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 Objections
Claim 1 is objected to because of the following informalities: the claim lacks a colon after the transitional phrase, i.e., “comprising:”. 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.
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 1-4, 6-8, 13 and 15 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.
Regarding claim 1, the claim recites “the grid has a mesh dimensioned to allow bulk fibers having a density comprised between 15 and 200 kg/m3 to pass” which renders the claim indefinite because it is not clear how the mesh allows bulk fibers having any measurable density at the time they are in the mesh to pass through, i.e., it is unclear how the density of the bulk fibers passing through the mesh could be measured as the density of bulk fibers depends on many factors such as how they are packed together, the moisture content and the temperature. In particular, the specification describes bulk fibers having such a density in Example 3 (P. 13, Ln. 11 through P. 14, Ln. 9), however the density of these bulk fibers is measured to be between 15 and 200 kg/m3 after they have been blown on to a frame by a blowing machine oriented at a particular distance and direction from the frame in two separate blowing stages and subsequently leveling the surface of the blown bulk fibers. These fibers had previously been subjected to grinding and passing through a mesh, but the bulk density was measured after these fibers had been blown into a frame in the above-described manner and then the bulk density of the fibers in the frame were measured, i.e., the density of all of these fibers formed together. Therefore, this claim will be interpreted as the mesh allows bulk fiber to pass which are capable of forming an article having a bulk density between 15 and 200 kg/m3. It is noted that if the claim were to recite a step of wood fibers having a density between 15 and 200 kg/m3 pass through the mesh then this claim would lack written description support because the specification only describes the bulk fibers having such a density after they have been formed into an article by the blowing and leveling processes described above. Claims 2-4 and 6-8 depend from claim 1 and fail to clarify the indefinite language.
Regarding claim 13, the claim is a method claim that does not include any method steps. The claim recites “[a] method for manufacturing an article by using bulk fibers obtained by application of the method as claimed in claim 1” and there is no further description as to how the material is manufactured. For the purpose of examination, this claim will be interpreted as the method of claim 1 further comprising manufacturing an article with the bulk fibers. Claim 15 depends from claim 13 and fails to clarify the indefinite language.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 1-4, 6, 8-13 and 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over DE 10 2009 042362 A1 to Scholer in view of JP 2005-186582 A to Tokuhara in further view of Thermal Conductivity of Wood-Base Fiber and Particle Panel Materials by Lewis (hereinafter Lewis).
Regarding claim 1, Scholer teaches a method for recycling a rigid wood fiber panel comprising natural fibers (Abstract; Fig. 1; it is noted that “paper waste” in Scholer is not limited to printing paper, i.e., it could be rigid paper products such as cardboard or corrugated fiberboard which are also made of wood fiber, further “rigid” is interpreted as the panel has any rigidity and not necessarily that the panel has rigidity above some threshold), which method comprises
a mechanical grinding of the rigid material at room temperature and atmospheric pressure of the wood fiber panel in order to obtain bulk fibers (Figs. 1-2; P. 3, Paragraph starting “In 1 is greatly simplifies the process;” the wooden board is comminuted via a mechanical process in a dry process in a mill exposed to the environment, i.e., at room temperature and atmospheric pressure).
Scholer fails to explicitly teach said mechanical grinding being performed in a drum having a grid arranged on a periphery of the drum wherein the grid has a mesh dimensioned to allow bulk fibers having a density comprised between 15 and 200 kg/m3 to pass. Scholer teaches that the wood material is comminuted mechanically (P. 3, Paragraph starting “In 1 is greatly simplifies”), but is silent regarding the manner in which the mechanical comminuting occurs.
Tokuhara teaches a method for recycling a rigid wooden product (Abstract) comprising mechanical grinding 13 being performed in a drum 95 having a grid 96 arranged on a periphery of the drum wherein the grid 96 has a mesh dimensioned to allow bulk fibers to pass (Fig. 1; P. 5, Paragraph starting “The crushing means 13”; the crushing means for the wooden product in Tokuhara includes a hammer crusher, i.e., a drum, and a sieving portion 96, i.e., a grid having a mesh, to produce comminuted wood products, i.e., bulk fibers).
It would have been obvious to a person of ordinary skill in the art before the effective filing date to substitute the mechanical grinding system in the wood recycling system of Scholer with the mechanical grinding system of Tokuhara as those components and their functions were well known in the art and a person of ordinary skill in the art could have substituted each of these known elements for another with the predictable result of providing an apparatus to mechanically comminute a wood product.
Further, as discussed in the indefiniteness rejection above, “a mesh dimensioned to allow bulk fibers having a density comprised between 15 and 200 kg/m3 to pass” is interpreted as the bulk fibers that pass through the mesh are capable of being formed into an article having the recited density. Lewis teaches that the density of a wood fiber material is a result effective variable that controls the thermal conductivity of the wood material (Lewis, PP. 1 and 11-12; the introduction on P. 1 discusses the importance of thermal conductivity and each of the pages discusses that the thermal conductivity is a result effective variable that may be changed via the density, specifically on P. 1 Lewis states “one could expect lower conductance from low-density wood-base materials than with those of high density”). In other words, density is a variable that achieves the recognized result of adjusting the thermal conductivity, which is important for insulating an environment such that heat may be contained therein or removed from the environment.
