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/Restriction
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-6, drawn to a method for manufacturing a cellulose product, classified in CPC B29C 43/10.
II. Claim 7, drawn to a non-flat cellulose product, classified in CPC D04H 1/732.
III. Claims 8-9, drawn to a pressure molding apparatus, classified in CPC B27N 5/00.
The inventions are independent or distinct, each from the other because:
Inventions I and II are related as process of making and product made. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another and materially different product or (2) that the product as claimed can be made by another and materially different process (MPEP § 806.05(f)). In the instant case, the product, Group II, can be made by another and materially different process such as a method of manufacturing a non-flat cellulose product wherein the pressure application is varied across the preform to form a non-uniformly pressed product.
Examiner notes Applicant’s Claim 6 is recited as product-by-process claim. In a product by process claim, so long as the product has the same claimed composition or properties, the method by which it was made or by which the properties were tested is not material. According to the MPEP, “even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” (MPEP 2113 [R-1], see In re Thorpe, 777F.2d 695, 698, 227 USPQ 964, 966).
Inventions I and III are related as process and apparatus for its practice. The inventions are distinct if it can be shown that either: (1) the process as claimed can be practiced by another and materially different apparatus or by hand, or (2) the apparatus as claimed can be used to practice another and materially different process. (MPEP § 806.05(e)). In this case, the process, Group I, can be practiced by hand.
Inventions III and II are related as apparatus and product made. The inventions in this relationship are distinct if either or both of the following can be shown: (1) that the apparatus as claimed is not an obvious apparatus for making the product and the apparatus can be used for making a materially different product or (2) that the product as claimed can be made by another and materially different apparatus (MPEP § 806.05(g)). In this case, the product, Group II, can be made by another and materially different apparatus that applies different pressures on different regions of the blank.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
The inventions have acquired a separate status in the art in view of their different classification
The inventions have acquired a separate status in the art due to their recognized divergent subject matter
The inventions require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries).
The inventions have acquired an examination burden that includes the effort required to apply the art by making and discussing all appropriate grounds of rejection. Multiple inventions, such as those in the present application, normally require additional reference material and further discussion for each additional invention examined. Concurrent examination of multiple inventions would thus typically involve a significant burden even if all searches were coextensive. However, in the present application, the inventions require a different field of search and consequently the search is not coextensive.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Applicant’s election without traverse of Group III in the Preliminary Amendment filed on March 20, 2026 is acknowledged.
Claims 1-7 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on March 20, 2026.
The election has been treated as an election without traverse because no statement was made indicating whether the election was made with or without traverse.
Rejoinder
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Claim Objections
Claims 14-17 are objected to because of the following informalities:
In Claim 14, Line 1-2, “the apparatus is configured cool” should read “the apparatus is configured to cool”.
In Claim 17, the extra commas in the limitation “a volumetric pressure on the fibres, of the heated cellulose blank during the process of fibril aggregation, is substantially equal” should be removed.
Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Such limitations include: “heating means” in Claims 8, 9, and 13 that is being interpreted as heated oil through channels in forming mould and integrated electrical resistors as recited in Paragraph [0081] of the published specification and equivalents thereof, “pressing means” in Claim 8 which is being interpreted as the pressure mold as recited in Paragraph [0021] of the published specification and equivalents thereof. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation(s) is/are: “means of said forming mould” in Claim 8 which is being interpreted as the forming mold and equivalents thereof and “means of integrated electrical resistors” in Claim 15 which is being interpreted as integrated electrical resistors and equivalents thereof.
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
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 13-14, 17, and 19 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 13 and 14 recites “the forming mould part”. It is unclear whether this limitation refers to the positive or negative non-flexible forming mould part (or both). For examination purposes, it will be assumed that the limitation should read “the forming mould” (generally referring to both the positive and negative forming mould parts).
Claim 17 recites the limitation “the process of fibril aggregation”. There is insufficient antecedent basis for this limitation in the claim as “a process of fibril aggregation”. For examination purposes, the claim will be interpreted as if antecedent basis was properly established.
Regarding Claim 19, the phrase "in particular" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). For examination purposes, the limitation will be treated as not required.
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.
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.
