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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on June 11, 2026 has been entered.
Status of the Claims
By amendment filed June 11, 2026, claims 1, 2, 5, 12, 13 and 18 through 23 have been amended. Claims 1, 2, 5, 9, 10, 12, 13 and 17 through 23 are currently pending.
Response to Amendment
The declaration under 37 CFR 1.132 filed June 11, 2026 is insufficient to overcome the rejection of the claims based upon Maes in view of Li as set forth in the last Office action because the declaration mischaracterizes the teachings of Li and does not provide sufficient evidence of unexpected results.
Throughout paragraphs 6 through 12 of the declaration the declarant mischaracterizes the teaches of Li. The declaration argues that the cited section of Lie doe not recite a particular treatment however it is very clear that Li is disclosing that the cited types of cellulosic material can be treated by the extraction treatment taught by the reference. Furthermore, declarant’s argument that the “cellulosic material” of Li is a material which had had its lignin removed is not persuasive because declarant does not cite any section of Li which teaches this and further argues that one of ordinary skill would understand that a “cellulosic material” would not comprise lignin without providing any objective evidence to support this conclusion. The extraction/treatment process of Li was applicable to lignocellulosic material comprising native soft wood because, as was discussed in the previous Office Action and again in this Office Action, Li taught treating softwood including pine. Page 1 Lines 15 through 21 of the specification of the present application as originally filed discloses that lignocellulosic material included wood-based material and both Maes and Li were directed to treating wood-based material, specifically pine, and therefore taught treating lignocellulosic materials. A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989). See MPEP section 2123.I.
Paragraphs 13 through 19 of the declaration fails to show unexpected results because the information provided is not commensurate with the scope of the claims. The declaration cites Figure 2 of the specification of the present application as showing that the extracted wood had a lower acetyl content than non-extracted wood while marinating the same dimensional stability. This argument is not persuasive because the results disclosed in Figure 2 were derived from Example 2 of the specification which only used a narrow embodiment of the claimed process. Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). See MPEP section 716.02(d). Furthermore, the cited sections of the specification disclose that the claimed process achieved an acetyl of 15% or below. However, applicant has not provided any objective evidence that this acetyl amount was unexpected and significant. The evidence relied upon should establish "that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance." Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992). See MPEP section 716.02(b).
The declaration provided by applicant is not persuasive because the declaration provides no objective evidence relevant to the combined teachings of Maes in view of Li and instead only provides opinions of the declarant regarding the teachings of the references and the disclosure of the specification of the present application. Although an affidavit or declaration which states only conclusions may have some probative value, such an affidavit or declaration may have little weight when considered in light of all the evidence of record in the application. In re Brandstadter, 484 F.2d 1395, 179 USPQ 286 (CCPA 1973). See MPEP section 716.01(c).
Response to Arguments
Applicant's arguments filed June 11, 2026 have been fully considered but they are not persuasive.
As was discussed previously, the declaration failed to overcome the rejection of the claims by Maes in view of Li. As was discussed previously, the declaration mischaracterizes the teachings of Li and does not provide any evidence that the process of Li was not for extracting wood. As was discussed previously, Li clearly teaches that the material treated by the taught extraction process included lignocellulosic material comprising native soft wood in the form of softwood including pine. Furthermore, the declaration fails to provide evidence that the alleged unexpected result of achieving a lower acetyl content compared to non-extracted wood was unexpected and significant over the prior art and the results presented within the declaration are not commensurate over the scope of the claims.
Furthermore, in response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
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, 2, 5, 9, 10, 12, 13 and 17-23 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The term “acetyl content compared to acetylated nonextracted wood” in claim 1 is a relative term which renders the claim indefinite. The term “acetyl content compared to acetylated nonextracted wood” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Claim 1 is indefinite because the claim requires that the obtained acetylated extracted wood exhibits an acetyl content which is 2% to 8% lower than acetylated nonextracted wood and it is not clear what acetyl content acetylated nonextracted wood has to have. The specification of the present application as originally filed does not provide a definition for how much acetyl content nonextracted wood has nor is there an industry standard for how much acetyl content an acetylated nonextracted wood would have. Therefore, one of ordinary skill would not know how much 2 to 8% lower acetyl content is compared to acetylated nonextracted wood.
The term “acetyl content compared to acetylated nonextracted wood” in claim 12 is a relative term which renders the claim indefinite. The term “acetyl content compared to acetylated nonextracted wood” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Claim 12 is indefinite because the claim requires that the obtained acetylated extracted wood exhibits an acetyl content which is 2% to 8% lower than acetylated nonextracted wood and it is not clear what acetyl content acetylated nonextracted wood has to have. The specification of the present application as originally filed does not provide a definition for how much acetyl content nonextracted wood has nor is there an industry standard for how much acetyl content an acetylated nonextracted wood would have. Therefore, one of ordinary skill would not know how much 2 to 8% lower acetyl content is compared to acetylated nonextracted wood.
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 lignocellulosic material comprising native 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 the limitation that the acetylated extracted wood exhibited a linear swell from 1% to 2% and had a 2% to 8% lower acetyl content compared to acetylated nonextracted wood having a linear swell from 1% to 2%, Maes teaches that the wood had a thickness/linear swell to not more than 5% (Column 2 Lines 41-45), which overlapped with the claimed range of 1% to 2%. 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 acetyl content of the treated wood was of the order of 20% (Column 3 Lines 56-59) and that the acetyl content affected the surface adhesion and biodegradation of the wood (Column 7 Lines 17-49).
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 an optimal acetyl concentration for the acetylated and extracted wood of Maes in view of Li through routine experimentation because the acetyl content affected the surface adhesion and biodegradation of the wood.
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.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Cleveland can be reached at (571)272-1418. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL P WIECZOREK/Primary Examiner, Art Unit 1712
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