www.uspto.gov
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO. Box 1450
`Alexandria, Virginia 2231371450
`
`15/874,411
`
`53148
`
`01/18/2018
`
`TOShifumi Nagino
`
`20249.0182U301
`
`2903
`
`759°
`
`12/10/20”
`
`HAMRE, SCHUMANN, MUELLER & LARSON RC.
`45 South Seventh Street
`Suite 2700
`
`MINNEAPOLIS, MN 55402-1683
`
`FERRE'ALEXANDREF
`
`ART UNIT
`1788
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`12/10/2019
`
`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):
`PTOMail@hsml.eom
`
`PTOL-90A (Rev. 04/07)
`
`

`

`017/09 A0170” Summary
`
`Application No.
`15/874,411
`Examiner
`ALEXAN DRE F FERRE
`
`Applicant(s)
`Nagino et al.
`Art Unit
`1788
`
`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 09/12/2019.
`CI A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`
`2a). This action is FINAL.
`
`2b) D 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 Expade Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`Disposition of Claims*
`
`5)
`
`Claim(s)
`
`1—3 and 5—7 is/are pending in the application.
`
`5a) Of the above claim(s) Z is/are withdrawn from consideration.
`
`
`
`E] Claim(ss)
`
`is/are allowed.
`
`Claim(ss) 1 —3 and 5—6 is/are rejected.
`
`[:1 Claim(ss_) is/are objected to.
`
`) ) ) )
`
`S)
`are subject to restriction and/or election requirement
`C] Claim(s
`* 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.jjsthQQv/patents/init_event§/pph/index.'sp or send an inquiry to PPeredhack@g§ptg.ggv.
`
`Application Papers
`
`10):] The specification is objected to by the Examiner.
`
`is/are: a)[:| accepted or b)D objected to by the Examiner.
`11):] The drawing(s) filed on
`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):] Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`
`a)i:i All
`
`b)C] Some**
`
`c)C] None of the:
`
`1.1:] Certified copies of the priority documents have been received.
`
`2.[:] Certified copies of the priority documents have been received in Application No.
`
`SD 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)
`
`Notice of References Cited (PTO-892)
`
`2) C] Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date_
`U.S. Patent and Trademark Office
`
`3) E] 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 20191205
`
`

`

`Application/Control Number: 15/874,411
`Art Unit: 1788
`
`Page 2
`
`RESPONSE TO AMENDMENT
`
`Notice of Pre-AIA 0r 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.
`
`WITHDRAWN REJECTIONS
`
`1.
`
`The objections to the claims made of record in the office action mailed 06/ 12/2019 have
`
`been withdrawn due to Applicant’s amendment/argument in the response filed 09/12/2019.
`
`2.
`
`The 35 U.S.C. §103 rejections of the claims made of record in the office action mailed on
`
`06/12/2019 have been withdrawn due to Applicant’s amendment/argument in the response filed
`
`09/ 12/2019.
`
`REJECTIONS
`
`3.
`
`The te xt of those sections of Title 35, US. Code not included in this action can be
`
`found in a prior Oflice action.
`
`Election/Restrictions
`
`4.
`
`Newly submitted claim 7 is directed to an invention that is independent or distinct from
`
`the invention originally claimed for the following reasons:
`
`5.
`
`The inventions of claims 1—3; 5—6 (Group I) and 7 (Group II) are independent or distinct,
`
`each from the other because:
`
`6.
`
`Inventions I and II are related as process of making and product made. The inventions
`
`are distinct if either or both of the following can be shown: (1) that the process as claimed can be
`
`

`

`Application/Control Number: 15/874,411
`Art Unit: 1788
`
`Page 3
`
`used to make another and materially different product or (2) that the product as claimed can be
`
`made by another and materially different process (MPEP § 806.05(f)).
`
`In the instant case the
`
`product as claimed can be made by a materially different process which does not involve
`
`pelletizing the product or by extruding a molten mixture of the resin and the fibrillated fibrous
`
`filler together.
`
`7.
`
`Since applicant has received an action on the merits for the originally presented
`
`invention,
`
`this invention has been constructively elected by original presentation for prosecution
`
`on the merits. Accordingly, claim 7 is withdrawn from consideration as being directed to a non—
`
`elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
`
`Claim Rejections - 35 USC § 103
`
`8.
`
`Claims 1-3 and 5-6 are rejected under 35 U.S.C. 103(3) as being unpatentable over
`
`Sain et al. (U.S. App. Pub. No. 2009/0065975) in View of Fish et al. (U.S. Pat. No. 4,552,805)
`
`and Yano et al. (U.S. App. Pub. No. 2015/0105499).
`
`9.
`
`Regarding claim 1, Sain et al. teaches a process for making lignocellulosing fibre
`
`composite materials. (Abstract). Sain et al. teaches that the composite includes a base resin
`
`material (par. [0034]) and natural cellulose fibers (par. [0002]—[0008] and [0035]), wherein the
`
`cellulose fibers are defibrillated which separates the fibers and generate microfibers which the
`
`application describes as fibrils on the surface of the fibers which remain attached to the fibers.
`
`(par. [0053]—[0055]). Sain et al. teaches that the level of defibrillation is optimized for improved
`
`interfacial adhesion between the fibers and the matrix, and provides enhanced strength. (par.
`
`[0056]—[0059]). Sain et al. teaches that the fiber diameter is 0.005 mm to about 0.070 mm (par.
`
`[0062]) whereas the fibrils have diameters of less than 10 microns. (par. [0052]). Sain et al.
`
`

