by a line indentation, 37 CFR 1.75(i).
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-8 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The definition, i.e., Juncao, is considered new matter, because it was never part of the original specification and no evidence was supplied that Oasis No. 1 is actually Juncao, nor applicants have shown what part of the translation of specification the word Juncao was incorrectly translated as “fungal mycelium.”
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Qingyong, CN 1872514 A1, (Machine translation supplied).
With regard to claims 1-2, Qingyong teaches a process of making a medium-density fiberboard using a grass of the same family as the Oasis No. 1 (Juntao), i.e., a perennial herbaceous plant with thick and multi-jointed rhizomes, straight and tall, Napier grass stems that can branch (¶-0005]). The process including the same steps of making as claimed, i.e., the grass is cut and cleaned, cut into slices 1.4 to 4.0 cm long and 5 to 10 mm thick (¶-[0009]-[0010]); steaming at high pressure (¶-[0011]); separating the fibers, i.e., defibering (¶-[0012]); adding adhesive (¶-[0013]); drying the wet fibers including the adhesive to a moisture content between 8-10% (¶-[0014]); laying the dried fibers. Note that in this step the fibers are spread, levelled and pre-pressed (¶-[0015]and [0031]); Hot pressing the laid fibers to form the fiberboard (¶-[0016]). Qingyong as indicated above does not teach the use of Juntao, but similar grass and therefore, using Juntao as the grass of the reference would have been obvious to one of ordinary skill in the art since he/she would have reasonable expectation of success if such grass were used instead, due to the similarity of said grasses. Note also that it has been held that “[W]here two equivalents are interchangeable for their desired function, substitution would have been obvious and thus, express suggestion of desirability of the substitution of one for the other is unnecessary.” In re Fout 675 F. 2d 297, 213 USPQ 532 (CCPA 1982); In re Siebentritt, 372 F.2d 566, 152 USPQ 618 (CCPA 1967). As to the moisture content of the grass at cutting this is also considered to be within the level of ordinary skill in the art, so to cut the grass at optimal conditions.
Regarding to claim 3, Qingyong teaches the steaming of the Napier grass at 120 ºC to 160 ºC, which has a common point, but the temperature and pressure would depend on the grass type and therefore, choosing temperature and pressure for the steaming of any grass is within the levels of ordinary skill in the art and considered obvious, absent a showing of unexpected results.
With regard to claim 4, Qingyong teaches the use of urea-formaldehyde adhesive; see ¶-[0029].
Regarding to claim 5, Qingyong does not teach drying the fibers by flash drying, but this a very common drying process in the art1 and its use would have been obvious to one of ordinary skill in the art, since he/she would have reasonable expectation of success.
With regard to claim 6, Qingyong teaches pre-pressing at compressing rates of 50%, which falls within the claimed range; see ¶-[0031], which teaches that the loose board having thickness between 210-230 mm is pre-pressed to 105-115 mm by the pre-press machine.
Regarding to claim 7, Qingyong teaches hot pressing step is carried out at 175-180ºC and pressure of 14 MPa for 230 seconds to a thickness of 12 mm, which correspond 19.17 seconds/mm; see ¶-[0031]. Note that the temperature and pressure vary from grass to grass and therefore, using the claimed range for the Juntao grass is within the level of ordinary skill in the art and considered obvious absent a showing of unexpected results.
With regard to claim 8, it is known to steam grasses to be used to make fiberboard /particle board within two days to avoid mildew/mold problems.2
Claims 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Dedi et al., (hereinafter Dedi) CN 111590711 A (Machine Translation used in this office action) With or Without of Qingyong, cited above.
With regard to claims 1-2, Dedi discloses a fiberboard processing method, comprising: treating raw materials, e.g., Reed or Napier grasses, which are similar grasses as the one claimed, Juntao, such that the treated raw materials are suitable for fiberization processing; causing the raw materials to become fibers; sizing the fibers; screening the sized fibers to remove unqualified fibers; inputting the screened fibers into a slab forming machine to form a slab; and hot-pressing and cutting the slab. The fiberboard is produced simply by using Pennisetum giganteum, and Pennisetum giganteum can be cut and processed to a length of 30-100 mm. Then, a mixture is subjected to fiberization processing, for example, the mixture can be processed into a fibrous state by using a hot mill. Fibers are dried after sizing. The sized fibers can enter a drying pipeline to be dried, and the water content after drying is 8-14%. A qualified slab enters a continuous press to be hot pressed, the hot pressing process comprises multiple stages, the temperature and pressure of each stage can be precisely adjusted according to process requirements, the highest hot pressing temperature can be 230 °C, the hot pressing temperature range can be 160-230 °C, and the thickness of the pressed slab is 1.5-25 mm (see description, ¶- [0008]-[0045]).
Dedi does not teach selecting 1 to 2 year-old Juncao with a water content of 50-70%, steaming and softening the same at a high pressure, drying Juncao fibers at 120-160 °C. However, it would have been a conventional choice for a person skilled in the art to choose 1- to 2-year-old Juncao with a water content of 50-70%. Dedi discloses: steps of drying and flattening the fibers, and drying Juncao fibers at 120-160 °C and flattening the fibers are merely conventional technical means in the art, as it is shown by Qingyong, see above.
With regard to claims 4-5, it would have been conventional choices in the art for a person skilled to select the specific types of Juncao and glues and the type of a dryer. This is evidence by Qingyong which shows the use of similar grass and the use of the same type of adhesive, i.e. urea-formaldehyde; see for example ¶-[0026] of Qingyong.
With regard to claims 3 and 8, in order to achieve better fiberization of fibers, a person
skilled in the art could have easily conceived of selecting specific softening and steaming steps. This evidenced by Qingyong, see above.
With regard to claim 6, it would have been a conventional choice in the art for a person skilled in the art to select a compression rate of pre-pressing of dried Juncao fibers to be 50-70%. Note that Qingyong teaches the same compression rate and temperature range and as indicated above choosing the temperature/pressure range would vary from grass to grass and selecting the optimal conditions is within the level of ordinary skill in the art and obvious absent a showing of unexpected results.
With regard to claim 7, Dedi discloses: the hot-pressing temperature is 160-230 °C; ¶-[0035], and specific hot-pressing step parameters are merely conventional technical means in the art.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure in the art of “Grass Fiberboard and Its Preparation Method.”
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSE A FORTUNA whose telephone number is (571)272-1188. The examiner can normally be reached MONDAY- FRIDAY 11:30 PM- 9:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Abbas Rashid can be reached at 571-270-7457. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSE A FORTUNA/Primary Examiner, Art Unit 1748
JAF
1 The examiner takes official notice of this fact and will present evidence if necessary.
2 Fiberboard made from grass can have mold problems because it can absorb moisture and requires proper sealing to prevent mold growth, especially in humid environments. While some studies show 100% grass particleboard can be mold-resistant, others indicate susceptibility depending on the specific formulation and processing. To prevent mold, use water-resistant sealants and coatings, maintain low humidity, and address any water exposure promptly.