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.
Response to Amendment
The amendments filed on April 28, 2026 have been entered. Claims 1-7 are pending in the application.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Ochiai et al (US 2022/0204739 A1).
Regarding Claims 1 and 5: Ochiai teaches a molded article (para. 0162) formed from a composition containing a natural fiber and a base resin (para. 0049, cellulose fibers, recycled resin, and resin powders), wherein the resin is preferably a biodegradable polyester such as a polyhydroxy carboxylic acid-based polymer (para. 0144-0146) and the cellulose fiber has a degree of fibrillation/defibration of 1-30% (para. 0102). Ochiai teaches that the amount of cellulose fibers ranges from 3 parts per 70 parts of the recycled resin to 10 parts per 30 parts of the recycled resin (para. 0155-0156) and the resin powder is present at 0-100 parts by mass based on 50 parts of the recycled resin (para. 0125). Based on calculations, the content of natural fiber in the composition is approximately 1.4-25wt%. Ochiai further teaches embodiments containing 5-10 parts by weight of natural fiber, which results in a high bending strength and tensile elastic modulus of the composition (para. 0156). This overlaps the claimed range. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. MPEP 2144.05 (I). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add an overlapping amount of the natural fiber to the composition and would have been motivated to do so to improve the bending strength and tensile elastic modulus.
Ochiai does not explicitly teach that at least one fiber has a portion exposed on the surface of the article. However, Ochiai teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification indicated that the molding conditions and the presence of a defibrated site at the end of the natural fiber result in a portion of the natural fiber being exposed on the surface (para. 0036). Therefore, the claimed effect 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 2: Not disclosed is the water absorption of the article, as measured by JIS K7209:2000. However, Ochiai 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: Ochiai does not teach hydrophobizing the natural fibers.
Regarding Claim 4: Ochiai 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, Ochiai 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.
Regarding Claim 6: Ochiai teaches a method of producing the molded article comprising preparing the base resin and the natural fibers (para. 0049) and melt kneading them (para. 0141).
Regarding Claim 7: Ochiai teaches drying the cellulose fiber (para. 0133-0134) to a moisture content of less than 10% prior to melt-kneading (para. 0139). This overlaps the claimed range. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. MPEP 2144.05 (I). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to dry the cellulose fiber to an overlapping moisture content and would have been motivated to do so since Ochiai teaches this moisture content reduces the amount of energy required for kneading the natural fiber with the base resin (para. 0139).
Response to Arguments
Applicant’s arguments with respect to claims 1-7 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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.
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
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
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