www.uspto.gov
`
`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°
`
`11/20/2019
`
`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
`
`DELIVERY MODE
`
`11/20/2019
`
`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
`
`following e—mail address(es):
`PTOMai1@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
`
`1). Responsive to communication(s) filed on 10/31/2019.
`[:1 A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`
`2a). This action is FINAL.
`
`2b) C] This action is non-final.
`
`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.
`
`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.
`
`Disposition of Claims*
`5)
`Claim(s)
`
`1 and 3—8 is/are pending in the application.
`
`5a) Of the above claim(s) fl is/are withdrawn from consideration.
`
`E] Claim(s)
`
`is/are allowed.
`
`Claim(s) 1,3—4 and 8 is/are rejected.
`
`E] Claim(s) _ is/are objected to.
`
`) ) ) )
`
`6 7
`
`8
`
`
`
`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
`
`participating intellectual property office for the corresponding application. For more information, please see
`
`http://www.uspto.gov/patents/init events/pph/index.'sp or send an inquiry to PPeredback@uspto.gov.
`
`Application Papers
`10):] The specification is objected to by the Examiner.
`
`11):] The drawing(s) filed on
`
`is/are: a)C] accepted or b)Ej 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:
`
`a)C] All
`
`b)C] Some**
`
`c)C] None of the:
`
`1C] Certified copies of the priority documents have been received.
`
`2C] Certified copies of the priority documents have been received in Application No.
`
`3.[:] 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)
`
`1) C] Notice of References Cited (PTO-892)
`
`2) D Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date_
`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 20191113
`
`

`

`Application/ Control Number: 15/817,879
`Art Unit: 1763
`
`Page 2
`
`DETAI LED ACTI ON
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`Notice ofPre-AIA orAIA Status
`
`The present application, filed on or after March 16, 2013, is being examined
`
`under the first inventor to file provisions of the AIA.
`
`Claim Rejections - 35 USC § 103
`
`The text of those sections of Title 35, U.S. Code not included in this action can be
`
`found in a prior Office action.
`
`Claim 1, 3, 4 and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over
`
`Sain et al. (2009/ 0065975).
`
`Sain et al. teach a composite resin composition comprising polypropylene as a
`
`main ingredient and lignocellulose fibers wherein the cellose fibers are defibrated at the
`
`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
`
`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]. It would have been obvious to one
`
`

`

`Application/ Control Number: 15/817,879
`Art Unit: 1763
`
`Page 3
`
`of ordinary skill in the art before the effective filing date of the claimed invention to
`
`optimize the defibrillation conditions for the desired level of defibrillation and
`
`interfacial adhesion between the fibers and the matrix. It would have been obvious to
`
`one of ordinary skill in the art before the effective filing date of the claimed invention to
`
`defibrillate only the end of the fiber, and find by routine experimentation the best
`
`defibrillation percentage for the desired physical properties of the composite.
`
`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,
`
`see In re Malagari, 182 USPQ 549, In re Geisler 43 USPQ 2d 1365 (Fed. Cir. 1997); In re
`
`Woodrufi”, 16 USPQ 2d 1934 (CCPA 1976) and MPEP 2144.05.
`
`With regard to the void percentage claimed, Sain et al. teach two embodiments,
`
`both of which meet the claimed range of claim 1. Sain et al. teach that surface active
`
`agents may, or may not, be used in their composition and method [0034, 0051].
`
`In the
`
`embodiment wherein the surface active agent is utilized the void percentage will be 0%
`
`according to the Applicant (Applicant Remarks, filed 10/31/2019, pages 1-2). The value
`
`of 0% is within the claimed range of 10% or less.
`
`In the embodiment wherein the surface active agent is not utilized, the
`
`composition and method of Sain et al. is the same as claimed by the Applicant and
`
`utilized in the Applicant’s specification. Therefore, the claimed void percentage will be
`
`present in the composition of Sain et al., and the limitations of claim 8 are satisfied. The
`
`courts have stated that a chemical composition and its properties are inseparable.
`
`

`

`Application/ Control Number: 15/817,879
`Art Unit: 1763
`
`Page 4
`
`Therefore, if the prior art teaches the identical chemical structure, the properties
`
`applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 15
`
`USPQ 2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430,
`
`(CCPA 1977). "Where the claimed and prior art products are identical or substantially
`
`identical in structure or composition, or are produced by identical or substantially
`
`identical processes, a prima facie case of either anticipation or obviousness has been
`
`established." Further, if it is the applicant's position that this would not be the case,
`
`evidence would need to be provided to support the applicant's position.
`
`Claim 1, 3, 4 and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over
`
`Sain et al. (2009/ 0065975) in view of Fish, Jr. et a1. (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].
`
`