Therefore, it would have been obvious to one having ordinary skill in the art at the time of the invention to modify a material formed using the fibers produced by the method of modified Scholer to have a density between 15 and 200 kg/m3 as a matter of routine optimization since it has been held that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 2, modified Scholer teaches the method according to claim 1 (Abstract), wherein the grinding is non-shearing (Tokuhara, Fig. 1; P. 5, Paragraph starting “The crushing means” and Next, the raw material is supplied”; modified Scholer includes the mechanical grinding apparatus of Tokuhara, which teaches the board made from wood is grinded with a hammer mill, i.e., a non-shearing comminuting, to form fibers).
Regarding claim 3, modified Scholer teaches the method according to claims 1 (Abstract), wherein the grinding comprises an impact grinding (Tokuhara, Fig. 1; P. 5, Paragraph starting “The crushing means” and Next, the raw material is supplied”; modified Scholer includes the mechanical grinding system of Tokuhara, which teaches a board made from wood is grinded with a hammer mill, i.e., impact grinding, to form fibers).
Regarding claim 4, modified Scholer teaches the method according to claims 3 (Fig. 1), wherein the impact grinding is carried out using a hammer crusher mounted to a drum (Tokuhara, Fig. 1; P. 5, Paragraph starting “The crushing means” and Next, the raw material is supplied;” modified Scholer includes the mechanical grinding system of Tokuhara, which teaches a board made from wood is grinded with a hammer mill, i.e., hammers mounted to a drum).
Regarding claim 6, modified Scholer teaches the method according to claims 1 (Abstract), wherein the grinding comprises several successive crushing steps (Tokuhara, Fig. 1; P. 5, Paragraph starting “At this time, since the back side of the pachinko board” and Next, the raw material is supplied;” modified Scholer includes the mechanical comminuting system of Scholer, which teaches the board is grinded first by means 12 which removes the non-wood elements before being supplied to the crushing means 13 to fully grind).
Regarding claim 8, modified Scholer teaches the method according to claim 1 (Abstract), further comprising a mechanical treatment step of destructuration or deplanarisation prior to the grinding (Tokuhara, Fig. 1; P. 5, Paragraph starting “At this time, since the back side of the pachinko board” and Next, the raw material is supplied”; modified Scholer includes the mechanical comminuting system of Tokuhara, which teaches the comminuting system includes the board being ground first by means 12 which performs a step of destructuration, i.e., breaking the structure of the board, before the board is supplied to the crushing means 13 to fully grind).
Regarding claim 9, modified Scholer teaches the fibers obtained by application of the method according to one of claim 1 (P. 3, Paragraph starting “In 1 is greatly simplifies”).
Regarding claim 10, modified Scholer teaches the bulk fibers according to claim 9 (Fig. 1).
Scholer fails to explicitly teach the fibers having a thermal conductivity measured by fluxmetry according to EN 12667 between 0.010 and 0.055 W/ m.K. While it is known that fibers have a thermal conductivity, Scholer fails to disclose any specific thermal conductivity values.
However, Lewis teaches that the thermal conductivity of a wood fiber is a result effective variable that influences the suitability of the material for applications such as insulating a house in the winter or surrounding an engine, i.e., a high thermal conductivity is desirable in situations where heat needs to be dissipated and a low thermal conductivity is desirable in situation where heat is to be contained (Lewis, PP. 1 and 11-12; the introduction on P. 1 discusses the importance of thermal conductivity and each of the pages discusses that the thermal conductivity is a result effective variable that may be changed via the density). In other words, thermal conductivity is a variable that achieves the recognized result of insulating an environment such that heat may be contained therein or removed from the environment.
Therefore, it would have been obvious to one having ordinary skill in the art at the time of the invention to modify the fibers of Scholer to have thermal conductivity between 0.010 and 0.055 W/ m.K as a matter of routine optimization since it has been held that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 11, modified Scholer teaches the bulk fibers according to claim 9 (Fig. 1), wherein the bulk fibers have a density comprised between 15 and 200 kg/m3 (Lewis, PP. 1 and 11-12; claim 11 depends from claim 9 which states that the bulk fibers are obtained according to method of claim 1, and modified Scholer includes the bulk fibers having a density between 15 and 200 kg/m3 as discussed above).
Regarding claim 12, modified Scholer teaches an insulation material comprising bulk fibers according to claim 9 (P. 3, Paragraph starting “In 1 is greatly simplifies;” the fibers are formed into a cardboard material which is capable of providing some insulation).
Regarding claim 13, modified Scholer teaches a method for manufacturing an article by using bulk fibers obtained by application of the method as claimed in claim 1 (P. 3, Paragraph starting “In 1 is greatly simplifies;” the fibers are used to form a cardboard material).
