DETAILED ACTION
The communication dated 12/6/2024 has been entered and fully considered. Claims 1-19 are pending.
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 .
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.
Claim 1-19 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12338578 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because both claims have in common (non-wood agricultural feedstock, reduction in size, chemical pulping at less than 100 °C, unpressurized, without ozone without bleaching, and press molding a final product.
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.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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) 1-7, 9-11, and 13-19 are rejected under 35 U.S.C. 103 as being unpatentable over MIKULIC (US 9777429 B2) in view of YANG (US 2007/0199669 A1) , and BACKFOLK (20200056333 A1).
For claim 1, MIKULIC teaches a method of preparing agricultural feedstock fibers, comminuting the fiber to a length, and alkaline pulping the fiber with a temperature of less than 100°C [abstract]. This teaches the limitation of “A method comprising: providing non-wood agricultural feedstock material that includes agricultural fibers, and reducing a size of such agricultural fibers to a desired length” and “; chemically pulping the agricultural fibers in an alkaline chemical pulping process to produce an agricultural fiber pulp, wherein chemically pulping the agricultural fibers is achieved at a temperature of less than 100°C”.
MIKULIC does not teach the reaction at atmospheric pressure or the refining of the fiber. YANG teaches a similar method of alkali pulping agricultural byproduct fiber [abstract]. YANG teaches the alkali pulping can be completed with alkali only pretreatment (without enzyme use) [0058]. YANG also teaches bleaching is optional [0027] and makes no mention of ozone treatment. YANG further teaches the alkali reaction conditions can be completed at less than 100°C and at atmospheric pressure in an open container (no pressure) [0064]. This teaches the limitation of “and unpressurized conditions throughout the entire chemical pulping process, without addition of any acids or enzymes, and wherein the method is performed without use of ozone, and without any bleaching”. YANG teaches the processing treatment of the fiber bundles allow for the fiber to be used like any other natural cellulose without being made into yarn [0027]. It would be obvious to one skilled in the art to substitute the alkali treatment process of YANG into the similar alkali treatment of MIKULIC to product a useful agricultural by-product pulp. One skilled in the art would be motivated to combine the art based on the process treatment allowing for easier use of agricultural product like other cellulosic fiber.
Regarding the fiber refinement, BACKFOLK teaches a method of using agricultural fiber to make a chemi-mechanical pulp [0041]. BACKFOLK also teaches the pulp is further chemically pretreated, like YANG, and then refined to make Micro Fibrillated Cellulose (MFC) [0040]. BACKFOLK teaches the advantage of the invention is the ability to spray the pulp as a dispersion which would be useful in making a layered molded article [0014 and 0017]. This teaches the limitation of “and mechanically refining such agricultural fibers; and introducing the agricultural fiber pulp into a molded pulp product manufacturing machine to make as molded pulp product from the agricultural fiber pulp”. It would be obvious to one skilled in the art to substitute the refinement step of YANG into the similar chemical treatment of MIKULIC to product a useful agricultural by-product pulp dispersion. One skilled in the art would be motivated to combine the art based on the improved ability to use the resulting dispersion as a layer material in pulp molded article manufacturing as taught by BACKFOLK.
For claim 2, MIKULIC, YANG, and BACKFOLK teach the method of claim 1, as above. The Examiner understands that MIKULIC in view of YANG, and BACKFOLK teach substantially the same treatment so it would be expected that substantially the same fiber bundles would occur. This teaches the limitation of “wherein the pulped agricultural fibers are present as fiber bundles including 2 to 20 fibers”.
For claim 3, MIKULIC, YANG, and BACKFOLK teach the method of claim 1, as above. BACKFOLK teaches the article is pressed while wet [0029]. This teaches the limitation of “wherein the molded pulp manufacturing machine performs at least one of wet pressing or thermoforming of the agricultural fiber pulp to form the molded pulp product”.
For claim 4, MIKULIC, YANG, and BACKFOLK teach the method of claim 3, as above. BACKFOLK teaches the use of the pulp with disposable tableware plates [0050]. This teaches the limitation of “wherein the molded pulp product comprises at least one of an egg carton, a molded disposable “paper” plate, a food container, or a molded pulp product used for packaging consumer goods, wherein the molded pulp product is a disposable single use product”.
For claim 5, MIKULIC, YANG, and BACKFOLK teach the method of claim 1, as above, to produce a molded plate [0050]. This teaches the limitation of “A product, comprising the molded pulp product formed by the method of claim 1”.
For claim 6, MIKULIC, YANG, and BACKFOLK teach the product as recited in claim 5, as above. BACKFOLK teaches the use of the pulp with disposable tableware plates [0050]. This teaches the limitation of “wherein the product comprises at least one of an egg carton, a molded disposable “paper” plate, a food container, or a molded pulp product used for packaging consumer goods, wherein the molded pulp product is a disposable single use product”.
