DETAILED ACTION
The communication dated 6/12/2026 has been entered and fully considered. Claims 15-20 are withdrawn. Claims 21-23 are added. Claims 1-14 and 21-23 are pending.
In view of the Appeal Brief filed on 6/12/2026, PROSECUTION IS HEREBY REOPENED. New grounds of rejection are set forth below.
To avoid abandonment of the application, appellant must exercise one of the following two options:
(1) file a reply under 37 CFR 1.111 (if this Office action is non-final) or a reply under 37 CFR 1.113 (if this Office action is final); or,
(2) initiate a new appeal by filing a notice of appeal under 37 CFR 41.31 followed by an appeal brief under 37 CFR 41.37. The previously paid notice of appeal fee and appeal brief fee can be applied to the new appeal. If, however, the appeal fees set forth in 37 CFR 41.20 have been increased since they were previously paid, then appellant must pay the difference between the increased fees and the amount previously paid.
A Supervisory Patent Examiner (SPE) has approved of reopening prosecution by signing below:
/Abbas Rashid/Supervisory Patent Examiner, Art Unit 1748
Response to Arguments
Applicant argues that prior art, ALDEN and SOIDINSALO, do not teach the new claim 23 limitation of “wherein the composite material defines a density of less than 57,000 grams per cubic meter (GCM) after curing”.
Applicant's arguments filed 10/14/2025 have been fully considered but they are not persuasive.
The Examiner notes that the limitation of “a density of less than 57,000 grams per cubic meter (GCM)” is not supported by the specification and raises new matter. ALDEN teaches the composite is preferably a low density foam [0013] at below 450 kg/m3 (equivalent to 450,000 g/m3). This range encompasses the instant claim range of “wherein the composite material defines a density of less than 57,000 grams per cubic meter (GCM) after curing”.
SOIDINSALO also teaches a porous foam with microfibrillated cellulose (cellulose fiber) embedded similar to ALDEN [abstract]. SOIDINSALO also teaches the foam composite is intended for use in packaging and filler for transport devices material [0049], similar to ALDEN [0059]. SOIDINSALO first teaches the composite has a density of 10 to 500 kg/m3 similar to ALDEN [0036]. SOIDINSALO further teaches a preferred density between 5 to 50 kg/m3 (equivalent to 50,000 g/m3) [0036]. This density is further within instant claim range of “wherein the composite material defines a density of less than 57,000 grams per cubic meter (GCM) after curing”. SOIDINSALO teaches the addition of active compounds like fungicide aid in sustained delivery capability of the created container [0052]. It would be obvious to one skilled in the arts to modify the broad density range of the ALDEN composite with the smaller density range taught by SOIDINSALO. One skilled in the arts would be motivated to combine the art based on the specific specificity of the density range of the aqueous foam taught by SOIDINSALO.
Applicant argues that the prior art, ALDEN and SOIDINSALO, are not a proper combination of art.
Applicant's arguments filed 10/14/2025 have been fully considered but they are not persuasive.
In response to applicant's argument that ALDEN broader range discourages one skilled in the art from using a narrower range that lies within the ALDEN range, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
ALDEN teaches a specific range that encompasses the values of 450,000 gcm or less. This range includes values below 450,000 gcm including the values of SOIDINSALO. One skilled in the art would recognize the SOIDINSALO range as within the range of ALDEN and be motivated to use the narrower range of SOIDINSALO as the guide given the preference taught by SOIDINSALO.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 23 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The claimed limitation of “wherein the composite material defines a density of less than 57,000 grams per cubic meter (GCM) after curing” is not supported by the listed Specification paragraph [0053]. The Specification recites “Through oven cooking, in some aspects, the composite material 100 can be formed into sheets of insulation with density as low as 57,000 grams per cubic meter”. For the sake of compact prosecution, the Examiner understands the claim limitation is recited as currently written.
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 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 1-8, 10, 11, 22 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over ALDEN (US 20200318292 A1) in view of SOIDINSALO (US 20200032454 A1) and ENGLERT (US 20080156581 A1).
ALDEN teaches a method to produce a foam formed fiber laminate [abstract]. The method starts with mixing water and a surfactant [0017]. This meets the limitation of “A method comprising: mixing a plurality of ingredients to form a pre-foam mixture”. The pre-form mixture is then mixed with cellulose and then foamed. ALDEN also teaches an alternate embodiment where the cellulose fiber is treated and then added to an aqueous foam [0035]. This alternate embodiment teaches the limitation “foaming the pre-foam mixture to produce a water-based foam; mixing the water-based foam with cellulose fiber to form a composite material”. The composite material is then cured (dewatered) [0019]. This teaches the curing limitation.
