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 .
Election/Restrictions
Applicant's election with traverse of Group I (claims 1-21) in the reply filed on 12/4/2025 is acknowledged. The traversal is on the ground(s) that there is no undue search burden on the examiner to search the method claims. This is not found persuasive because of the search would require a different field of search as they include divergent subject matter.
The requirement is still deemed proper and is therefore made FINAL.
Claims 22-24 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 12/4/2025.
Claim Objections
Claims 8 and 9 are objected to because in the first line of each, the term “a mass fraction” has antecedent basis should read as –the mass fraction--.
Appropriate correction is required.
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.
Claims 12 and 21 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
With respect to claim 12, it is unclear whether the average geodesic length is for all cellulose and/or lignocellulose fibers or just for the elongated or rounded fibers.
With respect to claim 21, it is indefinite due to the word “obtainable” which should be replaced with “obtained.” It is not understood how one can claim something (a composite article) which does not yet exist, but which is obtainable through some future step or means.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 11 is rejected under 35 U.S.C. 112(d) as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Specifically, “mechanical fibers intended for medium density fiberboard” are not necessarily cellulose and/or lignocellulose fibers.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 2, 4-10, 13-17, 20, and 21 rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bledzki (Bledzki, et al., Composites: Part A 74 (2015) 132-139).
With respect to claims 1, 2, 4, 13, and 14, Bledzki discloses biocomposites comprising polypropylene and polylactic acid (both thermoplastic resin) reinforced with short man-made cellulose fibers and softwood flour (abstract). Exemplified cellulose fibers (Cor) have average aspect ratio of 55 (Figure 1, legend), and exemplified softwood flour (WF) has average aspect ratio of 2.08 (Figure 2, legend). Because claimed average elongation is the inverse of aspect ratio, the average elongation exemplified by Bledzki is 0.018 (elongated) and 0.48 (rounded), respectively. In Figure 3, compositions include polymer/Cor/WF of 60/30/10 and 60/20/20, i.e., more mass fraction of elongated Cor and equal mass fraction, respectively.
With respect to claims 5-7, 9, and 15, in Figure 3, compositions include polymer/Cor/WF (polymer/elongated/rounded) of 60/30/10 and 60/20/20, i.e., 40 wt % cellulose and/or lignocellulose fibers in the composite.
With respect to claim 8, in Figure 3, composition includes polymer/Cor/WF (polymer/elongated/rounded) of 60/30/10, which provides for an amount of elongated fibers based on fibers of 75 wt %.
With respect to claim 10, Bledzki teaches that the elongated fibers (cor) is man-made and cut (mechanically pulped) (page 133, first column, last three lines of text that is not in a Table) rounded fibers (softwood flour) is milled (mechanically pulped (page 135, 1st column, lines 15-22 that are not from a figure).
With respect to claims 16 and 17, Bledzki teaches using maleic acid anhydride grafted PP wax as a compatibilizer between polypropylene and man-made cellulose fibers (elongated), i.e., coupling agent (page 133, second column, lines 12-14).
With respect to claims 20 and 21, Bledzki teaches extruding the composition and forming into pellets and then injection molding to form molded articles (page 133, 2.2.1. Compound section).
Claims 1-5, 11-17, and 19-21 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Sato (US 11,655,358).
With respect to claims 1-4, 13, and 14, Sato discloses a cellulose fiber-reinforced polyolefin resin composition and exemplifies (Example 11) a composition comprising 100 parts by weight (pbw) polypropylene, 6.8 pbw KC Flock W-100 (cellulose fiber having average aspect ratio of 8.5, i.e., average elongation = 0.12) and 6.8 pbw Arbocel FD600-30 (cellulose fiber having average fiber diameter of 35 µm and average length of 45 µm, i.e., average elongation = 0.78) (Table 1, Example 11; col. 7, lines 60-67). The former reads on claimed elongated fiber, and the latter reads on claimed rounded fiber.
With respect to claim 5, Example 11 includes total 10 wt % of cellulose fibers.
With respect to claim 12, the exemplified fibers have average length of 315 µm (col. 7, lines 64-67) (calculated from average aspect ratio and average fiber diameter) for elongated fiber and 45 µm for rounded fiber (col. 7, lines 60-63).
With respect to claim 15, the amount of polypropylene in Example 11 is 73 wt % (Table 1).
With respect to claims 16 and 17, Example 11 (Table 1) comprises maleic anhydride-modified ethylene-butene copolymer as compatibilizer.
With respect to claim 19, Sato discloses that additives include filler, antioxidant, UV absorber, a flame retardant, or colorant (col. 5, lines 1-4).
With respect to claims 20 and 21, Sato discloses mixing and extruding the composition and forming into a composite article by injection molding and cutting into a test piece (i.e., a granulate) (col. 9, lines 16-27).
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 of this title, 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.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Sato (US 11,655,358).
The discussion with respect to Sato in paragraph 7 above is incorporated here by reference.
In Example 11, Sato includes 23.3 parts by mass (i.e., 17 wt % of maleic anhydride-modified ethylene-butene copolymer as compatibilizer).
This total amount of polymeric compatibilizer is outside the claimed range of 0.5-5 wt %, however, Sato teaches the amount of acid (maleic anhydride) grafting is 0.1-10 wt %. Based on Example 1, the amount of maleic anhydride (i.e., the portion that compatibilizes the polypropylene to the cellulose) is present in an amount of 0.017-1.7 wt %.
Give that Sato teaches the compatibilizing amount of maleic anhydride in the acid-modified polymer that overlaps with the claimed range of 0.5-5 wt %, it would have been obvious to one of ordinary skill in the art utilize the maleic anhydride of Sato within the claimed range.
Claims 10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Sato (US 11,655,358) in view of Kimura (US 5,810,796).
The discussion with respect to Sato in paragraph 7 above is incorporated here by reference.
Sato fails to disclose that the cellulose fibers are sourced from pulp fibers derived from chemical or mechanical ways.
In Example 11, Sato includes a cellulose fiber of tradename KC Flock W-100.
Kimura teaches that KC Flock W-100 that hydrophilic cellulose fine fiber prepared by hydrolyzing, washing with water, drying, and mechanically grinding (col. 12, lines 49-53), i.e., chemithermomechanical pulp fibers.
Given that Sato exemplifies cellulose fibers that are prepared by hydrolyzing, washing, drying, and mechanically grinding as taught by Sato, it would have been obvious to one of ordinary skill in the art to include chemi-thermomechanical pulp fibers as source of all cellulose fibers.
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 and 10-21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 and 10-21 of copending Application No. 18/675,357 (published as PGPub US 2024/0400773). Although the claims at issue are not identical, they are not patentably distinct from each other because US appl ‘357 claims a cellulosic composite comprising a thermoplastic polymer matrix and 5-80 wt % cellulose and/or lignocellulose fibers comprising a mixture of elongated fibers having average elongation equal to or less than 0.300 and rounded fibers having an average elongation equal to at least 0.325—wherein the mass fraction of rounded fibers is equal to or larger than the mass fraction of elongated fibers. The instant claims and the claims of US appl ‘357 overlap when the mass fractions of rounded fibers and elongated fibers are equal.
Therefore, it would have been obvious to one of ordinary skill in the art to prepare a cellulosic composite comprising equal parts rounded and elongated fibers.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/Vickey Nerangis/
Primary Examiner, Art Unit 1763
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