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 .
Claims 1, 6-15, 17-18, and 20-28 are pending.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12/18/2025 has been entered.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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(s) 1, 6-9, 13-15, 17-18, and 20-25 are rejected under 35 U.S.C. 103 as being unpatentable over Howard et al. (US Patent No. 5,498,469), hereinafter Howard, in view of Ten Houten et al. (US 2020/01395777), hereinafter Ten Houten.
Regarding claims 1, 7, and 18, Howard discloses a method of producing a compressed cellulosic fiber product comprising: (a) providing cellulosic raw material comprising cellulosic fibers (‘bagasse’ – 2:1-2:15); (b) treating the cellulosic raw material with an adhesive composition (‘resin binder’ – 1:47; 3:22-3:26); and (c) compressing the raw mass in a pre-defined form (mat) to effect condensation (heated in the prior art reference and so this is inherent) to obtain the compressed cellulosic fiber product (2:67-3:5).
Howard does not explicitly disclose that the cellulosic raw material specifically derives from coconut husk or that the compressed product is a thickness of 5-30 mm.
However, Ten Houten discloses a similar process (Ten Houten, par. 0001-0003), including a step of providing coconut husk (which includes pith) (Ten Houten, par. 0018) and further explains that the high lignin and phenolic content in coconut husk allows for some adhesive activity on its own, making it highly suitable for use in producing a pressed board.
Ten Houten differs from Howard in the choice of material used as the cellulosic material. However, one of ordinary skill in the art would have recognized that either type of cellulosic material would be suitable for producing a board product in accordance with the above steps, thus the coconut and bagasse material are substitutable alternatives to each other.
Accordingly, one of ordinary skill in the art would have found it obvious to have specified that the cellulosic material of Ten Houten (the coconut husk material) is substituted for the cellulosic material of Howard (bagasse) as they are both demonstrated to work as a material to produce a compressed fiberboard product.
Regarding the thickness of the object, it has been held that changes in size/shape, or a scaling up or down of the same feature would have been indicative of a case of obviousness. Ten Houten further describes that the structure can be formed by pressing “1.5 to 2 minutes per 1 mm layer thickness” (par. 0024) which would allow for products of several mm of thickness as required for a design or purpose. Accordingly, one of ordinary skill in the art would have found it obvious to have specified a thickness as required for a design.
Regarding the fractions of material, because “a first fraction” and “a second fraction” can be less than the entirety of the cellulosic raw material and the combination of these must be within the 40-60% range, as in claim 7, the teaching is considered to meet the claims here. Thus, Howard/Ten Houten further discloses that there is a fraction of bagasse that has been depithed and non-depithed (H, 2:39-2:45) and some of the material can be straw instead of bagasse. The fraction of pith is at 50% which falls within the range of claim 7 and so the material would be considered to be made up of two fractions of material that would be within this range, as the range in claim 7 must also be met, in order for claim 7 to properly depend upon claim 1. This claim does not require that the materials be added separately, and in order to do so would seem to require further processing steps to be claimed than are claimed here.
Regarding claim 6, Howard/Ten Houten discloses the subject matter of claim 1, and further explains that both depithed and “pithed” bagasse are useful (H, 2:10-2:15) in the process, and are “classified” and thus treated separately (2:54-2:61) with adhesive.
Regarding claims 8-9, Howard/Ten Houten discloses the subject matter of claim 1, and the pith is read as a filling material (H, 2:34-2:38) and the fibers (straw) have a length of 1.25 inches (or about 3 cm), falling within the claimed range (2:28-2:32).
Regarding claim 13, Howard/Ten Houten discloses the subject matter of claim 1, and further discloses that the raw mass is treated with the adhesive while tumbling (H, Example 1, 3:35-3:41) as to blend the material together.
Regarding claims 14-15, Howard/Ten Houten discloses the subject matter of claim 1, and further discloses that (i) the raw mass is formed into a mat (H, 3:42-3:44) and (ii) compressed with heat to obtain a product containing compressed cellulosic fibers (3:44-3:49) at a temperature of 300 F which is ~150 C.
Regarding claim 17, Howard/Ten Houten discloses the subject matter of claim 1, but does not appear to explicitly disclose the thickness and width/length of the panels as produced, instead preferring 6 inch square products which would be about half of the length and width of the claimed size. However, it has been held that changes in size/shape, or a scaling up or down of the same feature would have been indicative of a case of obviousness.
Accordingly, one of ordinary skill in the art would have found it obvious to have cut the panels into a larger than 6-inch square product, as is desired in a final board product.
