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 .
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.
Claim(s) 1-7, 10, and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jacquelin et al. (US Patent No. 3,904,726), hereinafter Jacquelin.
Regarding claims 1 and 3, Jacquelin discloses a process for manufacturing a straw-based material wherein: (a) the straw is carded (this term is read as the mechanical separation into fibers as described in the instant specification at par. 0010 as filed) [1:35-1:37 describe straw; 3:7-3:27 describe a grading or carding process to free fibers from each other; “dry treatment” – the “dry treatment” includes a grading and a carding];
(b) straw wool is recovered first, and straw powder second (this is read as the result of the carding step, as “straw wool” and “straw powder” would both be recovered from the carding of straw);
(c) at least said straw powder (and straw wool after mixing as in claim 3; 3:23-3:27 describe mixing of fibers of different sizes together) is wetted (3:41-3:62); and (d) at least the wetted straw powder is dried (3:50-3:56).
The term “straw wool” is considered to be met by the non-woven group of loose fibers and “straw powder” is considered to be straw fibers of a smaller size that would seem to be described/contemplated and known from Jacquelin with respect to the fibrous grain sizes (see 3:4-3:27).
Regarding claim 2, this is inherently met in the language of claim 1 above, as the “wetting” occurs in step (c) which is after step b.
Regarding claims 4-5, Jacquelin discloses the subject matter of claim 3, and further discloses that the binder can be mixed with the liquid that is applied to and mixed with the fibers (2:16).
Regarding claim 6, Jacquelin discloses the subject matter of claim 1, and further discloses that the fibers are graded using a moving surface or conveyer (3:46-3:54).
Regarding claim 7, Jacquelin discloses the subject matter of claim 1, and further discloses an intermediate drying step (3:25 describes a “fresh dry treatment” which would imply that there is a second drying step.
Regarding claim 10, Jacquelin discloses the subject matter of claim 1, and further discloses that the straw material is a vegetable material or plant material (1:35).
Regarding claim 19, Jacquelin discloses the subject matter of claim 1, and when the water is added as described above, this would be considered to be “a fire retardant agent” that is “associated with said straw powder or the mixture of straw powder and straw wool” under BRI.
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.
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 8-9, 11-18, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Jacquelin (US Patent No. 3,904,726) in view of Dubelsten et al. (US Patent No. 6,605,245), hereinafter Dubelsten.
Regarding claims 8-9 and 20, Jacquelin discloses the subject matter of claim 1, but does not appear to explicitly disclose that the product in step (c) is disposed between two protective sheets or that there is a shaping step of the material.
However, Like Jacquelin above, Dubelsten is concerned with the production of a mat of fibrous cellulosic material (Dubelsten, abstract) which may include a binder. Dubelsten describes the use of a first face layer and a second face layer opposing the first face layer with a core layer in between (Dubensten, abstract). Dubelstein further describes the use of a binder (thermoactive material; 8:45-8:47) as to help join the fibers together. Dubelstein further discloses the use of a compression (Dubelsten, Figs. 1-4) as to compress or shape the material.
One of ordinary skill in the art would have recognized that the fibers of Jacquelin, after processing, would have been useful in the process of Dubelsten, as they would act similarly to the fibers of Dubelsten in the same environment. Accordingly, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to have modified the above from Jacquelin as to have further included the steps/materials above from Dubelsten as to have provided a suitable product from the treated fibers of Jacquelin.
Regarding claims 11-15, Jacquelin discloses the subject matter of claim 4, but does not appear to explicitly disclose that the binder is as required in claims 11-12 or “adjuvant” as in claims 13-15.
However, Dubelsten describes the use of a binder that is an organic polymer (Dubelsten, 8:45-9:10 – the thermoactive material) that is provided with “additional materials” (Dubelsten, 9:13-9:32) which can include fibers such as carbon or glass fibers (9:29).
One of ordinary skill in the art would have found it obvious to have specified that these materials are used for the same reasons as set forth in claims 8-9 above.
Regarding claims 16-18, Jacquelin/Dubelsten discloses the subject matter of claim 14, and further discloses that there is a sealing treatment conducted by a flame (frying) and spraying (Dubelsten, Fig. 27; 28:44-28:59); and the polymer from the previous steps can read upon the “sealing agent” as this is not described in the claim, as to when it is applied or used.
Response to Arguments
Applicant's arguments filed 3/9/2026 have been fully considered but they are not persuasive. In the remarks, Applicant argues that Jacquelin does not teach limitations (b) or (c) of claim 1.
In response, regarding limitation (b), the claim first reads “the straw is carded” and then reads “straw wool is recovered first, and straw powder second”; but this merely describes the result of “the straw is carded” since there is no further language in the claim, and there are indeed two fractions of straw recovered in Jacquelin. Furthermore, claim 3 requires mixing the powder and wool anyways before wetting the powder, and must be considered with the scope of claim 1, as claim 3 must include all of the limitations of claim 1, or it would be an improper dependent claim.
Examiner also points out that the claim language in limitation (c) states “at least said straw powder is wetted” but wetting both of them would meet this limitation as well as wetting only said straw powder, the claim language specifically allows for this by stating: “at least.” Jacquelin clearly teaches a step of wetting and also a step of drying the carded straw material.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
In response to applicant's argument that Dubelsten teaches away from the claimed invention, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). In this case, the secondary reference (Dubelsten) does not teach away from the claimed invention as at least claims 4, 11-12 specifically require a binder as well and depend from claim 1, and thus, must also be coextensive in scope with claim 1. Furthermore, Dubelsten is not even applied to claim 1. Thus, this argument is not found to be persuasive.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). In this case, the reconstruction does not take into account knowledge that is gleaned only from applicant’s disclosure. The incorporation of Dubelsten is for the binder that is required in various dependent claims, and as such, this argument is not persuasive.
As such the rejections are maintained as outlined above.
Conclusion
THIS ACTION IS MADE FINAL. 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 ANDREW D GRAHAM whose telephone number is (469)295-9232. The examiner can normally be reached Monday - Friday 7:30AM-4:00PM (CST).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christina Johnson can be reached at (571) 272-1176. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREW D GRAHAM/Primary Examiner, Art Unit 1742