Detailed Office Action
The communication dated 2/17/2026 has been entered and fully considered.
Claims 1, 3, 5, 13, 14, 16, and 17 have been amended. Claims 2 and 4 have been canceled. Claims 1, 3, and 5-24 are pending with claims 23 and 24 withdrawn from consideration.
Response to Arguments and 1.130 declaration
In light of amendment the 112(b) rejection has been withdraw,
In light of amendment the rejection to claim 14 over PAPA has been withdrawn.
In the declaration Srinivasan Chandrasekar declares that the Mohanty paper was not available until December 6, 2022. The declarant supports this with a letter from the dissertation office. The applicant argues that there is therefore a less than 1 year from the earliest effective filing date and the prior art. Therefore a 102(a)(1) exception applies.
The thesis website shows a first online date of 12/19/2021. Although the thesis itself may be embargoed (to 12/19/2022) it is the Examiner’s understating that the thesis website is searchable for the thesis and that the abstract entry is still visible at the online date even if there is an embargo. The Examiner presents evidence of this showing an embargoed thesis with the abstract still given [VINEET thesis].
Given this the abstract summary of MOHANTY discloses areca palm sheath soaking in a 5% NaOH aqueous (hydration) solution followed by stretching, compression and rolling during forming to make foodware products. The leaf sheet is also subject to a heating step of 80 degrees C to release a hydrophobic wax layer. Therefore the thesis abstract posted itself appears to anticipate claims 1, 3, 5-7, 12, and 15-22 even if the thesis was embargoed.
The applicant amended the claims to state that all of the claimed substances were present at 15% or less by weight (instant claim 1). The specification only discloses the concentration of NaOH. Therefore this claim limitation does not have support in the provisional application. Therefore the effective date would be at the earliest 4/11/2024 and the MOHANTY reference is available under 102(a)(1) without an available exception.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 3, and 5-21 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
In claim 1, the applicant amended the claims to state that all of the substances (sulfites, ethylene glycol, methanol, formic, chlorite tetrahydrofuran) were present at 15% or less by weight (instant claim 1). The applicant only has support for this range for NaOH.
Claims 3 and 5-21 depend from claim 1 and are similarly rejected.
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, 5-12 and 15-22 are rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by Areca Palm Sheath: A Plant-Based Material Alternative to Plastics for Foodware Products, by MOHANTY, hereinafter MOHANTY.
As for claim 1-12, MOHANTY discloses treating palm sheath with an aqueous solution of NaOH [pg. 76 5.4.2] to weaken the bonds of the palm sheath material. The treatment includes 5% NaOH in water for a duration of 2 hours both of which fall within the claimed range [pg. 77 par. 1]. MOHANTY does not disclose anything in addition to the NaOH and pure water. MOHANTY discloses that there is no change in the microstructure to the sheath at 5% NaOH [pg. 77 par. 1 and pg. 84 par. 1].
As for claim 15, MOHANTY discloses treating areca palm sheaths [pg. 76 5.4.2]
As for claim 16, MOHNATY discloses treating the palm sheath material without any prior treatments which the Examiner interprets as raw.
As for claims 17 and 18, MOHANTY discloses performing the treatment and then shaping the treated sheath to form a food-ware product by pressing [pg. 70 Figure 5.1, pg. 77 Figure 5.4, pg. 4 par. 2], pg. 5.6]. MOHANTY discloses the process includes heating the pressing dies with the hydrated sheath material which are heated to 120 degrees C to remove moisture [pg. 24 last par. – pg. 25 par. 1].
As for claim 19, MOHANTY discloses the limit strain, at 5% NaOH exceeds 0.36 at 0.55 [pg. 77 par.2 and Figure 5.4].
As for claim 20-22, MOHANTY discloses the process includes heating the pressing dies with the hydrated sheath material which are heated to 120 degrees C to remove moisture [pg. 24 last par. – pg. 25 par. 1].
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.
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 13 is rejected under 35 U.S.C. 103 as being unpatentable over Areca Palm Sheath: A Plant-Based Material Alternative to Plastics for Foodware Products, by MOHANTY, hereinafter MOHANTY, in view of Superflexible Wood by SONG et al., hereinafter SONG.
As for claim 13, MOHANTY discloses softening the areca palm using NaOH. MOHANTY does not discloses using sulfite. MOHANTY suggests that wood softening techniques can be used for softening palm sheaths [pg. 76 section 5.4.2]. MOHANTY suggests the wood softening techniques of SONG as reference 57. SONG discloses softening wood with a combination of NaOH and sodium sulfite [pg. 23521 col. 2. At the time of the invention it would be obvious to soften the palm sheaths of MOHANTY using both NaOH and sulfite as suggested by SONG. The person of ordinary skill in the art would be motivated to do so by SONG who states that the SO3 groups sulfonate and help remove the lignin and shorten reaction time while [pg. 23524 col. 2 last par. – pg. 23525 col. 1 par. 1]. The person of ordinary skill in the art would expect success as MOHANTY discloses that wood softening techniques can be applied to palm sheath softening and specifically discloses the SONG reference.
The combination of MOHANTY and SONG teach sodium sulfite. The sulfite anion is responsible for the benefits of the treatment as per SONG. At the time of the invention it would be obvious to substitute sodium with potassium cation. This simple substitution substitutes one known alkali metal for another known alkali metal. The person of ordinary skill in the art would expect success as it is the sulfite anion which produces the beneficial results.
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 ANTHONY J CALANDRA whose telephone number is (571)270-5124. The examiner can normally be reached Monday-Friday 7:45 AM -4:15 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Abbas Rashid can be reached at (571)270-7457. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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ANTHONY J. CALANDRA
Primary Examiner
Art Unit 1748
/Anthony Calandra/Primary Examiner, Art Unit 1748