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 Office Action is in response to Applicant’s response to a Nonfinal rejection filed March 13, 2026.
Examiner’s Note:
The examiner notes that the claims submitted on 3/13/26 were non-compliant. The claims must be resubmitted in compliant form in any subsequent response from the Applicant. See the objection below for details pertaining to 37 CFR 1.126. The claims of 3/13/26 should have included the same claim 8 as was present in on 10/02/23, albeit with status identifier “canceled”. It is not appropriate to delete a claim.
The previous 112(b) rejection of claims 2 and 6 are withdrawn due to Applicant’s amendments.
Claims 1-7 and 9-16 are pending.
This Action is FINAL.
Claim Objections
The numbering of claims is not in accordance with 37 CFR 1.126 which requires the original numbering of the claims to be preserved throughout the prosecution. When claims are canceled, the remaining claims must not be renumbered. When new claims are presented, they must be numbered consecutively beginning with the number next following the highest numbered claims previously presented (whether entered or not).
Misnumbered claims 8-15 have been renumbered 9-16. The applicant must submit new claims in a next response with this corrected numbering and also include “Claim 8. (cancelled)”.
Claim Analysis
Summary of Claim 1:
A cork derived product formed by a bonded mass of granulated and/or microgranulated cork particles and activated carbon particles mixed with the cork particles;
wherein the cork derived product is selected among a container or a surface for use in contact with food, cosmetic, or perfume products, a container stopper or as a part thereof;
the cork particles and the activated carbon particles are bonded together by means of a binder; and
the cork derived product includes the activated carbon particles in a proportion between 10% and 40% of the dry weight of the product enhancing the organoleptic preservation of the food, cosmetic, or perfume products in contact therewith by the activated carbon particles reducing the generation or the release of compounds responsible for cork taint from the cork derived product while maintaining transpirability of the cork derived product and giving the cork derived product a darkened color.
Claim Interpretation
The term “nanoparticles” is interpreted as particles of any shape with dimensions in the range comprised between 1×10-9 m and 1×10-7 m. (See instant specification page 3 line 26-29)
The term “microparticles” is interpreted as particles of any shape with dimensions in the range comprised between 1×10-7 m and 1×10-4 m. (See instant specification page 3 line 26-29)
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.
Claims 1-3, 5-7, 9, and 11-16 are rejected under 35 U.S.C. 103 as being unpatentable over Ormerod (GB 1592964) in view of Strickman et al. (US 4042543).
Regarding claim 1, Ormerod disclose in example 1, 28 pounds of granulated cork and 4 ¼ pounds of activated charcoal and 4 pounds of animal glue are mixed together to form a product, equivalent to 13% of activated carbon particles of the dry weight product and thereby lying within the claimed range of 10% and 40% of dry weight of the product.
Ormerod teach the product is an insole, not a container or a surface for use in contact with food, cosmetic, or perfume products, a container stopper or as a part as recited in the instant claim.
Strickman et al. teach a material for forming stoppers for bottles comprising natural cork particles and a polymer (claim 1). Ormerod is also concerned with cork products. Therefore, it would have been obvious to one of ordinary skill in the art to form a stopper as taught by Strickman et al. since both are related to cork products.
Ormerod is silent on if the activated carbon enhances the organoleptic preservation of the food, cosmetic, or perfume products and the darkened color of the cork derived product as recited in the instant claim.
However, Ormerod in view of Strickman et al. teach a substantially identical cork product. In view of the substantially identical cork product of Ormerod in view of Strickman et al., one of ordinary skill in the art would have considered the organoleptic preservation and darkened color of the cork product of Ormerod in view of Strickman et al. to be expected (MPEP 2112.01).
Regarding claim 2, Ormerod is silent on the particle size of activated carbon used in Example 1.
However, Ormerod teaches the activated carbon has a size such that 90% passes a 200 British standard sieve, equivalent to a particle size of 0.076 mm or less or 76 microns or less and thereby lying within the claimed range of microparticles as recited in the claim interpretation above. Therefore, it would have been obvious to one of ordinary skill in the art to select the range taught by Ormerod.
Regarding claim 3, Ormerod disclose in Example 1 the granulated cork has a size of 12-18 mesh, equivalent to 1 to 1.68 mm and thereby lying within the claimed range.
Regarding claim 5 and 6, Ormerod is silent on the darkened color as recited in the instant claim.
However, Ormerod in view of Strickman et al. teach a substantially identical cork product. In view of the substantially identical cork product of Ormerod in view of Strickman et al., one of ordinary skill in the art would have considered the darkened color of the cork product of Ormerod in view of Strickman et al. to be expected (MPEP 2112.01).
Regarding claim 7, Ormerod teach the Example 1 product includes granulated cork having a particle size distribution of 12-18 mesh, thereby reading on the product including a part with a different particle size distribution of cork particles in the instant claim.
Regarding claim 9, Ormerod in view of Strickman et al. teach the cork derived product is a stopper for a bottle as discussed in the rejection for claim 1 above, thereby meeting the claimed limitation.
