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 without traverse of Gorup II, claims 148-149, in the reply filed on September 24, 2025 is acknowledged.
Claims 134-147 and 150-153 have been withdrawn from consideration as being directed towards a non-elected invention.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 148-149 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 148 recites the limitation “[a] composition comprising, by weight, at least about 10% Arundo fibers.” Claims reciting "at least about" are invalid for indefiniteness where there is close prior art and there is nothing in the specification, prosecution history, or the prior art to provide any indication as to what range of specific activity is covered by the term “about.”
Claim 149 is rejected based on its dependence on claim 148.
Claim Rejections - 35 USC § 102 / 103
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.
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.
Claim(s) 148-149 is/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 USPN 2007/0095491 to Altheimer.
Regarding claims 148-149, Altheimer teaches a composite panel and paper produce comprising the pulp (fibers) produced from Arundo donax (Altheimer, abstract, para 0054-0055). Altheimer teaches the pulp having a high tensile strength pulp (Id., abstract, para 0050). Altheimer teaches the incorporation of Arundo donax pulp into paper products provides advantageous brightness as well as strength (Id., para 0062). Altheimer teaches the advantageous properties of Arundo donax being obtained by incorporating from about 5% to about 85% by weight Arundo donax pulp (fiber) in the paper product (Id., para 0065). Altheimer teaches a handsheet (paper product, claim 149) made from 7/8 inch of cut nalgrass pulp beaten (Id., para 0137-0139), reading on a composition comprising, by weight, at least 10% Arundo fibers. Altheimer teaches the nalgrass having a tensile index of 75 (Id., Table 10).
Regarding the claimed Young’s modulus, shear modulus, and ash content, in general, a limitation is inherent if it is the “natural result flowing from” the explicit disclosure of the prior art. Schering Corp. v. Geneva Pharms., Inc., 339 F.3d 1373, 1379 (Fed. Cir. 2003). Therefore, although the prior art does not disclose this feature, the claimed properties are deemed to be inherent to the structure in the prior art since Altheimer reference teaches an invention with a substantially similar structure and chemical composition as the claimed invention. Altheimer teach high strength pulp from Arundo donax. The instant disclosure does not provide any teachings associated with adjusting or optimizing the claimed properties or the content of cellulose, hemicellulose, lignin, sugar, or chlorine. Products of identical structure and composition cannot have mutually exclusive properties. The burden is on the Applicants to prove otherwise.
Claim Rejections - 35 USC § 103
Claim(s) 148-149 is/are rejected under 35 U.S.C. 103 as being unpatentable over USPN 2007/0095491 to Altheimer, as applied to claims 148-149 above, in view of “The Constituents and Biological Effects of Atundo Donax” to Al-Snafi.
Regarding claims 148-149, in the event that the claimed properties are not inherent, Al-Snafi teaches Arundo donax contains lignin, cellulose and hemicelluloses (Al-Snafi, p. 34). Al-Snafi teaches the ash content being 2.39% (claim 149) with an average of 22% lignin (claim 148, (v) ), 42% alpha-cellulose (claim 148, (iii) ), and 27% hemicellulose (claim 148, (iv) )(Id., p. 35).
It would have been obvious to one of ordinary skill in the art before the effective filing date to form the paper of Altheimer, wherein the Arundo donax pulp is that of Al-Snafi, motivated by the desire of using conventionally known Arundo donax pulp and by the desire to successfully practice the invention of Altheimer.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. "High-grade sulfur-free cellulose fibers by pre-hydrolysis and ethanol-alkali delignification of giant reed (Arundo donax L.) stems" to Shatalov teaches chlorine-free process of pulp from Arundo donax.
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/JENNIFER A GILLETT/Examiner, Art Unit 1789
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