Regarding claims 18 and 20, Howard/Ten Houten discloses the subject matter of claim 1, and further discloses that the density is between 0.5 g/cc and 0.9 g/cc, which corresponds with 500 kg/m3 and 900 kg/m3 and this would be a fiberboard as it would contain at least some fibers as outlined above.
This overlaps with the range of 600-900 as in the claimed invention. It has been held that where the prior art discloses a range that overlaps with the claimed range, a prima facie case of obviousness exists.
Accordingly, one of ordinary skill in the art would have found it obvious before the effective filing date of the claimed invention to have modified the above to have specified that the density of the product is as required in the claims.
Regarding claims 21-25, Howard/Ten Houten discloses the subject matter of claim 18, as described above, but does not appear to explicitly disclose the physical features recited in claims 21-25 with respect to the physical properties of the produced product.
However, since one of ordinary skill in the art has already performed the manipulative steps of claim 1, as referred to in claim 18, one of ordinary skill in the art would have further recognized that the resulting physical properties would have been achieved as a direct result of the manipulative steps performed and would have therefore found such features obvious over the cited reference.
Claims 10-12, 19, and 26-28 are rejected under 35 U.S.C. 103 as being unpatentable over Howard (US Patent No. 5,498,469) in view of Ten Houten (US 2020/0139577) as applied to claim 1 above, and further in view of Berlin (US 2013/0213550).
Regarding claims 10-12, 19, and 26-28, Howard/Ten Houten discloses the subject matter of claim 1, but does not appear to explicitly disclose that the adhesive contains tannins as required in the claims or a hexamine at the ratios as required in the claims.
However, Berlin discloses a similar process to that of Howard above, using an adhesive composition as to produce a resin/binder for use in a similar type of composite material which can include many different types of cellulosic raw material as in Howard above. Specifically, Berlin explains that the inclusion of derivatives of native lignin, such as tannins (Berlin, par. 0033), for the purpose of reducing the incidence of pre-curing of the resin (Berlin, abstract). Berlin further specifies that the tannins can be derived from species of wood including Acacia, as well as other woods (Berlin, par. 0024) and can be included with a hexamine (par. 0057) in a ratio with the lignin derivative (tannin) of 1:10 but recognizes many ratios that can be suitable for use here.
Accordingly, in order to likewise reduce the incidence of pre-curing of the material, as described in Berlin, in the process of Howard above, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the above to have specified that there is a hexamine and lignin derivative included in the adhesive in a ratio as described in Berlin, as is required in the claims.
Response to Arguments
Applicant's arguments filed 12/18/2025 have been fully considered but they are not persuasive. Applicant’s arguments will be addressed below.
First, Examiner points out that claim 1 recites “the cellulosic raw material comprises a first fraction and a separate second fraction” but this fractional amount must equal the amounts as recited in claim 7 or else claim 7 would not be properly dependent upon claim 1.
Additionally, claim 1 does not require classifying these fibers or adding them separately and instead requires “providing cellulosic raw material comprising cellulosic fibers” – but does not explicitly require providing of pith separately from that of the other fibers. The cellulosic raw material of Howard does include both pith and straw and would thus seem to meet this limitation as “the cellulosic raw material further comprises pith” even if it does so incidentally or does not necessarily want large amounts of pith present. The material is included within the prior art, and thus, it meets the claim limitation and is present within the range present in claim 7.
In response to applicant's argument that pith is advantageous, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, both references are related to the production of a particle board from cellulosic fibers and resin. As such, one of ordinary skill in the art would have found the fibrous material suitable for a similar purpose in either case.
In response to applicant's argument that Ten Houten is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Ten Houten and Howard are clearly in the same field of endeavor, as they both relate to the production of compressed fiberboard products that are made from the same or similar types of cellulosic fibers and resin.
Furthermore, even if the properties of the resulting items might differ due to a larger length in certain fibers, they may be suitable for a given undefined purpose. Alternatively, it is also noted that even if Applicant’s arguments are accepted regarding the length of fibers, one of ordinary skill in the art would have then had a motivation to have milled or grinded the fibers into a smaller size, which is also not precluded in the claims. However, the prior art does not need to address unclaimed elements that are not required to meet the claims as drafted. Accordingly, the rejections are maintained as updated above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW D GRAHAM whose telephone number is (469)295-9232. The examiner can normally be reached Monday - Friday 7:30AM-4:00PM (CST).
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/ANDREW D GRAHAM/Primary Examiner, Art Unit 1742