www.uspto.gov
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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO. Box 1450
`Alexandria, Virginia 2231371450
`
`15/817,879
`
`11/20/2017
`
`Masashi HAMABE
`
`20249.0180U301
`
`9871
`
`53148
`
`759°
`
`08/01/20”
`
`HAMRE, SCHUMANN, MUELLER & LARSON RC.
`45 South Seventh Street
`Suite 2700
`
`MINNEAPOLIS, MN 55402-1683
`
`USELDING' JOHN E
`
`ART UNIT
`1763
`
`PAPER NUMBER
`
`NOTIFICATION DATE
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`DELIVERY MODE
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`08/01/2019
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`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
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`following e—mail address(es):
`PTOMail@hsml.eom
`
`PTOL-90A (Rev. 04/07)
`
`

`

`0/7709 A0170” Summary
`
`Application No.
`15/817,879
`Examiner
`JOHN USELDING
`
`Applicant(s)
`HAMABE et al.
`Art Unit
`1763
`
`AIA (FITF) Status
`Yes
`
`- The MAILING DA TE of this communication appears on the cover sheet wit/7 the correspondence address -
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE g MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a). In no event, however, may a reply be timely filed after SIX (6) MONTHS from the mailing
`date of this communication.
`|f NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
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`1). Responsive to communication(s) filed on 7/19/2019.
`[:1 A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2a)D This action is FINAL.
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`2b)
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`This action is non-final.
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`3)[:] An election was made by the applicant in response to a restriction requirement set forth during the interview on
`; the restriction requirement and election have been incorporated into this action.
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`4)[:] Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Expat/7e Quay/e, 1935 CD. 11, 453 O.G. 213.
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`Disposition of Claims*
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`5)
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`Claim(s) fl is/are pending in the application.
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`5a) Of the above claim(s) fl is/are withdrawn from consideration.
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`E] Claim(s)
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`is/are allowed.
`
`Claim(s) fl is/are rejected.
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`E] Claim(s) _ is/are objected to.
`
`) ) ) )
`
`6 7
`
`8
`
`
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`are subject to restriction and/or election requirement
`[:1 Claim(s)
`9
`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
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`participating intellectual property office for the corresponding application. For more information, please see
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`http://www.uspto.gov/patents/init events/pph/index.'sp or send an inquiry to PPeredback@uspto.gov.
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`Application Papers
`10):] The specification is objected to by the Examiner.
`
`11). The drawing(s) filed on 11/20/2017 is/are: a). accepted or b)C] objected to by the Examiner.
`
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12)C] Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
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`a)I:] All
`
`b)|:] Some**
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`c)C] None of the:
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`1.|:] Certified copies of the priority documents have been received.
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`21:] Certified copies of the priority documents have been received in Application No.
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`3D Copies of the certified copies of the priority documents have been received in this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`
`** See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
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`1)
`
`Notice of References Cited (PTO-892)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mai| Date 11/20/2017, 7/3/2018_
`U.S. Patent and Trademark Office
`
`3) C] Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) CI Other-
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20190729
`
`

`

`Application/ Control Number: 15/817,879
`Art Unit: 1763
`
`Page 2
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`DETAILED ACTION
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`Notice ofPre-AIA orAIA Status
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`The present application, filed on or after March 16, 2013, is being examined
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`under the first inventor to file provisions of the AIA.
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`Election/Restrictions
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`Applicant’s election without traverse of Group I, Claims 1-4 in the reply filed on
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`7/19/2019 is acknowledged.
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`Claims 5-7 are withdrawn from further consideration pursuant to 37 CFR
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`1.142(b) as being drawn to a nonelected Group, there being no allowable generic or
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`linking claim. Election was made without traverse in the reply filed on 7/ 19/2019.
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`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 1-4 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA), second
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`paragraph, as being indefinite for failing to particularly point out and distinctly claim
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`the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant
`
`regards as the invention. The limitation “main ingredient resin” in claim 1 is indefinite.
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`The metes and bounds of “main ingredient” are unclear.
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`

