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 .
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 3, 5-8, 11-13, and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Pol et al. (WO 2013/139937).
Considering Claims 1, 3, and 5: Pol et al. teaches a process for the continuous acetylation of wood, where the acetylation is conducted with a liquid acetylation medium under wood acetylation reaction conditions at a pressure of 2 barg (Example 3). Pol et al. teaches the liquid acetylation medium as comprising 40 to 100 weight percent of acetic anhydride and 0 to 60 weight percent acetic acid (15:14-20), with a 90:10 mix being used in the example (Example 3). Pol et al. teaches an apparatus that in its entirety reads on a reactor containing connected chambers operating continuously (4:15-27, Fig. 1), where the acetylation medium is added in the impregnation chamber of the reactor (6:10-13). Pol et al. teaches that the impregnation can take place continuously or batchwise (12:3-19). The wood elements continuously flow through the reactor (12:10-12).
Pol et al. is silent towards the oxygen in the environment. However, Pol et al. teaches treating the wood with a vacuum at -0.95 barg prior to the addition of the acetylation fluid and the vacuum is maintained during this treatment (Example 3). The wood material is kept under submersion until the introduction to the reaction chamber (Example 3). This is followed by the introduction of a nitrogen gas atmosphere during the reaction (17:1-5). The original specification teaches that the substantially oxygen free environment is achieved by the use of a vacuum to remove oxygen (5:1-17), in combination with an inert atmosphere, such as nitrogen, to prevent the introduction of oxygen into the system (6:10-29, 7:1-4). As Pol et al. teaches the conditions taught by the original specification to result in a substantially oxygen free environment, Pol et al. would inherently have the claimed substantially oxygen free environment.
The broadest reasonable interpretation the continuous acetylation reactor includes a reactor containing multiple zones. “The reactor may have different zones, e.g. a preparation zone, an acetylation reaction zone (A). The residence time in the reactor will then be a sum of the residence times in different zones of the reactor.” (Instant specification, ¶0030). The apparatus of Pol et al. thus reads on the continuous acetylation reaction as it includes multiple connected zones, including a continuous acetylation reaction zone.
Considering Claim 6: Pol et al. teaches treating the wood with acetylation agent in both the liquid and gaseous form (Example 3).
Considering Claim 7: Pol et al. teaches applying the liquid acetylation agent to the wood materials (Example 3). Pol et al. teaches that the application can be through spraying (7:11-16).
Considering Claim 8: Pol et al. teaches bringing the pressure to 10 barg before acetylation (Example 3).
Considering Claim 11: Pol et al. teaches an example using wood elements with a height and width of 1.5 and 1 cm and a length of 2.5 cm (Example 1).
Considering Claims 12: Pol et al. teaches the acetylation temperature as being 135 to 180 ºC (16:11-16).
Considering Claim 13: Pol et al. teaches the wood elements as having a acetyl content of 17 to 26% acetyl as measured by HPLC after the reaction (18:16-19).
Considering Claim 15: Pol et al. does not teach the presence of a catalyst (Example 3).
Claims 2, 4, and 21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Pol et al. (WO 2013/139937).
Considering Claims 2 and 4: Pol et al. teaches a process for the continuous acetylation of wood, where the acetylation is conducted with a liquid acetylation medium under wood acetylation reaction conditions at a pressure of 2 barg (Example 3). Pol et al. teaches the liquid acetylation medium as comprising 40 to 100 weight percent of acetic anhydride and 0 to 60 weight percent acetic acid (15:14-20), with a 90:10 mix being used in the example (Example 3). Pol et al. teaches an apparatus that in its entirety reads on a reactor containing connected chambers operating continuously (4:15-27, Fig. 1), where the acetylation medium is added in the impregnation chamber of the reactor (6:10-13). Pol et al. teaches that the impregnation can take place continuously or batchwise (12:3-19). The wood elements continuously flow through the reactor (12:10-12).