For claim 7, MIKULIC, YANG, and BACKFOLK teach the product as recited in claim 5, as above. BACKFOLK teaches the use of the pulp with disposable tableware plates [0050]. This teaches the limitation of “wherein the product comprises a single use food container”.
For claim 9, MIKULIC, YANG, and BACKFOLK teach the method of claim 1, as above. BACKFOLK teaches refining after chemical treatment [0039]. This teaches the limitation of “wherein reducing the size of the agricultural fibers to a desired length and mechanically refining such fibers occurs during or after chemical pulping”.
For claim 10, MIKULIC, YANG, and BACKFOLK teach the method of claim 1, as above. YANG teaches the agricultural fibers are treated with an alkali solution at less than 100°C [0061] with a concentration of 8% sodium hydroxide [0141]. This matches the limitation of “wherein chemically pulping the agricultural fibers includes chemically pulping with a sodium hydroxide”, “at a temperature of less than 100°C”, and “or other active alkali concentration of from 4 g/L to less than 40 g/L, or an active alkali (relative to the agricultural feedstock material) value of from 5% to 30%,”. YANG teaches the alkali chemical, sodium hydroxide, and fiber are reacted from 15 to 90 minutes [0062]. This range overlaps the claim range of the limitation of “for a period of time of from 30 minutes to 5 hours”.
For claim 11, MIKULIC, YANG, and BACKFOLK teach the method of claim 1, as above. BACKFOLK teaches the agricultural byproduct derived dispersion is present in the final dried product at 10 to 90 % by weight [0021]. This range is within the instant claim range of “wherein the molded pulp product includes 10% to 100% by weight of agricultural fibers”.
For claim 13, MIKULIC, YANG, and BACKFOLK teach the method of claim 1, as above. YANG teaches the pulping solution is sodium hydroxide in water [0134]. This teaches the limitation of “wherein chemically pulping the agricultural fibers in the alkaline chemical pulping process is achieved using a liquor that consists essentially of water and caustic”.
For claim 14, MIKULIC, YANG, and BACKFOLK teach the method of claim 1, as above. YANG teaches the fiber can originate from switchgrass [0113]. This teaches the limitation of “wherein the non-wood agricultural feedstock comprises at least one of corn stover, hemp, wheat straw, rice straw, soybean residue, cotton residue, switchgrass, miscanthus, DDGS, bamboo, or sugarcane bagasse.
For claim 15, MIKULIC teaches a method of preparing agricultural feedstock fibers, comminuting the fiber to a length, and alkaline pulping the fiber with an 8% solution of sodium hydroxide [0141] at a temperature of less than 100°C [abstract]. This teaches the limitation of “A method comprising: providing non-wood agricultural feedstock material that includes agricultural fibers, and reducing a size of such agricultural fibers to a desired length” and “; chemically pulping the agricultural fibers in an alkaline chemical pulping process to produce an agricultural fiber pulp”.
MIKULIC does not teach the reaction at atmospheric pressure or the refining of the fiber. YANG teaches a similar method of alkali pulping agricultural byproduct fiber [abstract]. YANG teaches the fiber are from cornstalks (corn stover) [0111]. This teaches the limitation of “wherein such agricultural fibers comprise corn stover”. YANG teaches the alkali pulping can be completed with alkali only pretreatment (without enzyme use) [0058]. YANG also teaches bleaching is optional [0027] and makes no mention of ozone treatment. YANG further teaches the alkali reaction, with 8% sodium hydroxide [0141] conditions can be completed at about 95°C [0146] and at atmospheric pressure in an open container (no pressure) [0064]. This teaches the limitation of “chemically pulping the agricultural fibers in an alkaline chemical pulping process to produce an agricultural fiber pulp, wherein chemically pulping the agricultural fibers includes chemically pulping with a sodium hydroxide concentration of from 4 g/L to less than 40 g/L, or a sodium hydroxide active alkali (relative to the agricultural feedstock material) value of from 5% to 30%, wherein chemically pulping the agricultural fibers is achieved at a temperature of from 60°C to 99°C and unpressurized conditions, wherein chemically pulping the agricultural fibers is achieved without addition of any acids or enzymes”. YANG teaches the processing treatment of the fiber bundles allow for the fiber to be used like any other natural cellulose without being made into yarn [0027]. It would be obvious to one skilled in the art to substitute the alkali treatment process of YANG into the similar alkali treatment of MIKULIC to product a useful agricultural by-product pulp. One skilled in the art would be motivated to combine the art based on the process treatment allowing for easier use of agricultural product like other cellulosic fiber.