Regarding claim 15, modified Scholer teaches the method of claim 13 (Fig. 1), wherein the article is a flexible or rigid insulation panel, a decorative element, an object pressed and/or hot or cold glued optionally comprising a binder, resin, mineral, or organic glue, unifiber or composite (P. 3, Paragraph starting “In 1 is greatly simplifies;” the fibers are used to form a rigid cardboard panel, which may be used for decoration or insulation).
Regarding claim 16, modified Scholer teaches the bulk fibers according to claim 10 (Fig. 1) having a density comprised between 15 and 200 kg/m3 (Lewis, PP. 1 and 11-12; claim 10 depends from claim 9 which states that the bulk fibers are obtained according to the method of claim 1, and modified Scholer includes the bulk fibers having a density between 15 and 200 kg/m3 as discussed above).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Scholer in view of Tokuhara in further view of Lewis as evidenced by US 2008/0221318 A1 to Edelmann.
Regarding claim 7, modified Scholer teaches the method according to claims 1 (Abstract; Fig. 1) wherein the natural fibers are fibers comprising lignin and/or hemicellulose (P. 3, Paragraph starting “In 1 is greatly simplifies;” the wood fiber board is comminuted which would produce lignin and hemicellulose elements as evidenced by Para. [0087] of Edelmann which states that wood fibers include lignin and hemicellulose).
Response to Arguments
Applicant’s amendments and remarks dated September 15, 2026, with respect to the rejections of claims 1-16 under 35 USC 101, 102, 103 and 112 have been fully considered and are persuasive. Therefore, the rejections has been withdrawn. However, upon further consideration, the claim amendments have introduced additional 112 amendments and the currently pending claims are rejected over the combination of Scholer, Tokuhara and Lewis, as discussed above.
While Applicant’s arguments are directed to the anticipation rejections of the references relied upon in the obviousness rejection above, some of the arguments regarding the references are still applicable and will be addressed below.
With respect to Scholer, Applicant argues that the reference does not teach “the recycling of rigid wood fiber panel” because the refence discusses recycling paper products and therefore this reference fails to explicitly teach “mechanically grinding a rigid wood fiber panel.” Remarks, PP. 6-7. This argument has been carefully considered and it is not persuasive. It is noted that applicant appears to be relying upon “rigid” to suggest that the wood fiber panel must be something other than a paper panel, however there is no requirement for the rigidity to be a certain level in the claims. Further, wood fiber paper panels may have high rigidity when they are formed into paper products such as corrugated fiberboard or cardboard, which may be used as products such as posters, gameboard or signs that would have high rigidity and include objects attached to and supported by the paper product. Accordingly, this argument is not persuasive. It is also noted that Applicant’s argument with respect to Lewis not curing the deficiencies of Scholer is not persuasive because the paper fibers produced by Scholer are wood fibers, i.e., paper products are composed of wood and would be comminuted into wood fibers.
With respect to Tokuhara, Applicant argues that Tokuhara’s multiple stage comminuting system does not teach the claimed mechanical grinding of a rigid wood fiber panel because there is an initial grinding step to scrape or remove a surface layer followed by a crushing step to obtain “wood chips…[that] differ in structure, form, and resulting material characteristics.” Remarks, PP. 7-8. This argument has been carefully considered and it is not persuasive. Regarding the wood chip versus bulk fiber distinction, this argument is not commensurate in scope with the claim language which simply describes the bulk fibers being formed by the mechanical grinding (e.g., “a mechanical grinding…of the wood fiber panel in order to obtain bulk fibers”) and does not describe any physical features of the fibers that would distinguish them from any material output when mechanically grinding a wood product. Further, Tokuhara teaches the initial steps of the grinding process include removing the non-wood features of the board on the front and back (P. 4, Paragraphs starting “With such a configuration” and “While the non-wood member pieces” and P. 5, Paragraph starting “As a result”) and then the board with these pieces removed is provided to a “crusher portion 95, for example, a conventionally used hammer crusher or shredder” (P. 5, Paragraph starting “The crushing means 13”). Thus, Tokuhara teaches mechanical grinding of the wood panel after the non-wood features have been removed from the front and back. Applicant’s argument is not persuasive as there is nothing in the claim that precludes the panel from being subjected to earlier mechanical processes to remove portions of the product before the mechanical grinding.
Finally, Applicant argues that the rejection fails to provide a rationale to modify the references with the teachings of Lewis. PP. 8-9. This argument is not persuasive as the argument makes a boilerplate statement without addressing the rationale in the pending rejection, in particular that Lewis teaches the density and thermal conductivity of articles formed with wood fibers are result effective variables. Applicant argues that the teachings of Lewis do not suggest “the specific upstream process steps” of the claimed invention, however Lewis is only relied upon for modifying the thermal conductivity or density of articles formed by the fibers after they have been produced by the upstream process.
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 MATTHEW STEPHENS whose telephone number is (571)272-6722. The examiner can normally be reached M-F 930-630.
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/MATTHEW STEPHENS/Examiner, Art Unit 3725
/Christopher L Templeton/Supervisory Patent Examiner, Art Unit 3725
