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 of Group I, claims 1-16, 18-20, and 22-28 in the reply filed on 6 May 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Claims 17 and 21 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 6 May 2026.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 31 March 2023 was filed. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the Office.
The information disclosure statement (IDS) submitted on 7 July 2023 was filed. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the Office.
The information disclosure statement (IDS) submitted on 11 June 2025 was filed. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the Office.
Claim Rejections - 35 USC § 102
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 1-9, 11-14, 18, 22, 25, and 28 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by “Trembly et al. (WO 201187562, hereinafter referred to as “Trembly”).
As to Claims 1-5, 11, 14, and 18: Trembly teaches a composition consisting of 60 wt% coal and the remainder being HDPE (Table 8). Trembly further teaches that the coal can be bituminous with a size of about 5 microns or a mesh size of about 4800M [0039].
As to Claims 6-9: Trembly teaches the composition of claims 1 (supra). Trembly further teaches that Pittsburgh No. 8 Coal (i.e., the same coal cited in the instant claim 16) has great performance due to its high surface are to volume ratio (i.e., high aspect ratio) [0117]. As it is the same coal recited in the instant specification it is considered to have the same average aspect ratio.
As to Claim 12: Trembly teaches the composition of claim 1 (supra). The instant claim reads as a product-by-process claim and is therefore considered for the structure and not the specific process steps. See MPEP § 2113. Accordingly, Trembly is considered to teach a composition which would result in the same final product.
As to Claim 13: Trembly teaches the composition of claim 1 (supra). The instant claim reads as a product-by-process claim and is therefore considered for the structure and not the specific process steps. See MPEP § 2113. Accordingly, Trembly is considered to teach a composition which would result in the same final product.
As to Claim 22: Trembly teaches the composition of claim 1 (supra). Trembly teaches the composition can further include a thermal stabilizer [0041].
As to Claim 25: Trembly teaches the composition of claim 1 (supra). The instant claim reads as a product-by-process claim and is therefore considered for the structure and not the specific process steps. See MPEP § 2113. Accordingly, Trembly is considered to teach a composition which would result in the same final product.
As to Claim 28: Trembly teaches the composition of claim 1 (supra). Trembly further teaches that a mixture of different coals can be used [0039].
Claims 1, 10, 26, and 27 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by DeVallance et al. (Journal of Elastomers and Plastics 2016, Vol. 48(6) 510-522, from the IDS dated 11 June 2025, hereinafter referred to as “DeVallance”).
As to Claims 1, 10, 26, and 27: DeVallance teaches a composition comprising 15% wood, 25% Biochar, 56% polypropylene, and 4% lubricant (Table 1). Wherein the biochar has been passed through a 1 mm mesh (Materials and sample preparation).
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.
Claims 15 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over “Trembly et al. (WO 201187562, hereinafter referred to as “Trembly”).
As to Claim 15: Trembly teaches the composition of claim 1 (supra).
Trembly does not teach an example comprising PVC.
However, Trembly teaches that PVC is a known thermoplastic resin for use as WPC materials which the CPC materials are trying to replace [0123]. Further Trembly teaches that the polymer materials include thermoplastic resins such as polyethylene [0038]. At the time of filing, it would have been obvious to a person having ordinary skill in the art to use PVC in place of the HDPE of Trembly with 60% coal and 40% PVC because Trembly teaches PVC is a known thermoplastic resin and teaches that any thermoplastic resins can be used [0038, 0123].
As to Claim 16: Trembly renders obvious the composition of claim 15 (supra). Trembly further teaches that the coal can be Pittsburgh no. 8 coal [0048].
Claims 19-20, 22-24 are rejected under 35 U.S.C. 103 as being unpatentable over “Trembly et al. (WO 201187562, hereinafter referred to as “Trembly”) in view of Mohanty et al. (US2017/0107334, hereinafter referred to as “Mohanty”).
As to Claims 19 and 20: Trembly teaches the composition of claim 18 (see above).
Trembly does not teach the composition further includes flame retardants.
However, Mohanty teaches that a carbon-based composite composition can include flame retardants such as talc in an amount of about 10% [0040, 0067-0068]. Trembly and Mohanty are analogous art in that they are from the same field of endeavor, namely carbon-based composite materials. At the time of filing, it would have been obvious to a person having ordinary skill in the art to add the talc of Mohanty in an amount of 10% to the composition of Trembly in order to increase the fire resistance of the composition [0040, 0067-0068].
As to Claims 22 and 23: Trembly teaches the composition of claim 1 (see above).
Trembly does not teach the composition further includes a foaming agent.
However, Mohanty teaches that a carbon-based composite composition can include surfactants in an amount of less than 10% [0092-0093]. Trembly and Mohanty are analogous art in that they are from the same field of endeavor, namely carbon-based composite materials. At the time of filing, it would have been obvious to a person having ordinary skill in the art to add the surfactant of Mohanty in an amount of less than 10% to the composition of Trembly [0092-0093].
As to Claim 24: Trembly and Mohanty render obvious the composition of claim 23 (supra).
Trembly does not teach an example comprising PVC.
However, Trembly teaches that PVC is a known thermoplastic resin for use as WPC materials which the CPC materials are trying to replace [0123]. Further Trembly teaches that the polymer materials include thermoplastic resins such as polyethylene [0038]. At the time of filing, it would have been obvious to a person having ordinary skill in the art to use PVC in place of the HDPE of Trembly with 60% coal and 40% PVC because Trembly teaches PVC is a known thermoplastic resin and teaches that any thermoplastic resins can be used [0038, 0123] and further include the talc or surfactant of Mohanty.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-16, 18-20, and 22-28 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. 12,584,017. Although the claims at issue are not identical, they are not patentably distinct from each other because both are drawn to polymer composites comprising overlapping amounts of polymer and carbon as well as the size of the carbon particles.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW J OYER whose telephone number is (571)270-0347. The examiner can normally be reached 9AM-6PM EST M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at (571)272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Andrew J. Oyer/Primary Examiner, Art Unit 1767
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