Claims 8-12 and 15-20 are rejected under 35 U.S.C. 103 as being unpatentable over Asayama et al (PGPub 2002/0012759 cited in IDS), Henrio et al (PGPub 2016/0297153) and Socci et al (PGPub 2016/0145811).
Regarding Claim 8, Asayama teaches a pressure moulding apparatus for manufacturing a cellulose product having a non-flat product shape (Abstract), where the apparatus comprises:
a forming mould having a forming surface defining said product shape (Fig. 1a, 1b), where the forming mould comprises a negative non-flexible pressure mould part (Fig. 1a, 1b- concave mold 2) and a positive non- flexible forming mould part (Fig. 1a, 1b- convex mold 1);
said apparatus further comprises heating means arranged to heat the cellulose blank to a forming temperature in the range of 100°C to 200°C ([0139]- 100-150°C); and
said apparatus further comprises pressing means arranged to press the cellulose blank by means of said forming mould (Fig. 1a, 1b; [0137]- discussing press molding).
Asayama does not specify the cavity thickness between the positive non-flexible forming mould part and the negative non-flexible pressure mould part deviates from nominal even thickness to create an isostatic pressure on every portion of the cellulose blank towards the mould parts when the mould parts are pressed together with a force or pressing with an isostatic forming pressure acting on the cellulose blank across said forming surface wherein said forming pressure is in the range of 1 MPa to 100 MPa.
Henrio teaches an alternative press mold operation (Abstract) wherein the cavity thickness between the positive non-flexible forming mould part and the negative non-flexible pressure mould part deviates from nominal even thickness (Figs. 1 and 2- showing varying cavity thickness) to create an isostatic pressure on every portion of the cellulose blank towards the mould parts when the mould parts are pressed together with a force [0056] and pressing with an isostatic forming pressure acting on the cellulose blank across said forming surface [0056] in order to enable the mechanical strength of the resulting part to be increased [0056].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the apparatus of Asayama to include a varying cavity thickness and applying isostatic pressure as taught by Henrio with reasonable expectation of success to enable the mechanical strength of the resulting part to be increased [0056].
Henrio also does not specify a specific forming pressure in the range of 1 MPa to 100 MPa.
Socci teaches an alternative press molding operation (Abstract) wherein the forming pressure in the range of 1 MPa to 100 MPa ([0042]- forming pressure of 0.5-6.2 MPa) in order to effectively remove water from the molded article and provide a final product with good surface properties and no seams or joints [0041]-[0042].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify the combination of Asayama and Henrio to include a forming pressure of 1-100 MPa as taught by Socci with reasonable expectation of success to effectively remove water from the molded article and provide a final product with good surface properties and no seams or joints [0041]-[0042].
Examiner notes “a cellulose product having a non-flat product shape starting from a cellulose blank comprising loose and separated fibres containing less than 45 weight percent water” is a recitation of the article worked upon. The "inclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." MPEP 2115; In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935) and thus, the recitation of “a cellulose product having a non-flat product shape starting from a cellulose blank comprising loose and separated fibres containing less than 45 weight percent water” is not given significant patentable weight.
Regarding Claim 9, Asayama further teaches the apparatus comprises heating means arranged to pre-heat the negative non-flexible pressure mould part and/or the positive non-flexible forming mould part ([0138]- The whole mold may be previously heated).
Regarding Claim 10, Asayama further teaches the forming mould is configured such that no additional heat is supplied to the cellulose blank during pressing [0138]-[0140].
Regarding Claim 11, Henrio further teaches the cavity thickness between the two mould parts is compensated so the most narrow cavity thickness smin is situated adjacent to where the un-compressed cellulose blank is thinnest tmin (Fig. 1- narrowest portion of cavity corresponding to the narrowest portion of the preform) and the most wide cavity thickness smax is situated adjacent to where the un- compressed cellulose blank is thickest tmax (Fig. 1- widest portion of cavity corresponding to the widest portion of the preform), such that the negative pressure mould is configured to press the cellulose blank against the forming positive mould with a substantially equal forming pressure P1 acting on the cellulose blank across the forming surface ([0056]- discussing the application of isostatic pressure across the preform).
