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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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.
Claim 4 is 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.
Claim 4 recites “a surface layer; and an inner layer located on an inner side of the surface layer” in lines 2-3. It is unclear if this is meant to be taken as the molded article being a multi-layer product, or if the molded article is a single-layer product with a concentration gradient of the natural fibers, wherein the “surface layer” refers to the surface of the article and the “inner layer” refers to the central area.
Para. 0038 of the instant specification recites “As described above, natural fiber 2 can be segregated in the vicinity of the surface of the composite resin molded article depending on the molding conditions. As a result, natural fiber 2 is more present in the surface layer than in the inner layer of the composite resin molded article.” This seems to indicate that the molded article is formed as a single component, and that the “layers” refer to a concentration gradient of the natural fibers.
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.
Claims 1-3 and 5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Rapthel et al (DE 19830774 A1, using the machine translation for the citations below).
Regarding Claims 1 and 5: Rapthel teaches a molded article comprising a biodegradable thermoplastic resin and a partially defibrated plant fiber (para. 0001), wherein the thermoplastic is a modified starch (para. 0009) and the plant fiber is a cellulose fiber (para. 0007) and is present at 10-65 wt% based on the total weight of the composition (paras. 0011).
Based on the similarity of the processing conditions to that of the instant application, it is exceedingly likely that at least one of the partially defibrated natural fibers would have a defibration site at the end of the fiber, and that at least one fiber would have a portion exposed on a surface of the molded article.
Regarding Claim 2: Not disclosed is the water absorption of the article, as measured by JIS K7209:2000. However, Rapthel teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties, i.e. a moisture absorption of at least 5% would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Regarding Claim 3: Rapthel does not teach hydrophobizing the natural fibers.
Claim 6 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Rapthel et al (DE 19830774 A1, using the machine translation for the citations below).
Rapthel teaches a method of producing a molded article comprising preparing a base resin and a natural fiber (para. 0011) and melt kneading the fiber together with the resin (para. 0012 – shear mixing during injection molding; para. 0024 – extrusion in twin-shaft kneader). The natural fiber is partially defibrated (para. 0001). Based on the similarity of the processing conditions to that of the instant application, it is exceedingly likely that at least one of the partially defibrated natural fibers would have a defibration site at the end of the fiber in the length direction.
Claim 4 is rejected under 35 U.S.C. 102(a)(1) as anticipated by Rapthel et al (DE 19830774 A1, using the machine translation for the citations below) or, in the alternative, under 35 U.S.C. 103 as obvious over Rapthel et al (DE 19830774 A1, using the machine translation for the citations below) in view of Fitzgibbon (EP 0771642 A1).
Rapthel does not explicitly teach that the concentration of the natural fibers at the surface of the article is higher than a concentration in an inner layer. However, Rapthel teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification indicated that the segregation of fibers resulting in a higher concentration at the surface is caused by the molding conditions used (para. 0038). Therefore, the claimed effect of a higher concentration of the natural fibers in a surface layer of the molded article would naturally arise and be achieved by a composition with all the claimed ingredients made by the same process. See MPEP § 2112.01(I). If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Alternatively: Rapthel teaches the limitations of claim 1, as set forth above. However, Rapthel is silent to a concentration of natural fibers being higher in a surface layer of the article than in an inner layer of the article.
However, Fitzgibbon teaches forming a composite with a higher concentration of fibrous filler in the surface layer than in the interior of the composite (p.3, lines 18-23; p.8, lines 35-39). Rapthel and Fitzgibbon are analogous art because they are directed toward the same field of endeavor, namely composite materials.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to prepare a composite having a larger portion of fibrous filler in the surface layer, and they would have been motivated to do so in order to tailor the surface and mechanical properties while limiting the amount of additive needed (p. 3, lines 26-33).
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.
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.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Rapthel et al (DE 19830774 A1, using the machine translation for the citations below).
Rapthel teaches the limitations of claim 6, as set forth above. Rapthel further teaches that the mixture of the fibers and base resin is dried to about 1% of residual moisture before injection molding (para. 0011).
Rapthel does not teach that the drying process occurs during melt kneading. However, the selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results. MPEP 2144.04(IV)(C). Therefore, in the absence of unexpected results, one of ordinary skill in the art would have found it obvious to perform the drying step at any point before molding the final article, including during the melt kneading.
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 and 6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 3 and 9 of U.S. Patent No. 12410287 B2. Although the claims at issue are not identical, they are not patentably distinct from each other.
Reference Claim 3 teaches a composite resin molded product comprising a natural fiber that is defibrated at an end portion and is exposed on a surface of the part, and a biodegradable base resin selected from polyhydroxyic acids, polyhydroxyalkanoates, poly(alkylene dicarboxylate)s, and modified starches. This reads on instant claim 1.
Reference Claim 9 teaches a method of producing a molded article comprising a step of preparing a natural fiber and a base resin, and a step of melt kneading the natural fibers with the base resin, wherein the natural fibers are defibrated at an end portion. This reads on instant claim 6.
Claim 6 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11660791 B2. Although the claims at issue are not identical, they are not patentably distinct from each other.
Reference Claim 1 teaches a method of producing a molded article comprising melt kneading a base resin with a natural fiber, wherein the natural fiber is defibrated at an end portion. This reads on instant claim 6.
Claim 6 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 15 of copending Application No. 19/455,058 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other.
Reference Claim 15 teaches a method of producing a molded article comprising providing a composite resin, wherein the composite resin is produced by melt kneading a base resin and a natural fiber, wherein the ends of the natural fiber are defibrated.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CAITLIN N ILLING whose telephone number is (571)270-1940. The examiner can normally be reached Monday-Friday 8AM-4PM.
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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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/C.N.I./Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767