`

`Application/ Control Number: 15/817,879
`Art Unit: 1763
`
`Page 3
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`Claim 3 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA), second
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`paragraph, as being indefinite for failing to particularly point out and distinctly claim
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`the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant
`
`regards as the invention. The limitation “or the like” is indefinite. The metes and
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`bounds are unclear.
`
`Claim Rejections - 35 USC § 103
`
`The following is a quotation of 35 U.S.C. 103 which forms the basis for all
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`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 set forth in Graham v. John Deere C0., 383 US. 1, 148
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`USPQ 459 (1966), that are applied for establishing a background for determining
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`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.
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`3. Resolving the level of ordinary skill in the pertinent art.
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`4. Considering objective evidence present in the application indicating
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`obviousness or nonobviousness.
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`Claim 1-4 is/ are rejected under 35 U.S.C. 103 as being unpatentable over Sain et
`
`a1. (2009/ 0065975).
`
`

`

`Application/ Control Number: 15/817,879
`Art Unit: 1763
`
`Page 4
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`Sain et al. teach a composite resin composition comprising polypropylene as a
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`main ingredient and lignocellulose fibers wherein the cellose fibers are defibrated at the
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`fiber length direction end [Examples]. Sain et al. teach a defibrillation time period of
`
`not less than 10 seconds [0052]. Sain et al. teach that the microfiber formation, the
`
`result of defibrillation, is dependent upon the time and intensity of the shear and also on
`
`the temperature [0056]. Sain et al. teach that the level of defibrillation is optimized for
`
`improved interfacial adhesion between the fibers and the matrix, and provides
`
`enhanced strength [0056-0059]. Sain et al. teach a fiber diameter of between about
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`0.005 mm to about 0.070 mm [0062] and that the defibrillation portion has a diameter
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`of less than 10 microns (or 0.01 mm) [0042]. Sain et al. teach that the defibrillated
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`microfiber diameter is significantly decreased from the original fiber [0056]. Given the
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`very broad range claimed (within 20 GPa) it is the position of the Office that examples of
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`Sain et al. are within the claimed range [Examples]. It would have been obvious to one
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`of ordinary skill in the art before the effective filing date of the claimed invention to
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`optimize the defibrillation conditions for the desired level of defibrillation and
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`interfacial adhesion between the fibers and the matrix. It would have been obvious to
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`one of ordinary skill in the art before the effective filing date of the claimed invention to
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`defibrillate only the end of the fiber, and find by routine experimentation the best
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`defibrillation percentage for the desired physical properties of the composite.
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`The fiber diameter ratio taught in Sain et al. overlaps the claimed ratio.
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`The subject matter as a whole would have been obvious to one having ordinary
`
`skill in the art prior to the effective filing date of the claimed invention, since it has been
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`held that choosing the overlapping portion, of the range taught in the prior art and the
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`range claimed by the applicant, has been held to be a primafacie case of obviousness,
`
`

`

`Application/ Control Number: 15/817,879
`Art Unit: 1763
`
`Page 5
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`see In re Malagari, 182 USPQ 549, In re Geisler 43 USPQ2d 1365 (Fed. Cir. 1997); In re
`
`Woodrufi”, 16 USPQ2d 1934 (CCPA 1976) and MPEP 2144.05.
`
`Claim 1-4 is/ are rejected under 35 U.S.C. 103 as being unpatentable over Sain et
`
`al. (2009/0065975) in view of Fish, Jr. et al. (4,552,805).
`
`Sain et al. teach a composite resin composition comprising polypropylene as a
`
`main ingredient and lignocellulose fibers wherein the cellose fibers are defibrated
`
`[Examples]. Sain et al. teach a defibrillation time period of not less than 10 seconds
`
`[0052]. Sain et al. teach that the microfiber formation, the result of defibrillation, is
`
`dependent upon the time and intensity of the shear and also on the temperature [0056].
`
`Sain et al. teach that the level of defibrillation is optimized for improved interfacial
`
`adhesion between the fibers and the matrix, and provides enhanced strength [0056-
`
`0059]. Sain et al. teach a fiber diameter of between about 0.005 mm to about 0.070
`
`mm [0062] and that the defibrillation portion has a diameter of less than 10 microns (or
`
`0.01 mm) [0042]. Sain et al. teach that the defibrillated microfiber diameter is
`
`significantly decreased from the original fiber [0056]. Given the very broad range
`
`claimed (within 20 GPa) it is the position of the Office that examples of Sain et al. are
`
`within the claimed range [Examples].
`
`The fiber diameter ratio taught in Sain et al. overlaps the claimed ratio.
`
`The subject matter as a whole would have been obvious to one having ordinary
`
`skill in the art prior to the effective filing date of the claimed invention, since it has been
`
`held that choosing the overlapping portion, of the range taught in the prior art and the
`
`range claimed by the applicant, has been held to be a primafacie case of obviousness,
`
`

