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 of II. in the reply filed on 1/8/2026 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)).
Applicants’ assumptions regarding claim groups and clerical error in subject matter summarization is correct. Additionally, it is noted that requirement is moot at this time in light of applicants’ amendment to cancel the non-elected claims.
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 25, 29, 32, 34-36, 41 and 43-53 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential elements, such omission amounting to a gap between the elements. See MPEP § 2172.01. The omitted elements are: The material that make-up and constitutes the rigid foam product base/matrix material within which the recited materials are included. The inclusion of a required base/matrix material is required for a cohesive rigid foam product having densities as claimed to be present as opposed to an arrangement of additive parts as currently set forth by the claims. Applicants’ disclosures require the inclusion of such a base/matrix materials in all disclosures of the invention in order to bring about a formed rigid foam product having densities as claimed that include the additive parts set forth by the claims.
Appropriate correction is required.
Claims 25, 29, 32, 34-36, 41 and 43-53 are 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.
Claims are confusing as to intent because it can not be definitively ascertained how rigid foam products as claimed can be formed under all recited arrangements allowed for by the recitations of the claims, including no upper endpoint for forest residue fiber inclusion and particularly 100% forest residue fiber inclusion. Further in this regard, the claims are confusing as to intent because the basis for the recited ranges of percent values can not be definitively determined. In that the claims do not establish a standard upon which the recited ranges of percentage are based, the ranges of amounts and relevant proportions can not be definitively determined.
Appropriate correction is required.
Claims are additionally confusing as to intent because it can not be definitively ascertained what fiber sizes are intended to be included by the claims through the recitation that the fibers are of a size defined through “mm mesh” which is a common way of describing screen openings but not fiber and/or particle sizes. Accordingly and/or additionally, it can not be determined what fiber lengths are intended to be included or excluded by the recitation that fibers of the claims have a mesh size of a most 5 mm mesh.
Appropriate correction is required.
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.
Claim(s) 25, 29, 32, 34-36, 41 and 43-53 is/are rejected under 35 U.S.C. 103 as being unpatentable over Maldas et al.(2006/0006564).
Maldas et al. discloses foamed products having a “rigid” foam structure to any degree required by the claims, including any degree imputed by the supporting disclosure, that include polymer matrix material, forest residue material as defined by the claims, polymer additive and foaming/blowing agent meeting the material requirements of applicants’ claims {see abstract, paras [0041]-[0086] and claims}.
Claims differ from Maldas et al. in that overlap of material amounts of forest, polymer and foaming/blowing agent materials is not exact. However, overlap is evident {paras [0041]-[0086]}. Accordingly, it would have been obvious for one having ordinary skill in the art before the effective date of the invention to have utilized these materials in any amounts provided for by Maldas et al. in forming the products of Maldas et al. for the purpose of imparting their identified additive and/or expansion effects in order to arrive at the products of applicants’ claims with the expectation of success in the absence of a showing of new or unexpected results.
Though densities as claimed are not particularly specified, close overlap in foaming/blowing agent inclusion are provided, along with additional means of imparting density effecting cellularity {paras [0085]-[0088]}. Accordingly, it would have been obvious for one having ordinary skill in the art before the effective date of the invention to have utilized these materials in any amounts provided for by Maldas et al. in forming the products of Maldas et al. for the purpose of imparting density imparting effects as desired in order to arrive at products having any density, including those set forth by applicants’ claims, with the expectation of success in the absence of a showing of new or unexpected results.
To the degree that difference is evident between Maldas et al. and the instant claims in regards to fiber sizes {see rejection under 35USC112 above} and aspect ratios. Overlap and/or endpoint approach/overlap is evident {para [0071]}. Accordingly, it would have been obvious for one having ordinary skill in the art before the effective date of the invention to have utilized any sizes and/or aspect ratios of the wood materials provided for by Maldas et al. in forming the products of Maldas et al. for the purpose of imparting their composite forming additive effects in order to arrive at the products of applicants’ claims with the expectation of success in the absence of a showing of new or unexpected results. Further, it is to be noted that it applies here that a prima facie case of obviousness has been held to exist where the proportions of a reference are close enough to those of the claims to lead to an expectation of the same properties. Titanium Metals v Banner 227 USPQ 773. (see also MPEP 2144.05 I).
Regarding claims 29, 32, 36, 46 and 48, additives meeting the fire retardant/additive requirements of these claims are set forth {para [0039],[0053],[0072] & [0083]}. Additionally, regarding claims 29 and 46, their inclusion for associated additive effect in any amount provided for by Maldas et al. as indicated above would have been obvious as well. Regarding claim 47, though carbonates of sodium are not particularly disclosed by Maldas et al., carbonate, including calcium carbonate which is an effective fire retardant is disclosed {para [0055]}. Accordingly, it would have been obvious for one having ordinary skill in the art before the effective date of the invention to have utilized any functionally equivalent carbonate in forming the products of Maldas et al. for the purpose of imparting their effective additive and/or flame retarding additive effect in order to arrive at the products of applicants’ claims with the expectation of success in the absence of a showing of new or unexpected results.
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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