Regarding the mold preventing material limitation, ALDEN does not teach the use of mold preventing material. SOIDINSALO teaches a process to make a porous foam with materials including microfibrillated cellulose like ALDEN [abstract]. SOIDINSALO teaches foam is formed by mixing materials with aqueous suspension [0011]. SOIDINSALO further teaches the materials can further include fungicide (mold inhibitor) [0052]. This teaches the limitation of “the plurality of ingredients comprising a mold preventing material”. SOIDINSALO teaches the addition of active compounds like fungicide aid in sustained delivery capability of the created container [0052]. It would be obvious to one skilled in the arts at the time of invention to modify the density range of the ALDEN composite with the density range taught by SOIDINSALO to more effectively produce a packaging foam with a tighter density range. One skilled in the arts would be motivated to combine the art based on the advantage of a guaranteed stable cellulosic aqueous foam taught by SOIDINSALO.
Regarding the foam pore limitation, ALDEN does not teach the material dimensions. ENGLERT teaches a similar aqueous foam [0011] mixed with cellulosic fiber [0014]. ENGLERT also teaches the preferred dimensions to produce a stable foam [0061]. The foam of the invention do not include voids (pores) that have an average maximum diameter greater than about 2mm [0017]. This meets the limitation of “a maximum pore diameter of about 3mm”. It would be obvious to one skilled in the arts at the time of invention to combine the maximum diameter taught by ENGLERT for the foam of ALDEN to produce a predictably stable foam. One skilled in the arts would be motivated to combine the art based on the advantage of a guaranteed stable cellulosic aqueous foam taught by ENGLERT.
For claim 2, ALDEN, SOIDINSALO, and ELGERT teach the method of claim 1, as above. ALDEN teaches the material is dried after compression [0014]. This teaches drying the composite after which matches the limitation “further comprising drying the composite material after curing the composite material”.
For claim 3, ALDEN, SOIDINSALO, and ELGERT teach the method of claim 1, as above. ALDEN teaches the foam is laminated to other packaging material [0059] that includes film [0102]. This teaches the limitation of “further comprising laminating the composite material with a film”.
For claim 4, ALDEN, SOIDINSALO, and ELGERT teach the method of claim 3, as above. ALDEN teaches the material can be shaped during curing [0019] in a mould [0013] and before lamination. This teaches the limitation “further comprising shaping the composite material before laminating the composite material”.
For claim 5, ALDEN, SOIDINSALO, and ELGERT teach the method of claim 3, as above. ALDEN alternatively teaches adding the cellulose reinforced foam directly to a substrate then shaping [0013]. This teaches the limitation of “further comprising shaping the composite material after laminating the composite material”.
For claim 6, ALDEN, SOIDINSALO, and ELGERT teach the method of claim 1, as above. ALDEN teaches the composite material is shaped in a mould [0019]. This teaches the limitation of “further comprising shaping the composite material”.
For claim 7, ALDEN, SOIDINSALO, and ELGERT teach the method of claim 6, as above. ALDEN teaches the composite material is shaped in a mould [0019]. This teaches the limitation of “wherein shaping the composite material comprises depositing the composite material in a mold”.
For claim 8, ALDEN, SOIDINSALO, and ELGERT teach the method of claim 6, as above. ALDEN teaches the material can be applied to the mould (shaped) then dewatered [0013]. This teaches the limitation “wherein shaping the composite material occurs prior to curing the composite material”.
For claim 10, ALDEN, SOIDINSALO, and ELGERT teach the method of claim 6, as above. ALDEN teaches the material can be shaped and dried during curing [0019] in a mould [0013] and before lamination. This teaches the limitation “wherein shaping the composite material and curing the composite material occur simultaneously”.
For claim 11, ALDEN, SOIDINSALO, and ELGERT teach the method of claim 6, as above. ELGERT teaches the foam is made into panels [0013] that are later cut into 4 by 9 sheets [0028]. This teaches the limitation “wherein shaping the composite material comprises cutting the composite material into sheets”.
For claim 22, ALDEN, SOIDINSALO, and ELGERT teach the method of claim 1, as above. ELGERT teaches the use of a binder in the foam at from about 0.5% to about 3% of the total solids content for the package [0056]. ELGERT further teaches the cellulosic fiber is present between about 1 to about 12% [0050]. The ratio taught by ELGERT is between 0.5:12 and 3:1. This range encompasses the range of the instant claim of “wherein the plurality of ingredients comprises a glue and the composite material defines a .75:1 ratio by weight of glue to cellulose fiber”. See MPEP 2144.05(I).
