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 .
Response to Amendment
Applicant’s amendment to the claims filed September 23, 2026 has been entered. Claim 1 is currently amended. Claims 7-11 are new. Claims 1-11 are pending and under examination.
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 1-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of copending Application No. 18/757,770 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding claim 1, claim 1 of the ‘770 application claims a material for molding comprising cellulose fibers, a resin binder, and urethane fibers. Since the same claimed materials are set forth and claimed in the ‘770 application, it follows that the same claimed physical effects and properties of the composition (e.g. the urethane fibers function as a compatibilizing agent between the cellulose fibers and the resin binder) are present. The same claimed compositions necessarily have the same claimed properties (see MPEP 2112.01 II). As such, the ‘770 claim is understood to anticipate the instant claim. Further, the specific molecular weight values set forth in claim 1 of the ‘770 application are not understood to result in a loss of the claimed functionality of the urethane fibers. This is evidenced at paragraphs [0056] and [0095] in the published application of the ‘770 application. Alternatively, claim 1 of the ‘770 application renders claim 1 of the instant application prima facie obvious with an overlapping range of molecular weights based on the conventional molecular weights of molding resins. As to claims 2-11, claims 4-8 of the ‘770 claims further teach the limitations of these claims or render them prima facie obvious due to overlapping or encompassing ranges.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claims 1-11 are 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.
Regarding claim 1, the claim recites “the resin binder”. The recitation lacks antecedent basis in the claim. The claim recites “a binder”. It is not clear whether the binder of the molding composition is the resin binder or whether multiple binders are in view. Appropriate correction and clarification are required. Similarly, as to claim 5, it is not clear whether “the binder” is referring back to “a binder” or “the resin binder” in claim 1.
The other claims are rejected as dependent claims.
Claim Rejections - 35 USC § 102
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 4 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Kumar et al. (US 2018/0319942).
Regarding claim 1, Kumar et al. teach a molding material comprising cellulose fibers, a binder/polyurethane and urethane fibers (Abstract; paragraphs [0007], [0048], [0072]).
In a first interpretation, it is noted that Kumar et al. teach an organic fiber is necessarily part of the composition and discloses that polyurethane fibers, cellulose fibers and combinations of the disclosed fibers can be utilized as the organic fiber in the composition (Abstract; paragraphs [0007], [0048]). One having ordinary skill would have been able to immediately envisage selecting disclosed materials, including polyurethane fibers and cellulose fibers, for usage in the composition. As such, Kumar et al. is understood to anticipate the claimed invention (see MPEP 2131.02 III).
Alternatively, the selection of the two claimed fibers from the list disclosed in Kumar is understood to render the claimed invention prima facie obvious (see MPEP 2144.06 and 2144.07) absent a showing of new or unexpected results commensurate in scope with the claimed invention.
The same compositions have the same properties (see MPEP 2112.01 II). As such, since the composition is taught and suggested as set forth above, it follows that the same claimed properties (i.e. urethane fibers function as a compatibilizing agent between cellulose fibers and the resin binder) would be present or also rendered prima facie obvious in the prior art.
As to claims 3 and 4, Kumar et al. teach the organic fiber/cellulose fiber is a diameter and length within the claimed ranges (paragraphs [0049] and [0050]
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Oomori et al. (US 2010/0120987).
Regarding claim 1, Oomori et al. teach a molding material comprising cellulose fibers, a binder/polyurethane and urethane fibers (Abstract; paragraphs [0001], [0017], [0022], [0017], [0041]).
In a first interpretation, it is noted that Oomori et al. teach an organic fiber is necessarily part of the composition and discloses that polyurethane fibers, cellulose fibers and combinations of the disclosed fibers can be utilized from a list of only 6 materials (paragraph [0041]). One having ordinary skill would have been able to immediately envisage selecting disclosed materials, including polyurethane fibers and cellulose fibers, for usage in the composition from such a small list. As such, Oomori et al. is understood to anticipate the claimed invention (see MPEP 2131.02 III). It also appears that kenaf fibers may also be reasonably understood to be a type of cellulose fiber and that such an interpretation would make 3 of the 6 disclosed materials applicable.
Alternatively, the selection of the two claimed fibers from the list disclosed in Oomori et al. is understood to render the claimed invention prima facie obvious (see MPEP 2144.06 and 2144.07) absent a showing of new or unexpected results commensurate in scope with the claimed invention.
The same compositions have the same properties (see MPEP 2112.01 II). As such, since the composition is taught and suggested as set forth above, it follows that the same claimed properties (i.e. urethane fibers function as a compatibilizing agent between cellulose fibers and the resin binder) would be present or also rendered prima facie obvious in the prior art.
Claims 1, 3 and 4 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Daimon et al. (US 4,752,526).
Regarding claim 1, Daimon et al. teach a molding material comprising cellulose fibers, a binder/polyurethane and urethane fibers (Abstract; col. 3, line 42-col. 4, line 8).
