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
Claim 9 stands withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected method, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 07/02/2026.
Applicant’s election of claims 1-8 in the reply filed on 07/02/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
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 1-4 and 6-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 3-8 of copending Application No. 18/937,710 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the Application 18/937,710 teaches a composite resin molded body comprising a base resin, a plurality of natural fibers, an enzyme or microorganism support, a covering resin and at least a portion of the plurality of natural fibers exposed on the surface of the composite. Claims 1 and 3-8 of Application 18/937,710 read on the instant claims 1-4 and 6-
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-3 and 6-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 5-6 and 11 of U.S. Patent No. 12,410,287. Although the claims at issue are not identical, they are not patentably distinct from each other because U.S. Patent No. 12,410,287 teaches a composite resin molded product comprising a main agent resin, a plurality of natural fibers, microorganism or enzyme supported on the surfaces of the fibers, a coating resin. Claims 1-3, 5-6 and 11 read on instant claims 1-3 and 6-7.
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.
Claims 1-4 and 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Rapthel et al (DE 19830774) in view of Hou (CN 109867818).
Regarding claims 1, 3-4 and 6-7, Rapthel teaches a composite resin molded article comprising a base resin (can be construed as the modified starch resin or the polyhydroxyalkanoic) and a plurality of natural fibers (taught as natural fibers including hemp and cellulose) [0009 and 0015]. Rapthel teaches at least part of a surface of each of the plurality of natural fibers is coated with a coating resin including polyethylene oxide [0011]. Rapthel is silent regarding the claimed microorganism or enzyme. However, Hou teaches inclusion of enzymes (such as cellulase and amylase) in order to degrade cellulose-based materials and starch-based materials. It would have been obvious to one of ordinary skill in the art to ensure that each of the plurality of natural fibers in the composite resin molded article supports at least one of the microorganism and enzyme on a surface of each of the plurality of natural fibers since the entire purpose taught of the enzymes is to improve degradation of the fibers and in order for this to happen for each fibers, each fiber must have enzyme on it. It would have been obvious to one of ordinary skill in the art to use the enzymes taught by Hou in Rapthel supported on each of the plurality fibers in order to improve and affect degradation of the fibers and arrive at the claimed invention. Based on the similarity of the processing conditions to that of the instant application, it is exceedingly likely that at least one of the partially defibrated natural fibers would have a defibration site at the end of the fiber, and that at least one fiber would have a portion exposed on a surface of the molded article.
Regarding claim 2 and 8, Rapthel is silent regarding the water absorption of the article, as measured by JIS K7209:2000. However, Rapthel teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties, i.e. a moisture absorption of at least 5% would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot 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. See MPEP § 2112.01. 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 as to how to obtain the claimed properties with only the claimed ingredients dispersed in the base resin partially defibrated plant fiber (para. 0001), wherein the thermoplastic is a modified starch (para. 0009) and the plant fiber is a cellulose fiber (para. 0007) and is present at 10-65 wt% based on the total weight of the composition (paras. 0011). Based on the similarity of the processing conditions to that of the instant application, it is exceedingly likely that at least one of the partially defibrated natural fibers would have a defibration site at the end of the fiber in a fiber length direction, and that at least one fiber would have a portion exposed on a surface of the molded article.
Allowable Subject Matter
Claim 5 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Prior Art Not Used But Relevant
PG Pub. 2020/0377680 teaches a biodegradable composite material with natural fibers.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHAWN MCKINNON whose telephone number is (571)272-6116. The examiner can normally be reached Monday thru Friday generally 8:00am-5:00pm EST.
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/Shawn Mckinnon/Examiner, Art Unit 1789
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