"[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). See also In re Harris, 409 F.3d 1339, 74 USPQ2d 1951 (Fed. Cir. 2005) (claimed alloy held obvious over prior art alloy that taught ranges of weight percentages overlapping, and in most instances completely encompassing, claimed ranges; furthermore, narrower ranges taught by reference overlapped all but one range in claimed invention).
For claim 23, ALDEN, SOIDINSALO, and ELGERT teach the method of claim 1, as above. ALDEN teaches the composite is preferably a low density foam [0013] at below 450 kg/m3 (equivalent to 450,000 g/m3). This range encompasses the instant claim range of “wherein the composite material defines a density of less than 57,000 grams per cubic meter (GCM) after curing”.
In the alternative, SOIDINSALO also teaches a porous foam with microfibrillated cellulose (cellulose fiber) embedded similar to ALDEN [abstract]. SOIDINSALO also teaches the foam composite is intended for use in packaging and filler for transport devices material [0049], similar to ALDEN [0059]. SOIDINSALO first teaches the composite has a density of 10 to 500 kg/m3 similar to ALDEN [0036]. SOIDINSALO further teaches a preferred density between 5 to 50 kg/m3 (equivalent to 50,000 g/m3) [0036]. This density is further within instant claim range of “wherein the composite material defines a density of less than 57,000 grams per cubic meter (GCM) after curing”. SOIDINSALO teaches the addition of active compounds like fungicide aid in sustained delivery capability of the created container [0052]. It would be obvious to one skilled in the arts to modify the broad density range of the ALDEN composite with the smaller density range taught by SOIDINSALO. One skilled in the arts would be motivated to combine the art based on the specific specificity of the density range of the aqueous foam taught by SOIDINSALO.
One skilled in the art would recognize the SOIDINSALO range as within the range of ALDEN and be motivated to use the narrower range of SOIDINSALO as the guide given the preference taught by SOIDINSALO.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over ALDEN (US 20200318292 A1), SOIDINSALO (US 20200032454 A1) and ENGLERT (US 20080156581 A1) in view of SHERMAN (US 4613627 A).
For claim 9, ALDEN, SOIDINSALO, and ELGERT teach the method of claim 6, as above. ALDEN is silent to the curing before shaping of the instant claim. SHERMAN teaches a similar composite manufactured from cellulose [column 2 line 22] and foam [column 2 line 7]. This composite board is formed [column 6 line 40] then die cut by a cutoff knife [column 6 line 3]. This teaches the process of the instant claim of “wherein curing the composite material occurs prior to shaping the composite material”. It would be obvious to one skilled in the arts at the time of invention to combine the cutting method taught by SHERMAN for the foam of ALDEN to produce a predictably shaped foam by using the mold as a die cut press as taught by SHERMAN. One skilled in the arts would be motivated to combine the art based on the advantage of a guaranteed stable cellulosic aqueous foam taught by SHERMAN.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over ALDEN (US 20200318292 A1), SOIDINSALO (US 20200032454 A1) and ENGLERT (US 20080156581 A1) in view of SHERMAN (US 4613627 A) as evidenced by ACME-HARDESTY (https://www.acme-hardesty.com/product/sodium-coco-sulfate-scs-95/).
For claim 12, ALDEN, SOIDINSALO, and ELGERT teach the method of claim 1, as above. ALDEN is silent to the use of polyvinyl acetate, sodium coco sulfate, and hydroxypropyl methyl cellulose together. SHERMAN teaches a similar composite manufactured from cellulose [column 2 line 22] and foam [column 2 line 7]. SHERMAN teaches the use of polyvinyl acetate (as binder) [column 2 line 53], sodium lauryl sulfate (sodium coco sulfate equivalent as anionic surfactant) [column 3 line 32], and hydroxypropyl methyl cellulose (as a thickener) [column4 line 60]. Sodium lauryl sulfate is a known sodium coco sulfate equivalent as evidenced by ACME-HARDESTY. This teaches the limitation of “wherein the plurality of ingredients comprises polyvinyl acetate, sodium coco sulfate, and hydroxypropyl methyl cellulose”. It would be obvious to one skilled in the arts at the time of invention to combine the additives taught by SHERMAN into the foam of ALDEN to produce a predictably stable foam. One skilled in the arts would be motivated to combine the art based on the advantage of a guaranteed stable cellulosic aqueous foam taught by SHERMAN.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over ALDEN (US 20200318292 A1), SOIDINSALO (US 20200032454 A1) and ENGLERT (US 20080156581 A1) in view of SLATTEGARD (WO 2020011587 A1) and MATSUNAGA (US 3976605).