`

`Application/Control Number: 15/874,411
`Art Unit: 1788
`
`Page 4
`
`further teaches that the resulting composite shaving tensile strength of not less than 55 MPa,
`
`flexural strength of not less than 80 MPa, notched impact strength of 20 J/m and un—notched
`
`impact strength of no less than 100 J/m. (Abstract).
`
`10.
`
`Sain et al. does not specifically teach that the fibers comprise fibrillated ends.
`
`11.
`
`Fish et al. teaches composites reinforced with aramid fibers having which are specifically
`
`fibrillated on the ends thereof. (Abstract). Fish et al. teaches that the fibrillation overcomes
`
`problems with such as strength and stiffness of the composite. (col. 1, lines 33—39 and col. 2,
`
`lines 39—42). Fish et al. specifically teaches that the combination of unfibrillated portions which
`
`results in fibers alignment
`
`in the composite and fibrillated portions results in superior composite
`
`properties. (col. 1, lines 33—39 and col. 2, lines 37—42).
`
`12.
`
`It would have been obvious to one of ordinary skill
`
`in the art to use fibers having
`
`fibrillated ends in Sain et al.
`
`13.
`
`One of ordinary skill in the art would have found it obvious to use fibers with fibrillated
`
`ends in view of the improved mechanical properties imparted by the fibers due to the fibrillated
`
`ends as discussed in Fish et al.
`
`14.
`
`Sain et al. does not explicitly teach that the modulus of elasticity of the composite is
`
`higher than that of the base resin.
`
`15.
`
`Yano et al. teaches a method for making a resin composition having microfibrillated plant
`
`fibers therein. (Abstract). Yano et al. explicitly teaches that the quantity of fibers in the resin
`
`composition will result in increased modulus of elasticity for the resin (par. [0078]), thereby
`
`implying that the base resin has a lower modulus of elasticity as compared to a composite
`
`containing both a resin and the fibers.
`
`

`

`Application/Control Number: 15/874,411
`Art Unit: 1788
`
`Page 5
`
`16.
`
`It would have been obvious to one of ordinary skill
`
`in the art to optimize the amount of
`
`fibers in the composite of Sain et al. in order to improve the elastic modulus of the composite.
`
`17.
`
`One of ordinary skill in the art would have found it obvious to optimize the modulus of
`
`elasticity of the composite in order to improve the mechanical properties thereof for improved
`
`durability.
`
`18.
`
`With respect to the limitations regarding the height impact test and the Charpy impact
`
`strength presently claimed,
`
`it is the goal of both Sain and Fish et al. to provide a composite
`
`material having high impact strength. It would therefore have been obvious to one of ordinary
`
`skill
`
`in the art to optimize the impact strengths of the fiber reinforced composites by adjusting,
`
`for example, the amount of fibers relative to the polymer content as well as by fibrillating the
`
`ends of the fibers as suggested by Fish et al.
`
`'Where the general conditions of a claim are
`
`disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by
`
`routine experimentation. " In re Aller, 220 F.2d 454, 456 (CCPA 1955). MPEP 2144.05 (11).
`
`19.
`
`Regarding claim 2, according to the teachings of Fish et al., fibrillation of the fiber ends
`
`while maintaining a non—fibrillating portion results in improved mechanical properties for the
`
`composite. (col. 1, lines 33—39 and col. 2, lines 37—42).
`
`20.
`
`Regarding claim 3, Sain et al. teaches that the diameter of the fiber diameter is 0.005 mm
`
`to about 0.070 mm (par. [0062]) whereas the fibrils have diameters of less than 10 microns. (par.
`
`[0052]).
`
`21.
`
`Regarding claim 5, the resin composition disclosed in Sain et al. includes polyolefins
`
`such as polypropylene and polyethylene.
`
`(par. [0033]).
`
`