Pol et al. is silent towards the oxygen in the environment. However, Pol et al. teaches treating the wood with a vacuum at -0.95 barg prior to the addition of the acetylation fluid and the vacuum is maintained during this treatment (Example 3). The wood material is kept under submersion until the introduction to the reaction chamber (Example 3). This is followed by the introduction of a nitrogen gas atmosphere during the reaction (17:1-5). The original specification teaches that the substantially oxygen free environment is achieved by the use of a vacuum to remove oxygen (5:1-17), in combination with an inert atmosphere, such as nitrogen, to prevent the introduction of oxygen into the system (6:10-29, 7:1-4). As Pol et al. teaches the conditions taught by the original specification to result in a substantially oxygen free environment, Pol et al. would inherently have the claimed substantially oxygen free environment.
The broadest reasonable interpretation the continuous acetylation reactor includes a reactor containing multiple zones. “The reactor may have different zones, e.g. a preparation zone, an acetylation reaction zone (A). The residence time in the reactor will then be a sum of the residence times in different zones of the reactor.” (Instant specification, ¶0030). The apparatus of Pol et al. thus reads on the continuous acetylation reaction as it includes multiple connected zones, including a continuous acetylation reaction zone.
Considering Claim 21: Pol et al. teaches using a screw conveyor in the reaction chamber (9:21-25).
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.
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 10 is rejected under 35 U.S.C. 103 as being unpatentable over Pol et al. (WO 2013/139937) as applied to claim 1 above, and further in view of Nelson et al. (US Pat. 5,608,051).
Considering Claim 10: Pol et al. teaches the process of claim 1 as shown above.
Pol et al. does not teach the ratio between the liquid (applied before the reactor) and gaseous (applied in the reactor) acetylating medium. However, Nelson et al. teaches that the amount of liquid treating agent controls the speed of the reaction (2:13-36). Pol et al. and Nelson et al. are analogous art as they are concerned with the same field of endeavor, namely wood acetylation. It would have been obvious to a person having ordinary skill in the art to have optimized the amount of liquid treating agent through routine experimentation, and the motivation to do so would have been, as Nelson et al. suggests, to control the speed of the acetylation reaction.
Claim 16-20 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Pol et al. (WO 2013/139937) as applied to claim 1 above.
Considering Claim 16: Pol et al. teaches the process of claim 1 as shown above.
Pol et al. teaches the residence time of the acetylation reaction as being 1 to 300 minutes (16:3-10), which overlaps with the claimed range of less than 1 hour. 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 MPEP § 2144.05. It would have been obvious to a person having ordinary skill in the art to have selected a reaction time in the claimed range, and the motivation to do so would have been, as Pol et al. suggests, to control the desired degree of acetylation (16:3-10).
Considering Claims 17 and 20: Pol et al. teaches the process of claim 1 as shown above. Pol et al. teaches the acetylation reaction as being done at a pressure of 2 barg in a reaction zone (Example 3). Pol et al. teaches the wood elements as being heated to a temperature of 20 to 180 ºC (15:21-24), prior to the introduction into the reaction zone having a temperature of 100 to 200 ºC (16:3-10).
Pol et al. does not explicitly teach the difference in the temperatures as being 15ºC. 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 § 2144.05. It would have been obvious to a person having ordinary skill in the art to have optimized the temperatures of each heating step through routine experimentation, and the motivation to do so would have been, as Pol et al. suggests, to provide good reaction yields without degrading the wood.
Considering Claims 18 and 19: Pol et al. teaches impregnating the wood with the acetylation medium upstream of the acetylation reaction zone (Example 3).
Considering Claim 22: Pol et al. teaches impregnation step where the acetylation medium is added to the wood elements as occurring at a temperature of 20-180 ºC (15:21-24). This overlaps with the claimed range of 150 to 220 ºC. It would have been obvious to a person of ordinary skill in the art to have impregnated the wood elements in the overlapping portion of the claimed range, and the motivation to do so would have been, as Pol et al. suggests, it is a suitable temperature for impregnation.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference 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 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 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).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
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Claims 1, 3, 5-13, and 15-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 11,338,468 in view of Pol et al. (WO 2013/139937).