`

`Application/ Control Number: 15/817,879
`Art Unit: 1763
`
`Page 5
`
`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,
`
`see In re Malagari, 182 USPQ 549, In re Geisler 43 USPQ 2d 1365 (Fed. Cir. 1997); In re
`
`Woodrufi”, 16 USPQ 2d 1934 (CCPA 1976) and MPEP 2144.05.
`
`Sain et al. fail to teach the claimed defibrillation percentage.
`
`However, Fish, Jr. et al. teach that in a fiber filler to be utilized in a polypropylene
`
`resin matrix (column 2, lines 50-55) that the fibers should fibrillated only at the ends of
`
`the fiber, and that the fibrillation overcomes problems such as tensile strength and
`
`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
`
`the fibers of Sain et al. and to optimize the amount of defibrillation by routine
`
`experimentation, to overcome problems such as tensile strength and stiffness.
`
`With regard to the void percentage claimed, Sain et al. teach two embodiments,
`
`both of which meet the claimed range of claim 1. Sain et al. teach that surface active
`
`agents may, or may not, be used in their composition and method [0034, 0051].
`
`In the
`
`embodiment wherein the surface active agent is utilized the void percentage will be 0%
`
`according to the Applicant (Applicant Remarks, filed 10/31/2019, pages 1-2). The value
`
`of 0% is within the claimed range of 10% or less.
`
`In the embodiment wherein the surface active agent is not utilized, the
`
`composition and method of Sain et al. is the same as claimed by the Applicant and
`
`

`

`Application/ Control Number: 15/817,879
`Art Unit: 1763
`
`Page 6
`
`utilized in the Applicant’s specification. Therefore, the claimed void percentage will be
`
`present in the composition of Sain et al., and the limitations of claim 8 are satisifed. The
`
`courts have stated that a chemical composition and its properties are inseparable.
`
`Therefore, if the prior art teaches the identical chemical structure, the properties
`
`applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 15
`
`USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430,
`
`(CCPA 1977). "Where the claimed and prior art products are identical or substantially
`
`identical in structure or composition, or are produced by identical or substantially
`
`identical processes, a prima facie case of either anticipation or obviousness hasbeen
`
`established." Further, if it is the applicant's position that this would not be the case,
`
`evidence would need to be provided to support the applicant's position.
`
`Terminal Disclaimer
`
`The terminal disclaimer filed on 10/31/2019 disclaiming the terminal portion of
`
`any patent granted on this application which would extend beyond the expiration date
`
`of U.S. Patent Application No. 16 /254,814 and 15/ 874,411 has been reviewed
`
`and is accepted. The terminal disclaimer has been recorded.
`
`Response to Arguments
`
`Applicant's arguments filed 10/ 31 / 2019 have been fully considered but they are
`
`not persuasive.
`
`The Applicant has alleged that Sain et al. does not teach the claimed void
`
`structure. This is not persuasive because Sain et al. teach two embodiments, both of
`
`

`

`Application/ Control Number: 15/817,879
`Art Unit: 1763
`
`Page 7
`
`which meet the claimed range of claim 1. Sain et al. teach that surface active agents
`
`may, or may not, be used in their composition and method [0034, 0051]. In the
`
`embodiment wherein the surface active agent is utilized the void percentage will be 0%
`
`according to the Applicant (Applicant Remarks, filed 10/31/2019, pages 1-2). The value
`
`of 0% is within the claimed range of 10% or less.
`
`In the embodiment wherein the surface active agent is not utilized, the
`
`composition and method of Sain et al. is the same as claimed by the Applicant and
`
`utilized in the Applicant’s specification. Therefore, the claimed void percentage will be
`
`present in the composition of Sain et al., and the limitations of claim 8 are satisifed. The
`
`courts have stated that a chemical composition and its properties are inseparable.
`
`Therefore, if the prior art teaches the identical chemical structure, the properties
`
`applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 15
`
`USPQ 2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430,
`
`(CCPA 1977). "Where the claimed and prior art products are identical or substantially
`
`identical in structure or composition, or are produced by identical or substantially
`
`identical processes, a prima facie case of either anticipation or obviousness has been
`
`established." Further, if it is the applicant's position that this would not be the case,
`
`evidence would need to be provided to support the applicant's position.
`
`Conclusion
`
`Applicant's amendment necessitated the new ground(s) of rejection presented in
`
`this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP
`
`

`

`Application/ Control Number: 15/817,879
`Art Unit: 1763
`
`Page 8
`
`§ 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37
`
`CFR 1.136(a).
`
`A shortened statutory period for reply to this final action is set to expire THREE
`
`MONTHS from the mailing date of this action. In the event a first reply is filed within
`
`TWO MONTHS of the mailing date of this final action and the advisory action is not
`
`mailed until after the end of the THREE-MONTH shortened statutory period, then the
`
`shortened statutory period will expire on the date the advisory action is mailed, and any
`
`extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the
`
`advisory action. In no event, however, will the statutory period for reply expire later
`
`than SIX MONTHS from the date of this final action.
`
`Contact Information
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to JOHN USELDING whose telephone number is
`
`(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
`
`the organization where this application or proceeding is assigned is 571-273-8300.
`
`

`

`Application/ Control Number: 15/817,879
`Art Unit: 1763
`
`Page 9
`
`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
`
`