`

`Application/Control Number: 15/874,411
`Art Unit: 1788
`
`Page 6
`
`22.
`
`Regarding claim 6, Sain et al. teaches a process for making lignocellulosing fibre
`
`composite materials. (Abstract). Sain et al. teaches that the composite includes a base resin
`
`material (par. [0034]) and natural cellulose fibers (par. [0002]—[0008] and [0035]), wherein the
`
`cellulose fibers are defibrillated which separates the fibers and generate microfibers which the
`
`application describes as fibrils on the surface of the fibers which remain attached to the fibers.
`
`(par. [0053]—[0055]). Sain et al. teaches that the level of defibrillation is optimized for improved
`
`interfacial adhesion between the fibers and the matrix, and provides enhanced strength. (par.
`
`[0056]—[0059]). Sain et al. teaches that the fiber diameter is 0.005 mm to about 0.070 mm (par.
`
`[0062]) whereas the fibrils have diameters of less than 10 microns. (par. [0052]). Sain et al.
`
`further teaches that the resulting composite shaving tensile strength of not less than 55 MPa,
`
`flexural strength of not less than 80 MPa, notched impact strength of 20 J/m and un—notched
`
`impact strength of no less than 100 J/m. (Abstract).
`
`23.
`
`Sain et al. does not specifically teach that the fibers comprise fibrillated ends.
`
`24.
`
`Fish et al. teaches composites reinforced with aramid fibers having which are specifically
`
`fibrillated on the ends thereof. (Abstract). Fish et al. teaches that the fibrillation overcomes
`
`problems with such as strength and stiffness of the composite. (col. 1, lines 33—39 and col. 2,
`
`lines 39—42). Fish et al. specifically teaches that the combination of unfibrillated portions which
`
`results in fibers alignment
`
`in the composite and fibrillated portions results in superior composite
`
`properties. (col. 1, lines 33—39 and col. 2, lines 37—42).
`
`25.
`
`It would have been obvious to one of ordinary skill
`
`in the art to use fibers having
`
`fibrillated ends in Sain et al.
`
`

`

`Application/Control Number: 15/874,411
`Art Unit: 1788
`
`Page 7
`
`26.
`
`One of ordinary skill in the art would have found it obvious to use fibers with fibrillated
`
`ends in view of the improved mechanical properties imparted by the fibers due to the fibrillated
`
`ends as discussed in Fish et al.
`
`27.
`
`Sain et al. does not explicitly teach that the modulus of elasticity of the composite is
`
`higher than that of the base resin.
`
`28.
`
`Yano et al. teaches a method for making a resin composition having microfibrillated plant
`
`fibers therein. (Abstract). Yano et al. explicitly teaches that the quantity of fibers in the resin
`
`composition will result in increased modulus of elasticity for the resin (par. [0078]), thereby
`
`implying that the base resin has a lower modulus of elasticity as compared to a composite
`
`containing both a resin and the fibers.
`
`29.
`
`It would have been obvious to one of ordinary skill
`
`in the art to optimize the amount of
`
`fibers in the composite of Sain et al. in order to improve the elastic modulus of the composite.
`
`30.
`
`One of ordinary skill in the art would have found it obvious to optimize the modulus of
`
`elasticity of the composite in order to improve the mechanical properties thereof for improved
`
`durability.
`
`31.
`
`With respect to the limitations regarding the height impact test and the Charpy impact
`
`strength presently claimed,
`
`it is the goal of both Sain and Fish et al. to provide a composite
`
`material having high impact strength. It would therefore have been obvious to one of ordinary
`
`skill
`
`in the art to optimize the impact strengths of the fiber reinforced composites by adjusting,
`
`for example, the amount of fibers relative to the polymer content as well as by fibrillating the
`
`ends of the fibers as suggested by Fish et al.
`
`'Where the general conditions of a claim are
`
`

`

`Application/Control Number: 15/874,411
`Art Unit: 1788
`
`Page 8
`
`disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by
`
`routine experimentation. " In re Aller, 220 F.2d 454, 456 (CCPA 1955). MPEP 2144.05 (11).
`
`32.
`
`With respect to the limitations regarding fiber diameters, Sain et al. teaches that the
`
`diameter of the fiber diameter is 0.005 mm to about 0.070 mm (par. [0062]) whereas the fibrils
`
`have diameters of less than 10 microns. (par. [0052]).
`
`ANSI/VERS T0 APPLICANT’S ARG UMENTS
`
`33.
`
`Applicant’s arguments in the response filed 09/12/2019 regarding the 35 U.S.C. § 103
`
`rejections made of record in the office action mailed on 06/12/2019 have been considered but are
`
`moot due to the new grounds of rejection.
`
`Conclusion
`
`Applicant's amendment necessitated the new ground(s) of rejection presented in this
`
`Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 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,
`
`

`

`Application/Control Number: 15/874,411
`Art Unit: 1788
`
`Page 9
`
`however, will the statutory period for reply expire later than SIX MONTHS from the date of this
`
`final action.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to ALEXANDRE F FERRE whose telephone number is (571)270—
`
`5763. The examiner can normally be reached on M and F: 7:30 to 3:30, Tues—Thurs: 8:30 to
`
`5:30.
`
`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
`
`htth/www.uspto.gov/interviewpractice.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
`
`supervisor, Alicia Chevalier can be reached on 5712721490. The fax phone number for the
`
`organization where this application or proceeding is assigned is 571—273—8300.
`
`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 htth/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.
`
`

`

`Application/Control Number: 15/874,411
`Art Unit: 1788
`
`/ALEXANDRE F FERRE/
`
`Primary Examiner, Art Unit 1788
`12/6/2019
`
`Page 10
`
`