Regarding claim 11, Ormerod teach in Example 1, 28 pounds of granulated cork and 4 ¼ pounds of activated charcoal and 4 pounds of animal glue are mixed together to form a mixture, equivalent to 13% of activated carbon particles of the dry weight product and thereby meeting the first and third limitations. The mixture is then placed into a mold, compressed, and cured to form the product, thereby meeting on the second limitation, wherein curing is a polymerization (see Example 1 and claim 8).
Ormerod teach the product is an insole, not a container or a surface for use in contact with food, cosmetic, or perfume products, a container stopper or as a part as recited in the instant claim.
Strickman et al. teach a material for forming stoppers for bottles comprising natural cork particles and a polymer (claim 1), thereby reading on the fourth limiation wherein the stopper is in contact with food products. Ormerod is also concerned with cork products. Therefore, it would have been obvious to one of ordinary skill in the art to form a stopper as taught by Strickman et al. since both are related to cork products.
Regarding claim 12, Ormerod teach in Example 1 the activated carbon particles are mixed with the cork particles before mixing the binder precursor, thereby meeting the claim limitation.
Regarding claim 13, Ormerod teach in Example 1, the activated particles are mixed with the cork particles before mixing the binder precursor, not after.
However, the selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results. (In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946); In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) (selection of any order of mixing ingredients is prima facie obvious.).) Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have performed the process steps set forth in Example 1 of Ormerod in the order recited in claim 12.
Regarding claims 14-16, Ormerod is silent on the particle size of activated carbon used in Example 1.
However, Ormerod teaches the activated carbon has a size such that 90% passes a 200 British standard sieve, equivalent to a particle size of 0.076 mm or less or 76 microns or less and thereby lying within the claimed range of microparticles as recited in the claim interpretation above. Therefore, it would have been obvious to one of ordinary skill in the art to select the range taught by Ormerod.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Ormerod (GB 1592964) in view of Strickman et al. (US 4042543) and in further view of Keel (US 3110615).
The cork derived product of claim 1 is incorporated herein by reference.
Regarding claim 4, Ormerod is silent on the binder is an isocyanate or a polyisocyanate.
Keel teaches a urethane coating for cork surfaces. Keel teaches the excess isocyanate groups in the polyurethane coating provides sites for chemical bonding with free active hydrogen atoms in the cork [col 8, line 32-45], which results in improved resistance to abrasion. Ormerod is also concerned with preventing wear of the cork product [page 1, col 1, line 30-50]. Therefore, it would have been obvious to one of ordinary skill in the art to add the isocyanate binder of Keel with the cork derived product of Ormerod with reasonable expectation the abrasion resistance would improve.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Ormerod (GB 1592964) in view of Strickman et al. (US 4042543) and in further view of Rolf (US 20090194925).
The cork derived product of claim 1 is incorporated herein by reference.
Regarding claim 10, Strickman et al. the product is an insole not a cutting board.
Rolf teach a cutting board composed of a high density cork material (claim 1). Strickman et al. is also concerned with a cork material. Therefore, it would have been obvious to one of ordinary skill in the art to form a cutting board since Rolf and Strickman et al. since both are related to cork products.
Response to Arguments
Applicant's arguments filed March 13, 2026 have been fully considered but they are not persuasive.
Applicant states “Ormerod and Strickman will have no hint from those documents to conclude that the use of activated particles could be beneficial to reduce the generation or release of compounds responsible for cork taint from the cork derived product, because Ormerod only mentions the ability of absorbing odors from the surroundings but not the ability of preventing the release of compounds from the cork derived product itself. “
The examiner agrees that Ormerod does not explicitly teach the use of activated carbon particles to reduce the generation of the release of compounds. However, Ormerod does not teach away from the activated carbon particles are capable of reducing the generation of compounds responsible for cork taint. Furthermore, Ormerod teaches a substantially identical activated carbon particles as recited in the instant claim and Ormerood in view of Strickman teach a substantially identical cork derived product as recited in the instant claim. Therefore, one of ordinary skill in the art would have considered the organoleptic preservation of the cork product of Ormerod in view of Strickman et al. to be expected (MPEP 2112.01).
Applicant states “Ormerod belong to the footwear arts; while Strickman belongs to bottle-closure/food-contact arts, which are unrelated fields. A skilled person concerned with organoleptic stability of food, cosmetics, or perfumes would not consult shoe-insole literature for a solution to this problem.”
In response to applicant's argument that Strickman et al. is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Ormerod is related to a cork product that is a shoe sole. Strickman et al. is related to stoppers for bottles comprising cork particles. Therefore, it would have been obvious to one of ordinary skill in the art because both Ormerod and Strickman et al. are related to cork products and reducing odors.
Applicant states “both documents have been available to experts for at least 44 years, without anyone having made the combination suggested by the Examiner despite the organoleptic issues related to the release of compounds from cork being a very relevant problem in a very active industry, which indicates that such a combination was not obvious.”
In response to applicant's argument based upon the age of the references, contentions that the reference patents are old are not impressive absent a showing that the art tried and failed to solve the same problem notwithstanding its presumed knowledge of the references. See In re Wright, 569 F.2d 1124, 193 USPQ 332 (CCPA 1977).
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREA WU whose telephone number is (571)272-0342. The examiner can normally be reached M F 8 - 5.
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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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/ANDREA WU/Examiner, Art Unit 1763
/JOSEPH S DEL SOLE/Supervisory Patent Examiner, Art Unit 1763
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