In a first interpretation, it is noted that Daimon et al. teach an organic fiber is necessarily part of the composition and discloses that polyurethane fibers, cellulose fibers and combinations of the disclosed fibers can be utilized from small list of materials as cited above. One having ordinary skill would have been able to immediately envisage selecting disclosed materials, including polyurethane fibers and cellulose fibers, for usage in the composition from such a small list. As such, Daimon et al. is understood to anticipate the claimed invention (see MPEP 2131.02 III).
Alternatively, the selection of the two claimed fibers from the list disclosed in Diamon et al. is understood to render the claimed invention prima facie obvious (see MPEP 2144.06 and 2144.07) absent a showing of new or unexpected results commensurate in scope with the claimed invention.
The same compositions have the same properties (see MPEP 2112.01 II). As such, since the composition is taught and suggested as set forth above, it follows that the same claimed properties (i.e. urethane fibers function as a compatibilizing agent between cellulose fibers and the resin binder) would be present or also rendered prima facie obvious in the prior art.
As to claims 3 and 4, Daimon et al. is understood to teach and/or render prima facie obvious the claimed ranges (col. 3, line 60-col. 4, line 2).
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.
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 2 and 5-11 are rejected under 35 U.S.C. 103 as being unpatentable over Kumar et al. (US 2018/0319942), as applied to claims 1, 3 and 4 above.
As to claims 2, 6, 7, and 11, Kumar et al. teach amounts of the organic fibers that overlap the claimed range paragraphs [0004] and [0052]). Overlapping ranges are prima facie obvious.
As to claims 5 and 10, Kumar et al. teach the binder/polyurethane is used in amounts that are within or overlap the claimed range paragraphs [0005] and [0009]).
As to claim 8, Kumar et al. teach lengths that overlap the claimed range (paragraph [0049]). Overlapping ranges are prima facie obvious.
As to claim 9, Kumar et al. teach diameters that overlap the claimed range (paragraph [0050]).
Claims 2-11 are rejected under 35 U.S.C. 103 as being unpatentable over Oomori et al. (US 2010/0120987), as applied to claim 1 above.
As to claims 2, 6, 7, and 11, Oomori et al. suggest amounts of fiber that overlap the claimed range (Abstract; claim 8)
As to claims 3, 4, 8 and 9, Oomori et al. suggest and render prima facie obvious fiber dimensions that overlap the claimed ranges (paragraphs [0043]-[0049]; see MPEP 2144.05 regarding ranges that are close, but that don’t overlap).
As to claims 5 and 10, Oomori et al. suggest binder amounts that overlap the claimed range (Abstract; paragraph [0017]
Claims 2 and 5-11 are rejected under 35 U.S.C. 103 as being unpatentable over Daimon et al. (US 4,752,526), as applied to claims 1, 3 and 4 above.
As to claims 2, 6, 7 and 11, Daimon et al. teach and suggest amounts that overlap the claimed range (Abstract; col. 4, lines 1-8).
As to claims 5 and 10, Daimon et al. teach and suggest amounts that overlap the claimed range (col. 3, lines 1-32; Examples).
As to claims 8 and 9, Daimon et al. suggest a range that overlaps or encompasses the range and is understood to render prima facie obvious the claimed ranges (col. 3, line 60-col. 4, line 2).
Response to Arguments
Applicant’s arguments filed September 23, 2026 have been fully considered.
The amendment has overcome the teaching of Ruf et al. As such, the rejections based upon Ruf et al. have been withdrawn. Applicant’s other arguments have been fully considered, but they are not persuasive.
Regarding the nonstatutory double patenting rejection over the ‘770 application, applicant argues that the recitation that requires the urethane fibers to function as a compatibilizing agent sufficiently differentiates the claims. This argument is not persuasive. Since the same claimed materials are set forth and claimed in the ‘770 application, it follows that the same claimed physical effects and properties of the composition (e.g. the urethane fibers function as a compatibilizing agent between the cellulose fibers and the resin binder) are present in claim 1 of the ‘770 application. The same claimed compositions necessarily have the same claimed properties (see MPEP 2112.01 II). As such, the ‘770 claim is understood to anticipate the instant claim. The further limitation in claim 1 of the ‘770 application; namely, the specific molecular weight values set forth in claim 1 are not understood to result in a loss of the claimed functionality of the urethane fibers. If necessary, this is evidenced at paragraphs [0056] and [0095] in the published application of the ‘770 application. As such, the rejection is understood to be proper. Alternatively, claim 1 of the ‘770 application renders claim 1 of the instant application prima facie obvious with an overlapping range of molecular weights based on the known conventional molecular weights of molding resins.
