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/Restrictions
Applicant's election with traverse of Group I, claims 1-17 in the reply filed on 6/9/2026 is acknowledged. The traversal is on the ground(s) that they are directed to the same disclosed objective (and thus would be considered to be indistinct if the argument is considered persuasive). This is not found persuasive because as pointed out by Applicant, these claim sets represent “alternative” approaches to forming pellets and so they are not the same disclosed objective. One set of claims uses an extruder, and one set does not use an extruder. This is a material difference in scope, even if the other claim set could also include an extruder – it does not, as currently recited. Thus, an examination and/or search burden exists, since the claims would most likely be subject to substantially different rejections or substantially different applied prior art.
The requirement is still deemed proper and is therefore made FINAL.
Claims 18-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 6/9/2026.
Information Disclosure Statement
The information disclosure statement filed 1/18/2025 fails to comply with the provisions of 37 CFR 1.97, 1.98 and MPEP § 609 because no signature has been provided, and no certification statement has been provided as required under 37 CFR 1.97 and 1.98. It has been placed in the application file, but the information referred to therein has not been considered as to the merits. Applicant is advised that the date of any re-submission of any item of information contained in this information disclosure statement or the submission of any missing element(s) will be the date of submission for purposes of determining compliance with the requirements based on the time of filing the statement, including all certification requirements for statements under 37 CFR 1.97(e). See MPEP § 609.05(a).
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.
Claim 17 is 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 17, Claim 17 recites the limitation "the first component" in line 2. There is insufficient antecedent basis for this limitation in the claim.
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.
Claim(s) 1-17 are rejected under 35 U.S.C. 103 as being unpatentable over Warnes et al. (US 2012/0172494), hereinafter Warnes, in view of Hamilton et al. (US 2012/0208933), hereinafter Hamilton.
Regarding claims 1, 9, and 11, Warnes discloses a method of producing a panel comprising:
(a) forming a mixture comprising recycled material (par. 0052 – wood) in a first state (par. 0002) and water (par. 0048-0049);
(b) feeding the mixture to an extruder at an entry point (par. 0076 – “upstream”), whereby the mixture is processed into a uniform web that exits the extruder (par. 0076 – four strand die, where each of the strands would be a uniform web);
(c) forming pellets from the uniform web (“being pelletized” – par. 0076 which requires cutting mechanically), the pellets being in a second-state; and
(d) forming a panel (“acoustical” is not considered limiting) from the pellets (par. 0056 – “produce a solid panel, sheet, or profile, by compacting . . . ) and a fibrous material and binder (par. 0044).
Warnes does not explicitly disclose that the material specifically includes a recycled material.
However, Hamilton discloses, as a part of a similar process of producing composite pellets using a pellet mill/extruder (Hamilton, Figs. 7-8), and includes a recycled material (Hamilton, par. 0018). One of ordinary skill in the art would have recognized that such a recycled material as described in Hamilton would have been useful for the mixture of Warnes above, and would have had a reasonable expectation of success in using such a material. Accordingly, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to have specified that the material in Warnes above includes a recycled material, as is claimed.
Regarding claims 2-3 and 7, Warnes/Hamilton discloses the subject matter of claim 1, but does not explicitly disclose the amount of water/recycled material present in the mixture. However, it has been held that changes in temperature/concentration are not inventive, and indicia of obviousness of the claimed invention. Accordingly, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to have specified that the amount of water/recycled material in the mixture is as required in the claims. Additionally, one of ordinary skill in the art would have found it obvious to have adjusted the temperature as needed to perform the proper mixing with the polymer material and the filler material.
Regarding claims 4-6, Warnes/Hamilton discloses the subject matter of claim 1, and further discloses that the material can be a cellulosic dust (Hamilton, par. 0028-0029) and the pellets in the second state would be larger than the cellulosic dust (Warnes, par. 0051) and that the second (pellet) length is 2 mm which is about 1500 microns (Warnes, par. 0059).
Regarding claims 8 and 10, Warnes/Hamilton discloses the subject matter of claim 1, and further discloses that the pellets are present and water is present at the claimed percentages as a result of performing the claimed manipulative steps.
Regarding claims 12-15, Warnes/Hamilton discloses the subject matter of claim 11, and further discloses that the fiber can be organic (Warnes, par. 0052) or inorganic (par. 0053) and can include proteins (par. 0052) and are of a length of about 1 mm (par. 0053).
Regarding claims 16-17, Warnes/Hamilton discloses the subject matter of claim 11, and further discloses that the binder is present in a concentration of 5% (Warnes, par. 0075) and includes at least a polymaleic anhydride (par. 0071).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW D GRAHAM whose telephone number is (469)295-9232. The examiner can normally be reached Monday - Friday 7:30AM-4:00PM (CST).
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, Christina Johnson can be reached at (571) 272-1176. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREW D GRAHAM/Primary Examiner, Art Unit 1742
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