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 without traverse of Group I, corresponding to Claims 336 and 377-379, in the reply filed on October 16, 2025 is acknowledged. Claims 338, 341-342, 344, 346-350, and 370-376 are withdrawn from consideration.
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 336 and 377-379 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication No. 2011/0293876 to Rasmussen et al. (“Rasmussen”).
With regard to Claim 336, Rasmussen discloses a resin comprising a biodegradable composition useful in composite materials, such as vehicle panels and parts, that provide sustainability and environmental benefits. See, e.g., Abstract, paragraphs [0002] to [0009], entire document. Rasmussen discloses that the biodegradable composition includes a protein, paragraph [0033], which can be an animal-based protein, such as silk, paragraph [0045], which satisfies the structure of a silk fibroin. See paragraph [0079] (silk is listed as an animal-based fiber, such as from a spider). Rasmussen discloses that the biodegradable composition can include polysaccharide as a first strengthening agent. Paragraphs [0048] to [0052]. Rasmussen discloses that the biodegradable composition can further comprise a plasticizer. Paragraph [0060]. Rasmussen discloses that biodegradable resin is formed into a composite using a pressing step, optionally under heat. Paragraphs [0084] to [0086]. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to provide a compressed mixture comprising silk fibroin, a polysaccharide, and a plasticizer because Rasmussen lists the combination of ingredients as usable together to form a pressed panel, and because it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability and desired characteristics. In re Leshin, 277 F.2d 197 (CCPA 1960). With regard to Claims 377 and 378, even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985). Rasmussen discloses that, before curing, the prepreg is subjected to conditions of temperature and/or pressure to form the composite. Paragraph [0086]. Rasmussen also discloses that curing take place at a temperature up to 300 degrees C., paragraph [0131], and can be pressed at a temperature of about 110 degrees C. at a pressure of 0.001-200 tons per square foot. Paragraph [0133]. As such, the density of the materials disclosed by Rasmussen is clearly adjustable without any undue burden, and Applicant’s processing steps, without any further definition of the product itself, i.e., the materials used and the specific manner in which they are made, does not affix any certain product limitations. The burden has been shifted to the applicant to show an unobvious difference between the claimed product and the prior art product. In re Marosi, 218 USPQ 289 (Fed. Cir. 1983). With regard to Claim 379, Rasmussen discloses that the composite material can be reinforced with a woven or nonwoven fabric. Paragraphs [0082] to [0092].
Claims 336 and 377-379 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication No. 2022/0127781 to Altman et al. (“Altman”).
With regard to Claims 336 and 379, Altman discloses a leather article that is coated with a silk composition comprising silk fibroin proteins. See, e.g., Abstract, entire document. Altman discloses providing a silk fibroin solution with a varying concentration of silk fibroin, paragraph [0034], which can be mixed with one or more polysaccharide in numerous ratio amounts. Paragraphs [0133] to [0148]. Altman discloses the silk formulation can further include a plasticizer, such as glycerol, in varying amounts to provide plasticity to the silk formulation. Paragraph [0180]. Altman discloses that the silk formulation is heated and applied to the leather material at an elevated temperature to cure. Paragraphs [0114], [0294], [0299], and [0300]. Altman teaches that the silk compositions can be applied to the fabric prior to any press treatments. Paragraphs [0009] and [1738]. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to provide a compressed mixture comprising silk fibroin, a polysaccharide, and a plasticizer because Altman lists the combination of ingredients as usable together to form a pressed leather product, and because it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability and desired characteristics. In re Leshin, 277 F.2d 197 (CCPA 1960). With regard to Claims 377 and 378, even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985). Altman discloses that the leather product can be subjected to heat and pressure stamping at numerous operating temperatures, pressures, and time periods. Paragraphs [0200] to [0202]. As such, the density of the materials disclosed by Altman is clearly adjustable without any undue burden, and Applicant’s processing steps, without any further definition of the product itself, i.e., the materials used and the specific manner in which they are made, does not affix any certain product limitations. The burden has been shifted to the applicant to show an unobvious difference between the claimed product and the prior art product. In re Marosi, 218 USPQ 289 (Fed. Cir. 1983).
Conclusion
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JEREMY R. PIERCE
Primary Examiner
Art Unit 1789
/JEREMY R PIERCE/Primary Examiner, Art Unit 1789
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