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 Group I in the reply filed on 12/04/2025 is acknowledged.
Applicant elected the group for the molded article. The claims has further been amended to be directed to a molded article and not a composition. These claims will be included in the Election of Group I. Claims 9-10 are still directed to the process of making a molded article. The lack of unity shown in the restriction on 9/04/2025 is being maintained. Claims 9-10 are withdrawn as being directed to a non-elected Group.
Claims 9-10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group II, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/04/2025.
Claim Rejections - 35 USC § 112
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.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], 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 7 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, 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. 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.
Claim(s) 1-7 and 12-15 are rejected under 35 U.S.C. 102a1 as being anticipated by Bloembergen et al, USP 5,462,983.
Regarding claim 1, Bloembergen teaches a molded article (see abstract) comprising a composition comprising pulp and a biodegradable resin (see abstract and columns 7-8 teach the use of wood fibers and PHB) wherein the biodegradable resin is PHA (column 7 line 46) and a Cobb test according to TAPPI T441 of 0.000167 g/cm*cm (which is less than 100 g/m*m – see Example 4).
Bloembergen teaches the claimed molded article and composition while not describing the exactly same drying method for pressing them. The claims are not directed to a method of making and therefore only the physical properties of the final product is taken into consideration. As the same materials are utilized and the Cobb values read on the claims so all the required limitations are directly met making anticipation a proper rejection.
Regarding claims 2-7 and 12-15, Bloembergen remains as applied above and further teaches the poly Beta hydroxybutyrate repeat units (see columns 5-6) or PLA (column 5 line 28), in ratios to the starch of 80/20 or 50/50 weight ratios (see table 1 and claim 8), also the known use of 3-hydroxybutrate blends (column 17 line 30 in data incorporated by reference for the PHB utilized)
Claim(s) 1-7 and 12-15 are rejected under 35 U.S.C. 102a1 as being anticipated by Van Trump et al, US Patent Publication 2020/0114625.
Regarding claim 1, Van Trump teaches a molded article from cellulose fibers (see abstract) that includes a biodegradable resin of PHA (see abstract and claims 11 and 18) with a Cobb water absorption value of less than 25 grams per square meter (see claim 9) after pressing under heat and pressure (see claim 14).
Regarding claims 2-7 and 12-15 Van Trump further discloses the preferred polymers to include a poly 3-hydroxybutyrate or PLA or other similar biodegradable resins [0051] in amounts of the slurry with the cellulose making up 10-60 parts by weight [0053].
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.
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) 8 and 16 are rejected under 35 U.S.C. 102(a1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Bloembergen et al, USP 5,462,983.
Regarding claims 8 and 16, Bloembergen remains as applied above and teaches all of the claimed material limitations but is silent on the tear strength of the final product. It is understood that the average artisan would expect the same physical outcome to be produced by a product that is made with the same materials in the same manner. See In re Best.
In the alternative, with respect to the values of the Tear strength, it is elementary that a mere recitation of newly discovered function or property, inherently possessed by the things in the prior art, does not cause a claim drawn to those things to distinguish over the prior art (In re Swinehart et al, 169 USPQ 226 at 229). It would have been obvious that the same materials producing eh same final product would have similar physical properties to find the claimed range of the undescribed property to be obvious.
Claim(s) 8 and 16 are rejected under 35 U.S.C. 102(a1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious Van Trump et al, US Patent Publication 2020/0114625.
Regarding claims 8 and 16, Van Trump remains as applied above and teaches all of the claimed material limitations but is silent on the tear strength of the final product. It is understood that the average artisan would expect the same physical outcome to be produced by a product that is made with the same materials in the same manner. See In re Best.
In the alternative, with respect to the values of the Tear strength, it is elementary that a mere recitation of newly discovered function or property, inherently possessed by the things in the prior art, does not cause a claim drawn to those things to distinguish over the prior art (In re Swinehart et al, 169 USPQ 226 at 229). It would have been obvious that the same materials producing eh same final product would have similar physical properties to find the claimed range of the undescribed property to be obvious.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACOB T MINSKEY whose telephone number is (571)270-7003. The examiner can normally be reached M-F 8-6 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 5712707475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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JACOB T. MINSKEY
Examiner
Art Unit 1741
/JACOB T MINSKEY/Primary Examiner, Art Unit 1748