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 .
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.
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.
Claim(s) 1 – 5 are rejected under 35 U.S.C. 103 as being unpatentable over CN 113072768 A, inventor unknown, hereinafter “CN” and evidenced by the NPL titled Softwood and Hardwood Fiber dimensions and by the NPL titled Melting point of polypropylene. A machine translated copy of CN is enclosed with this action.
CN is directed to high toughness polypropylene composite materials (Description).
Regarding claims 1 – 3, CN teaches a composition comprising 60 parts / 42.4 % polypropylene, 30 parts / 21.2 % polyurethane, 30 parts / 21.2 % wood fiber (cellulose fibers), 6 parts / 4.24 % of a reinforcement, 10 parts / 7.07 % of a compatibilizer, 3 parts / 2.12 % of plasticizer, 2 parts 1.41 % of a coupling agent and 0.5 parts / 0.35 % of an anti-aging agent. The components are compounded and melt injected at a temperature of 170 – 200C. From the NPL the melting point of polypropylene is in the range of 130 – 170C. The total amount of resin (polypropylene + polyurethane = 63.6%). This is within the claimed range.
Addressing the last limitation, CN is silent as to the viscosity of the material at 180C. Although the prior art fails to teach the viscosity of the molding compound at 180 C, it is axiomatic that one who performs the steps of a combining the two must necessarily produce all of its advantages. The discovery of a new property or use of a previously known composition, even if unobvious from the prior art, cannot impart patentability to claims to a known composition. In re Spada 15 USPQ 2d 1655 (CAFC 1990). "The absence of a disclosure relating to function does not defeat a finding of anticipation.” It is well settled that the recitation of a new intended use for an old product does not make a claim to that old product". In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431(Fed Cir 1997).
As to claims 4 – 5, CN is silent as to the wood fiber’s physical dimensions. The NPL to Softwood and Hardwood fiber dimensions shows that the fiber length softwoods is 2 – 6 mm (2000 – 7000 microns) with a diameter of 30 – 45 microns. The fiber dimensions for Hardwood fiber is length of 0.5 – 1.6 mm (500 – 1600 microns) and a diameter of 15 – 30 microns.
Regarding the average length of the cellulose fiber, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) (Claim reciting thickness of a protective layer as falling within a range of "50 to 100 Angstroms" considered prima facie obvious in view of prior art reference teaching that "for suitable protection, the thickness of the protective layer should be not less than about 10 nm [i.e., 100 Angstroms]." The court stated that "by stating that ‘suitable protection’ is provided if the protective layer is ‘about’ 100 Angstroms thick, [the prior art reference] directly teaches the use of a thickness within [applicant’s] claimed range."). MPEP
Conclusion
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PAS 3/18/26
/PETER A SALAMON/Primary Examiner, Art Unit 1759