Regarding Claim 12, Asayama further teaches the forming mould comprises an upper pre-heatable negative non-flexible pressure mould part and a lower pre-heatable positive non-flexible forming mould part ([0138]- The whole mold may be previously heated).
Regarding Claim 15, Asayama further teaches the forming mould is configured to be pre-heated by means of integrated electrical resistors in the forming mould [0138].
Regarding Claim 16, Asayama further teaches the apparatus is configure to pre-heat the cellulose blank by using infrared rays prior to entrance into the forming mould ([0138]- The blank sheet 3 can be heated by, for example, high frequency heating method, hot air heating method, infrared heating method or the like).
Regarding Claim 17, Henrio further teaches the forming mould is configured to create an isostatic pressure on every portion of the cellulose blank towards the mould parts when the mould parts are pressed together with a force [0056], such that a volumetric pressure on the fibres of the heated cellulose blank during the process of fibril aggregation is substantially equal in all geometrical locations of the final 3D object during production ([0056]- discussing the application of isostatic pressure; Examiner notes isostatic pressure by definition is applied uniformly applied in all directions).
Regarding Claims 18-20, Asayama further teaches the apparatus is configured for manufacturing a cellulose product (Abstract).
Examiner notes “a cellulose product starting from a cellulose blank having a water content in the cellulose blank at the time of processing in the range 0.5 -10% weight”, “a cellulose product starting from a cellulose blank containing wood pulp, in particular chemical wood pulp”, and a cellulose product starting from a cellulose blank comprising at least 90 weight percent wood pulp” are recitations of the article worked upon. The "inclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." MPEP 2115; In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935) and thus, these recitations are not given significant patentable weight.
Claims 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Asayama et al (PGPub 2002/0012759 cited in IDS), Henrio et al (PGPub 2016/0297153), Socci et al (PGPub 2016/0145811) and Scolamiero et al (PGPub 2005/0069600).
Regarding Claim 13, Asayama teaches the mold may be heated by conventional means [0138] but does not specify the heating means comprises internal channels provided in the forming mould part, wherein the internal channels are configured to receive heated oil.
Scolamiero teaches an alternative press molding operation (Abstract) wherein the heating means comprises internal channels provided in the forming mould part [0047], wherein the internal channels are configured to receive differing heat transfer media such as heated oil [0047] in order to increase the efficiency of the molding process by eliminating the need to connect and disconnect multiple heat transfer media to a single set of channels in the heat transfer platen and allowing for more precise thermodynamic control of the molding process [0047].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify the combination of Asayama, Henrio, and Socci to include internal channels in the forming mold configured to receive differing heat transfer media such as heated oil as taught by Scolamiero with reasonable expectation of success to increase the efficiency of the molding process by eliminating the need to connect and disconnect multiple heat transfer media to a single set of channels in the heat transfer platen and allowing for more precise thermodynamic control of the molding process [0047].
Regarding Claim 14, Asayama does not specify the apparatus is configured to cool the compressed cellulose blank by pumping cooled oil into internal channels in the forming mould part.
Scolamiero teaches an alternative press molding operation (Abstract) wherein the apparatus is configured to cool the molded part by pumping cooled oil into internal channels in the forming mould part ([0047]- discussing heating and cooling with various heat transfer media) in order to increase the efficiency of the molding process by eliminating the need to connect and disconnect multiple heat transfer media to a single set of channels in the heat transfer platen and allowing for more precise thermodynamic control of the molding process [0047].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify the combination of Asayama, Henrio, and Socci to include cooling the molded part with heat transfer media such as cooled oil as taught by Scolamiero with reasonable expectation of success to increase the efficiency of the molding process by eliminating the need to connect and disconnect multiple heat transfer media to a single set of channels in the heat transfer platen and allowing for more precise thermodynamic control of the molding process [0047].
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Adrianna Konves whose telephone number is (571)272-3958. The examiner can normally be reached Monday-Friday 8:00-4:00 MST (Arizona).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Abbas Rashid can be reached at (571) 270-7457. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/A.K./Examiner, Art Unit 1748 3/24/26
/Abbas Rashid/Supervisory Patent Examiner, Art Unit 1748