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 .
Status of the Claims
By amendment filed November 25, 2025, claim 1 has been amended. Claims 1, 2, 5, 9, 10, 12, 13 and 17 through 23 are currently pending.
Response to Arguments
Applicant's arguments filed November 25, 2025 have been fully considered but they are not persuasive for the reasons discussed in the previous Office Action. Furthermore, applicant’s argument that the method of Li is not conducted on wood is not persuasive because Li teaches that the taught treatment was broadly applicable to natural cellulose-containing materials including plant and plant-derived material. Trees, which wood is derived from, are a plant. Furthermore, Li teaches that “cellulose-containing material” includes, without limitation wood (Column 4 Line 61 through Column 5 Line 33). Therefore, the teachings of Li are applicable to wood such as those taught in Maes and currently claimed.
Applicant’s argument that Li does not teach that the taught process would provide advantages to acetylation processes because the cited section of Li does not pertain to wood is not persuasive because the cited example 5 of Li was directed toward soft and hardwood samples.
Applicant’s arguments regarding the information in the submitted Wikipedia article are not persuasive because Wikipedia is not a valid source of information and because they have not been submitted in a valid declaration explaining how they are relevant to the processes of Maes and Li.
Furthermore, applicant’s arguments concerning the rejection claim claims 21 and 22 are not persuasive because applicant is incorrect in stating that Li teaches removing lignin. Applicant has not cited any section of Li which teaches that lignin was removed and Li clearly teaches that the extraction process removed hemicellulose.
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, 2, 5, 9, 10, 12, 13 and 17-23 are rejected under 35 U.S.C. 103 as being unpatentable over Maes et al (U.S. Patent # 8,865,318) in view Li et al (U.S. Patent # 8,986,501).
In the case of claims 1, 5, 9, 10, 17 and 19, Maes teaches a process for acetylating wood elements (Abstract, Column 2 Line 62 through Column 3 Line 12 and Column 9 Claim 7) wherein the wood element included soft woods such as pine (Column 1 Lines 14-25 and Column 9 Claim 8) and therefore a soft wood comprised of lignin, cellulose and hemicellulose. Furthermore, Maes teaches that prior to the acetylation process the wood element was dried to a moisture content of 2% to 10% (Column 3 Lines 5-7), which overlapped with the claimed ranges. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See section 2144.05.I of the MPEP.
Furthermore, Maes teaches that the wood was wood elements in the form of chips, strands and particles as well as solid wood in the form of wood with large geometries/wafers (Column 2 Lines 16-40).
Maes does not teach that prior to acetylation the wood element was subjected to an extraction step wherein the wood was contacted with an extraction fluid comprising heated water at a temperature in the range of 120 ℃ to 250 ℃, specifically 140 ℃ to 160 ℃.
Li teaches an extraction process for treating cellulosic material with an extraction fluid/extractant in order to selectively extract hemicellulose from the wood (Abstract and Column 22 Claim 1). Li teaches that suitable cellulosic material for the taught process included soft woods and wood chips (Column 4 Line 61 through Column 5 Line 20). Li further teaches that the extractant comprised a non-solvent (Column 6 Lines 22-36) which was either water, methanol, ethanol or acetone (Column 9 Line 55 through Column 10 Line 7 and Columns 22-23 Claim 8). Furthermore, Li teaches that the extraction process was conducted at a temperature in the range of 30 ℃ to 150 ℃ (Column 12 Lines 7-19 and Column 23 Claim 18), which overlapped with the claimed range. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See section 2144.05.I of the MPEP.
Furthermore, Li teaches that taught extraction process was advantageous for acetylation because the selective removal of hemicellulose provided additional physical access routes to the chemical reagents (Column 15 Lines 48-55).
Based on the teachings of Li, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have conducted the extraction step/process of Li prior to the acetylation process of Maes in in order to improve access for the chemical reagents of the acetylation process into the wood.
Since the extraction process of Li extracted hemicellulose form the wood of Maes, the wood of Maes would therefore have an increased relative amount of cellulose and lignin because of the reduced hemicellulose.
As for claims 2 and 18, as was discussed previously the wood element of Maes was a coniferous tree in the form of pine.
In the case of claims 12, 13 and 20, they are rejected for the same reasons discussed previously in the rejection of claims 1, 2 and 18, in that Maes in view of Li teach having formed an acetylated soft wood including pine by a process wherein a wood element was subjected to an extraction process using heated water in an extraction fluid followed by subjecting the extracted wood to an acetylation process wherein the acetylated, extracted wood had a lower EMC than acetylated, non-extracted wood. Maes further teaches that the acetylation process comprised contacting the wood with liquid comprising acetic anhydride at a temperature in the range of 150 ℃ to 190 ℃ (Column 2 Line 62 through Column 3 Line 59).
As for claims 21 and 22, none of the references specifically teach that the relative amounts of cellulose and lignin in the acetylated wood had each increased by up to 25% compared to the wood before extraction and acetylation. However, Li teaches that the extraction process removed hemicellulose from the wood while keeping the amount of cellulose stable within the wood (Column 6 Lines 14-21) and therefore the relative amount of cellulose and lignin increased in the extracted wood. Furthermore, Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here 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, 105 USPQ 233, 235 (CCPA 1955). See MPEP section 2144.05.II.A.
Therefore, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have determined optimal relative amount of cellulose and lignin increases in the extracted and acetylated wood of Maes in view of Li through routine experimentation because the relative amount of increase in the cellulose and lignin affected the amount of hemicellulose that was extracted from the wood.
As for claim 23, Maes teaches that the acetyl content was raised up to 20% (Column 3 Lines 56-58), while the acetylation process conducted over a temperature range of 30 to 190 ℃ for a duration of up to 300 minutes (Column 2 Line 62 through Column 3 Line 2). All of these ranges overlapped with the claimed ranges and as was discussed previously overlapping ranges are prima facie obvious.
Conclusion
Claims 1, 2, 5, 9, 10, 12, 13 and 17 through 23 have been rejected. No claims were allowed.
THIS ACTION IS MADE FINAL. 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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL P WIECZOREK whose telephone number is (571)270-5341. The examiner can normally be reached Monday - Friday, 6:00 AM - 3:30 PM.
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/MICHAEL P WIECZOREK/Primary Examiner, Art Unit 1712