As to Kumar, applicant argues that because Kumar’s list includes ten distinct fibers, its preferred embodiment consistently relies upon polyester fibers, and that there are no working examples or other disclosure suggesting both cellulose and polyurethane fibers, it follows that the “immediately envision” doctrine is not applicable. This argument is not persuasive. Kumar discloses each of the required fibers (i.e. urethane fibers and cellulose fibers) individually and further teaches that combinations of those disclosed fibers can also be utilized (paragraphs [0007] and [0048]). This is understood to correspond well with the teaching set forth in MPEP 2131.02 II and III. For example, if the claim was limited to urethane fibers, Kumar would anticipate the claim. If the claim was limited to cellulose fibers, Kumar would anticipate the claim. From this, since Kumar also further teaches that combinations of these materials may be used and the disclosed list of organic fibers is reasonably small, it follows that the claimed species requiring a choice of both urethane fibers and cellulose fibers is properly understood to also be anticipated by Kumar because that combination can be “at once envisaged” from the reasonably small list of organic fibers. The argument seems to suggest the list is “extensive” and “very large”. However, the list in the first sentence of paragraph [0048] is not understood to be so extensive or large that one would not be able to envisage the selection of the claimed combination.
Further, the claim has been rejected under section 103 over Kumar. Applicant argues that one having ordinary skill would have no reason to select both urethan and cellulose fibers instead of the expressly preferred polyester fibers. This argument is not persuasive. A reference is available for all that it teaches and suggests and Kumar is not limited to polyester fibers. Paragraph [0048] recites in the first sentence a list of approximately 10 organic fibers that may be used. This list includes urethane fibers and cellulose fibers. Kumar also teaches that combinations of the disclosed fibers may be used. This is sufficient to render the claim prima facie obvious over the teaching of Kumar.
Applicant argues that Kumar does not teach the compatibilizing function of urethane fibers as set forth in claim 1 and suggests that the instant specification demonstrates new and unexpected results based on this combination of fibers. This argument is not persuasive. Since Kumar is understood to anticipate and/or render prima facie obvious the claimed composition, it follows that the same claimed properties and effects of the composition will be present in the compositions taught and suggested by Kumar (see MPEP 2112.01 II). As to the arguments suggesting new or unexpected results, these arguments cannot overcome an anticipation rejection (see MPEP 2131.04). As to the alternative section 103 rejection, the scope of the claim is not understood to be commensurate in scope with any evidence of new or unexpected results. The instant specification does not appear to show a direct comparison of the argued results with the only difference being the presence or absence of the urethane fibers. Further, the specification appears to suggest that any new results also require particular amounts of each component of the composition (i.e. amounts of resin, urethane fibers and cellulose fibers), particular dimensions of each of the fibers (e.g. length and diameter), and that particular resin binders are in view. The claims have not been limited in this manner and as such the argument is not commensurate in scope with the claims.
As to Oomori, applicant makes similar arguments against the rejection. These arguments are not persuasive. Oomori teach an organic fiber is necessarily part of the composition and discloses that polyurethane fibers, cellulose fibers and combinations of the disclosed fibers can be utilized from a list of only 6 materials (paragraph [0041]). The list is smaller than the list of Kumar. As such, one would be able to envisage the claimed combination of fibers and the section 102 rejection of claim 1 is understood to remain proper. Further, Oomori is utilized in an alternative 103 rejection and the scope of claim 1 is not commensurate in scope with any evidence of new or unexpected results. Oomori is not limited to preferred fibers and the reference is good for all that it teaches.
As to Daimon, applicant argues that Daimon utilizes a modified polypropylene material that is structurally distinct from the resin binder of the present claims. This argument is not persuasive. The claim only requires a resin binder that can be compatibilized with cellulose fibers and in/from the presence of urethane fibers. Daimon discloses a resin binder and there is nothing to suggest a structural difference between the resin of the claims and the resin of Daimon is in view or required. Further, for similar reasons previously discussed, Daimon discloses urethane and cellulose fibers in a relatively short list (col. 4, lines 47-54) and combinations/mixtures thereof. The other argued differences between the claims and Daimon (e.g. that Daimon includes waste paper) are not persuasive. Daimon teaches the same claimed composition can be employed. The inclusion of other materials is not excluded (e.g. open comprising language) and there is nothing to suggest that the inclusion of waste paper would interfere with the function of urethane fibers to the extent it is required in claim 1, which remains open to a broad reasonable interpretation and does not include limitations that would make it commensurate in scope with any evidence of new or unexpected results.
Absent an amendment sufficient to overcome the section 102 rejections and absent an amendment or sufficient evidence to conclude the presence of new or unexpected results that are commensurate in scope with the claimed invention, the rejection is understood to remain proper. It is submitted that the claims would need to be further amended to overcome the section 102 and the section 103 rejections. The examiner notes his availability to discuss the application via telephonic interview
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 Jeff Wollschlager whose telephone number is (571)272-8937. The examiner can normally be reached M-F 7:00-3:30.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JEFFREY M WOLLSCHLAGER/Primary Examiner, Art Unit 1742
