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 .
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 1-4, 6-12, and 14-20 are rejected under 35 U.S.C. 103 as being unpatentable over Ai et al. (CN 103554751) in view of Davidsaver (US 2006/0148935) as evidenced by Petchwattana et al. (Journal of Bionic Engineering 10, 2013, 110-117). Note: A machine translation is being used for CN 103554751.
Considering Claims 1-3, 10, and 16: Ai et al. teaches a composition comprising 20-80 weight percent of polyvinyl chloride and 5 to 70 weight percent of plant fiber (Abstract, ¶0005-06) that is preferably rice husk powder that has a size of 20 to 200 mesh (pg. 3). Ai et al. teaches an example comprising 54.21 weight percent of polyvinyl chloride and 13.7 weight percent of plant fiber (¶0023). Ai et al. does not teach additional polymers besides the polyvinyl chloride (Abstract, pg. 4).
Ai et al. does not teach the claimed particle size distribution. However, Davidsaver polyvinyl chloride and 20 or 25 weight percent of wood flour (Table III) having a particle distribution of trace at 40 mesh; 0 to 5 weight percent at 60 mesh; 0 to 55 weight percent at 80 mesh; 15 to 40 weight percent at 100 mesh, and 15 to 85 weight percent of balance pan/less than 100 mesh (Table IV). The instant claims combine the amounts of 100 and 80 mesh into one amount. The instant ranges for the particle sizes overlaps with the ranges of Davidsaver. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05. It would have been obvious to a person having ordinary skill in the art to have selected amounts of each particle size within the claimed range, and the motivation to do so would have been, as Petchwattana et al. suggests, to control the dispersability of the flour in the polyvinyl chloride matrix (Conclusion).
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients, in the claimed amounts, and teaches the composition as being made by a substantially similar process. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. the suitability for forming foamed plates or foils with a layer thickness of 3 mm or less, would necessarily arise from a composition with all the claimed ingredients in the claimed amounts. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Considering Claims 4, 6, and 17-20: Ai et al. teaches an example comprising 54.21 weight percent of polyvinyl chloride and 13.7 weight percent of plant fiber (¶0023).
Ai et al. teaches the amount of plant fiber powder as being from 5-70 weight percent. The claimed range lies within the range of Ai et al. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05. It would have been obvious to a person having ordinary skill in the art to have increased the amount of plant fiber in the composite within the range of Ai et al., and the motivation to do so would have been, as Ai et al. suggests, to increase the strength of the composite while reducing the cost (pg. 3-4).
Considering Claim 7: Ai et al. teaches the composition as comprising 5 to 70 weight percent of a filler (Abstract, ¶0005) that is preferably calcium carbonate or talc (pg. 3). Ai et al. teaches an example comprising 16.7 weight percent of inorganic filler (¶0023).
Considering Claim 8: Ai et al. teaches the composition as comprising 0.5 to 10 weight percent of lubricant (Abstract).
Considering Claim 9: Ai et al. teaches an example comprising 54.21 weight percent of PVC, 13.7 weight percent of plant fiber powder, 16.7 weight percent of inorganic filler, and 15.39 weight percent of additives (¶0023).
Ai et al. teaches the amount of plant fiber powder as being from 5-70 weight percent. The claimed range lies within the range of Ai et al. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05. It would have been obvious to a person having ordinary skill in the art to have increased the amount of plant fiber in the composite within the range of Ai et al., and the motivation to do so would have been, as Ai et al. suggests, to increase the strength of the composite while reducing the cost (pg. 3-4).
Considering Claim 11: Ai et al. teaches forming a molded part by extrusion (pg. 4).
Considering Claim 12: Ai et al. teaches the molded article as being a flooring material (pg. 3), which can function as a plate. The Office interprets this claim as requiring either a plate of any size or a foil of 3 mm or less.
Considering Claim 14: Ai et al. teaches sealing/forming a varnish on the molded article (pg. 4).
Considering Claim 15: Ai et al. teaches the molded article as being flooring material (pg. 3).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Ai et al. (CN 103554751) in view of Davidsaver (US 2006/0148935) as evidenced by Petchwattana et al. (Journal of Bionic Engineering 10, 2013, 110-117) as applied to claim 1 above, and further in view of Ramle et al. (Advanced Materials Research Vol. 812 (2013) pp 151-156).
Considering Claim 5: Ai et al., Davidsaver and Petchwattana et al. teach the composite of claim 1 as shown above.
Ai et al. does not teach adding a silane to the filler. However, Ramle et al. teaches treating a rice husk powder with an aminosilane in a polyvinyl chloride composite (Abstract). Ai et al. and Ramle et al. are analogous art as they are concerned with the same field of endeavor, namely polyvinyl chloride composites. It would have been obvious to a person having ordinary skill in the art to have treated the filler of Ai et al. with an aminosilane, as in Ramle et al., and the motivation to do so would have been, as Ramle et al. suggests, to improve the tensile stress of the composite (Abstract).
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Ai et al. (CN 103554751) in view of Davidsaver (US 2006/0148935) as evidenced by Petchwattana et al. (Journal of Bionic Engineering 10, 2013, 110-117)) as applied to claim 11 above, and further in view of Mengeloglu (Rigid Polyvinyl Chloride/Wood Flour Composites and their Foams, 2001).
Considering Claim 13: Ai et al., Davidsaver and Petchwattana et al. collectively teach the molded article of claim 11 as shown above.
Ai et al. teaches forming a foam, but is silent towards the density. However, Mengeloglu teaches foaming a polyvinyl chloride composite to reduce the density to 0.4 g/cc (pg. 3). Ai et al. and Mengeloglu are analogous art as they are concerned with the same field of endeavor, namely polyvinyl chloride composites. It would have been obvious to a person having ordinary skill in the art to have foamed the composite of Ai et al. as in Mengeloglu, and the motivation to do so would have been, as Mengeloglu suggests, low density articles have utility in construction applications (pg. 1).
Response to Arguments
Applicant's arguments filed March 4, 2026 have been fully considered but they are not persuasive, because:
A) The applicant’s argument that Ai et al. does not disclose the article having a thickness of 3 mm or less is not persuasive. The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients, in the claimed amounts, and teaches the composition as being made by a substantially similar process. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. the suitability for forming foamed plates or foils with a layer thickness of 3 mm or less, would necessarily arise from a composition with all the claimed ingredients in the claimed amounts. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LIAM J HEINCER whose telephone number is (571)270-3297. The examiner can normally be reached M-F 7:30-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LIAM J HEINCER/Primary Examiner, Art Unit 1767
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