`

`Application/ Control Number: 15/817,879
`Art Unit: 1763
`
`Page 6
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`see In re Malagari, 182 USPQ 549, In re Geisler 43 USPQ2d 1365 (Fed. Cir. 1997); In re
`
`Woodrufi”, 16 USPQ2d 1934 (CCPA 1976) and MPEP 2144.05.
`
`Sain et al. fail to teach the claimed defibrillation percentage.
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`However, Fish, Jr. et al. teach that in a fiber filler to be utilized in a polypropylene
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`resin matrix (column 2, lines 50-55) that the fibers should fibrillated only at the ends of
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`the fiber, and that the fibrillation overcomes problems such as tensile strength and
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`stiffness (column 1, lines 33-39, column 2, lines 39-42).
`
`It would have been obvious to one of ordinary skill in the art before the effective
`
`filing date of the claimed invention to defibrillate the ends as taught by Fish, Jr. et al. of
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`the fibers of Sain et al. and to optimize the amount of defibrillation by routine
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`experimentation, to overcome problems such as tensile strength and stiffness.
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`Double Patenting
`
`The nonstatutory double patenting rejection is based on a judicially created
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`doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the
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`unjustified or improper timewise extension of the “right to exclude” granted by a patent
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`and to prevent possible harassment by multiple assignees. A nonstatutory double
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`patenting rejection is appropriate where the conflicting claims are not identical, but at
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`least one examined application claim is not patentably distinct from the reference
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`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
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`USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed.
`
`

`

`Application/ Control Number: 15/817,879
`Art Unit: 1763
`
`Page 7
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`Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum,
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`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).
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`A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d)
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`may be used to overcome an actual or provisional rejection based on nonstatutory
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`double patenting provided the reference application or patent either is shown to be
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`commonly owned with the examined application, or claims an invention made as a
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`result of activities undertaken within the scope of a joint research agreement. See MPEP
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`§ 717.02 for applications subject to examination under the first inventor to file
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`provisions of the AIA as explained in MPEP § 2159. See MPEP §§ 706.o2(l)(1) -
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`706.o2(l)(3) for applications not subject to examination under the first inventor to file
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`provisions of the AIA. A terminal disclaimer must be signed in compliance with 37 CFR
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`1.321(b).
`
`The USPTO Internet website contains terminal disclaimer forms which may be
`
`used. Please visit www.uspto.gov/patent/patents-forms. The 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
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`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
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`www.uspto. gov/patents/process/file/efs/guidance/ eTD -info-I.j sp.
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`Claims 1-4 are provisionally rejected on the ground of nonstatutory double
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`patenting as being unpatentable over claims 1-5 of copending Application No.
`
`

`

`Application/ Control Number: 15/817,879
`Art Unit: 1763
`
`Page 8
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`16/254814. Although the claims at issue are not identical, they are not patentably
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`distinct from each other.
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`This is a provisional nonstatutory double patenting rejection because the
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`patentably indistinct claims have not in fact been patented.
`
`Claims 1-4 are provisionally rejected on the ground of nonstatutory double
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`patenting as being unpatentable over claims 1-6 of copending Application No.
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`15/ 874411. Although the claims at issue are not identical, they are not patentably
`
`distinct from each other.
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`This is a provisional nonstatutory double patenting rejection because the
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`patentably indistinct claims have not in fact been patented.
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`Contact Information
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`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to JOHN USELDING whose telephone number is
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`(571)270-5463. The examiner can normally be reached on M-F 8am to 6:30pm.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
`
`supervisor, Ling-Siu Choi can be reached on 571-272-1098. The fax phone number for
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`the organization where this application or proceeding is assigned is 571-273-8300.
`
`

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`Application/ Control Number: 15/817,879
`Art Unit: 1763
`
`Page 9
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`Information regarding the status of an application may be obtained from the
`
`Patent Application Information Retrieval (PAIR) system. Status information for
`
`published applications may be obtained from either Private PAIR or Public PAIR.
`
`Status information for unpublished applications is available through Private PAIR only.
`
`For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
`
`you have questions on access to the Private PAIR system, contact the Electronic
`
`Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a
`
`USPTO Customer Service Representative or access to the automated information
`
`system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
`
`/JOHN E USELDING/
`
`Primary Examiner, Art Unit 1763
`
`