Regarding the fiber refinement, BACKFOLK teaches a method of using agricultural fiber to make a chemi-mechanical pulp [0041]. BACKFOLK also teaches the pulp is further chemically pretreated, like YANG, and then refined to make Micro Fibrillated Cellulose (MFC) [0040]. BACKFOLK teaches the advantage of the invention is the ability to spray the pulp as a dispersion which would be useful in making a layered molded article [0014 and 0017]. This teaches the limitation of “and mechanically refining such agricultural fibers; and introducing the agricultural fiber pulp into a molded pulp product manufacturing machine to make as molded pulp product from the agricultural fiber pulp”. It would be obvious to one skilled in the art to substitute the refinement step of YANG into the similar chemical treatment of MIKULIC to product a useful agricultural by-product pulp dispersion. One skilled in the art would be motivated to combine the art based on the improved ability to use the resulting dispersion as a layer material in pulp molded article manufacturing as taught by BACKFOLK.
For claim 16, MIKULIC, YANG, and BACKFOLK teach the method of claim 15, as above. YANG teaches a two step cooking process with pretreatment and extraction where both pretreatment and extraction have similar conditions (alkali concentration, temperature, and time) [0062 and 0063]. The pretreatment temperature is between about 60 to about 100°C [0062] with a normality of about 0.05 to about 2.5N and the reaction temperature is at about 95°C with a normality of 0.3 N [0063]. This allows for the higher conditions on the second treatment. MIKULIC teaches a two reaction system, like YANG, with two vessels [col 5 line 54-64]. This teaches the limitation of “wherein chemically pulping the agricultural fibers is achieved in a 2-step cooking process, comprising: introducing the agricultural fibers into a first reactor, wherein the first reactor operates at a low temperature of less than 100°C, and where the agricultural fibers are processed in a first caustic concentration; and introducing the agricultural fibers from the first reactor into a second reactor, where the second reactor operates at a low temperature, of less than 100°C, the second reactor operating at a higher temperature than the first reactor, to produce the agricultural fiber pulp, wherein the agricultural fibers are processed in a second caustic concentration that is higher than the first caustic concentration of the first reactor”.
For claim 17, MIKULIC, YANG, and BACKFOLK teach the method of claim 16, as above. The pretreatment temperature is between about 60 to about 100°C [0062] and the reaction temperature is at about 95°C [0063]. This first temperature overlaps with the limitation of “wherein the first reactor operates at a temperature in a range of 40°C to 80°C”. This second temperature is within the limitation of “and the second reactor operates at a temperature in a range of 85°C to 99°C”.
For claim 18, MIKULIC, YANG, and BACKFOLK teach the method of claim 17, as above. YANG teaches the use of cornstalk (corn stover) [0088]. A liquor to stalk ratio of 20:1 was used (equivalent to 7.62% sodium hydroxide to cornstalk, at 8% caustic) [0146]. This value is within the range limitation of “wherein the first reactor operates at a ratio of caustic to air dried corn stover or other agricultural feedstock that is from 4% to 12%, or from 5% to 12%”.
For claim 19, MIKULIC, YANG, and BACKFOLK teach the method of claim 16, as above. YANG teaches the pulping solution is sodium hydroxide in water [0134]. This teaches the limitation of “wherein chemically pulping the agricultural fibers in the alkaline chemical pulping process is achieved using a liquor that consists of water and caustic”.
Claim(s) 8 is rejected under 35 U.S.C. 103 as being unpatentable over MIKULIC (US 9777429 B2) in view of YANG (US 2007/0199669 A1) , and BACKFOLK (20200056333 A1) as evidenced by ARIES Chemical (https://www.arieschem.com/chemicals/pulp-paper/pulp-paper-sizing-agents/).
For claim 8, MIKULIC, YANG, and BACKFOLK teach the product as recited in claim 5, as above. BACKFOLK uses Alkyl Ketene dimer (AKD) [0022]. AKD is a common sizing agent as evidenced by ARIES Chemical (https://www.arieschem.com/chemicals/pulp-paper/pulp-paper-sizing-agents/). This teaches the limitation of “wherein the molded pulp product comprises at least one of a waterproofing agent or a sizing agent”.
Claim(s) 12 is rejected under 35 U.S.C. 103 as being unpatentable over MIKULIC (US 9777429 B2) in view of YANG (US 2007/0199669 A1), and BACKFOLK (20200056333 A1) as evidenced by Frank Miller (https://franklinmiller.com/white-papers/what-is-a-hammer-mill).
For claim 12, MIKULIC, YANG, and BACKFOLK teach the method of claim 1, as above. YANG teaches the agricultural byproduct is shortened with a grinder [0041]. The examiner understands that a hammer mill is a type of grinder as evidenced by Frank Miller (https://franklinmiller.com/white-papers/what-is-a-hammer-mill). This teaches the limitation of “wherein reducing the size of such agricultural fibers to a desired length, and mechanically refining such agricultural fibers in preparation for pulping comprises hammermilling the agricultural fibers.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHEN M RUSSELL whose telephone number is (571)272-6907. The examiner can normally be reached Mon-Fri: 7:30 to 4:30 EST.
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/S.M.R./Examiner, Art Unit 1748
/Abbas Rashid/Supervisory Patent Examiner, Art Unit 1748
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