For claim 13, ALDEN, SOIDINSALO, and ELGERT teach the method of claim 1, as above. ALDEN teaches starch is added as a strength agent [0028]. This teaches the limitation, “wherein the plurality of ingredients comprises starch”. ALDEN is silent to the use of liquid egg whites, polyvinyl acetate, baking soda, and citric acid in combination. SLATEGARD teaches a porous cellulose foam similar to the embodiment taught by ALDEN [p.3 line 9]. SLATEGARD discloses that egg whites can be used as a foaming agent [p.3 line 22]. At the time of the invention, it would be obvious to the person of ordinary skill in the art to substitute the egg whites as a foaming agent of SLATEGARD for the foaming agent of ALDEN. The person of ordinary skill in the art would expect success as both use foaming agent. This meets the liquid egg white limitation of the instant claim, “wherein the plurality of ingredients comprises starch, liquid egg whites”.
Regarding the citric acid and sodium bicarbonate, MATSUNAGA teaches a foam composite similar to ALDEN. MATSUNAGA discloses that it is possible to use a “solid foaming agent capable of yielding carbon dioxide and water which includes organic acids such as citric…and inorganic salts such as sodium bicarbonate.” [column 5 line 3]. MATSUNAGA also teaches the solid foaming agent is preferred to make foam uniform and fine. It would be obvious to one skilled in the arts to use sodium bicarbonate and citric acid to produce a large number of uniform bubbles or pores in the final product. This would allow the user to tune the density and uniformity of the final product. It would be obvious to combine the substitutions from both SLATEGARD and MATSUNAGA into the formulation taught by ALDEN to produce a superior product. This teaches the limitation of “polyvinyl acetate, baking soda, and citric acid”.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over ALDEN (US 20200318292 A1), SOIDINSALO (US 20200032454 A1) and ENGLERT (US 20080156581 A1) in view of HELBER (US 20040119202 A1).
For claim 14, ALDEN, SOIDINSALO, and ELGERT teach the method of claim 1, as above. ALDEN does not teach the starting density of the solution used. HELBER teaches the use of a foamed sheet [0014] that acts a support structure [abstract]. HELBER teaches the desired structure of a well-formed foam sheet with pores. HELBER teaches that the reduction of density from the original material to the foamed material is the density reduction. HELBER also teaches the ideal range of density reduction is between 20% and 95% [0074]. HELBER teaches high reduction is not easily replicated but a low reduction is not economically sound [0074]. This range is encompassing the range of the instant claim (13 and 14 times equivalent to 92.2% and 92.8% reductions, respectively). It would be obvious to one skilled in the arts at the time of invention to apply the technique taught by HELBER into the foam of ALDEN to produce a predictably stable foam. One skilled in the arts would be motivated to combine the art based on the advantage of a guaranteed stable foam taught by HELBER. This teaches the limitation of “wherein a density of the pre-foam mixture is 13-14 times greater than the density of the water-based foam prior to curing”. See MPEP 2144.05(I).
"[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). See also In re Harris, 409 F.3d 1339, 74 USPQ2d 1951 (Fed. Cir. 2005) (claimed alloy held obvious over prior art alloy that taught ranges of weight percentages overlapping, and in most instances completely encompassing, claimed ranges; furthermore, narrower ranges taught by reference overlapped all but one range in claimed invention).
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over ALDEN (US 20200318292 A1), SOIDINSALO (US 20200032454 A1) and ENGLERT (US 20080156581 A1) in view of SCHABEL (US 20060037815 A1).
For claim 21, ALDEN, SOIDINSALO, and ELGERT teach the method of claim 1, as above. ALDEN does not teach the use of fungicide in papermaking. SOIDINSALO teaches the addition of active compounds like fungicide aid in sustained delivery capability of the created container [0052]. SOIDINSALO further teaches that the material can be used as insulation for construction [0049]. SOIDINSALO is silent to a specific fungicide compound. SCHABEL teaches a similar method of creating a foam composite insulation with cellulose [0016] . SCHABEL further teaches the foam composite can include boric acid as a mildewcide (fungicide) [0029]. This teaches the limitation of “wherein the mold preventing material comprises boric acid”. SCHABEL teaches the advantage of the composite is that it can be used in both new and retrofit applications [0015]. It would be obvious to one skilled in the arts at the time of invention to substitute the boric acid taught by SCHABEL into the foam of ALDEN to produce a mold resistant foam. One skilled in the arts would be motivated to combine the art based on the advantage of a versatile foam used in new and old applications taught by SHERMAN.
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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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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/S.M.R./Examiner, Art Unit 1748
/Abbas Rashid/Supervisory Patent Examiner, Art Unit 1748
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