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 .
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 1-6 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 binder, and urethane fibers. As such, the ‘770 claim anticipates the instant claim. As to claims 2-6, claims 4-8 of the ‘770 claims further teach the limitations of these claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ruf et al. (US 2008/0233821).
Regarding claim 1, Ruf et al. teach a molding material comprising cellulose fibers, a binder and urethane fibers (Abstract; paragraphs [0003] [0020], [0038], [0040], [0052], [0065] – material containing cellulose fibers, clay is a binder absent further specificity, polypropylene is also a binder at the end of paragraph [0065], and urethene fibers can be added to the cellulose fibers (paragraph [0052] and clay material and the material can be molded).
It is noted that claim 3 is not rejected over the teaching of Ruf et al.
Claims 1 and 3-5 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.
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]
As to claim 5, Kumar et al. teach the binder/polyurethane is used in amounts that are within or overlap the claimed range paragraphs [0005] and [0009]).
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, Kumar 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.
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.
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 4-6 are rejected under 35 U.S.C. 103 as being unpatentable over Ruf et al. (US 2008/0233821), as applied to claim 1 above.
As to claim 2, Ruf et al. teach the content of the cellulose fibers overlaps the claimed range (paragraphs [0061], [0062]). Overlapping ranges are prima facie obvious.
As to claim 4, suggest average diameter of the cellulose fibers that overlap and render prima facie obvious the claimed range (paragraphs [0070], [0073] – as low as 1.3 dtex; within the claimed range. Overlapping ranges are prima facie obvious.
As to claim 5, Ruf et al. teach the content of the binder overlaps the claimed range (paragraph [0035] – 5 to 40 wt. % clay/binder). Overlapping ranges are prima facie obvious.
As to claim 6, Ruf et al. reasonably suggest an amount of additional fibers, such as urethane fibers, in an amount that overlaps the claimed range (paragraphs [0052], [0061], [0062]). Overlapping ranges are prima facie obvious.
Claims 2 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Kumar et al. (US 2018/0319942), as applied to claims 1 and 3-5 above.
As to claims 2 and 6, Kumar et al. teach amounts of the organic fibers that overlap the claimed range paragraphs [0004] and [0052]). Overlapping ranges are prima facie obvious.
Claims 2-6 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 and 6, Oomori et al. suggest amounts of fiber that overlap the claimed range (Abstract; claim 8)
As to claims 3 and 4, 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 claim 5, Oomori et al. suggest binder amounts that overlap the claimed range (Abstract; paragraph [0017]
Claims 2, 5 and 6 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 and 6, Daimon et al. teach and suggest amounts that overlap the claimed range (Abstract; col. 4, lines 1-8).
As to claim 5, Daimon et al. teach and suggest amounts that overlap the claimed range (col. 3, lines 1-32; Examples).
Conclusion
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.
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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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/JEFFREY M WOLLSCHLAGER/Primary Examiner, Art Unit 1742
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