Considering Claims 1, 9, 15: Claim 1 of Patent ‘468 teaches a method for continuous acetylation of wood elements, wherein the acetylation is conducted with an acetylation medium under wood acetylation reaction conditions at a pressure of at least 1.5 barg in a substantially oxygen free environment. Claim 1 of Patent’468 teaches adding the acetylation medium in the continuous acetylation reactor.
Patent ‘468 is silent towards the ratio of acetic anhydride and acetic acid in the acetylation mixture. However, Pol et al. teaches the acetylation medium as comprising 40 to 100 weight percent of acetic anhydride and 0 to 60 weight percent acetic acid (15:14-20), with a 90:10 mix being used in the example (Example 3). Patent ‘468 and Pol et al. are analogous art as they are concerned with the same field of endeavor, namely wood acetylation. It would have been obvious to a person of ordinary skill in the art to have used the ratio of acetic anhydride and acetic acid from Pol et al. in the composition of Patent ‘468, and the motivation to do so would have been, as Pol et al. suggests, to allow for sufficient uptake of the acetylation medium into the wood (15:14-20).
Considering Claim 2: Claim 1 of Patent ‘468 teaches transferring the oxygen-removed wood elements under said oxygen-free inert atmosphere from said batch vessel into a continuous acetylation reactor and treating the wood elements with an acetylation medium in said continuous acetylation reactor under wood acetylation reaction conditions, at a pressure of at least 1.5 barg.
Considering Claim 3: Claim 1 of Patent ‘468 teaches the oxygen content in the acetylation reactor as being less than 0.8 vol%.
Considering Claim 4: Claim 2 of Patent ‘468 teaches the oxygen content of the wood elements as being less than 0.8 vol%.
Considering Claim 5: Claim 1 of Patent ‘468 teaches removing oxygen from the wood elements in said batch vessel using vacuum, providing oxygen-removed wood elements.
Considering Claims 6 and 7: Claim 4 of Patent ‘468 teaches that the acetylation medium is supplied to the reactor in both gaseous form and liquid form.
Patent ‘468 does not teach applying the acetylation medium by spraying. However, Pol et al. teaches applying an acetylation medium to wood elements by spraying (7:11-16). It would have been obvious to a person of ordinary skill in the art to have applied the acetylation medium through spraying, as in Pol et al., and the motivation to do so would have bee, as Pol et al. suggests, to allow for continuous application of the acetylation medium to the wood elements (7:11-16).
Considering Claim 8: Claim 1 of Patent ‘468 teaches after the oxygen removal and before acetylation, bringing the oxygen-removed wood elements under increased pressure of at least 1.5 barg.
Considering Claim 10: Claim 5 of Patent ‘468 teaches that the weight ratio of the acetylation medium in the gaseous form to the liquid form supplied to the acetylation reactor is in the range 0.5/1 to 4/1.
Considering Claim 11: Claim 6 of Patent ‘468 teaches that the wood elements have a size of a height and width from 0.1 cm to 3 cm, and a length of 1 to 7 cm. Considering Claim 12: Patent ‘468 teaches the process of claim 1 as shown above.
Patent ‘468 is silent towards the reaction temperature. However, Pol et al. teaches the acetylation temperature as being 135 to 180 ºC (16:11-16). Patent ‘468 and Pol et al. are analogous art as they are concerned with the same field of endeavor, namely wood acetylation. It would have been obvious to a person having ordinary skill in the art to used the reaction temperature of Pol et al. in the process of Patent ‘468, and the motivation to do so would have been, as Pol et al. suggests, to increase the reaction rate (16:11-16).
Considering Claim 13: Patent ‘468 teaches the process of claim 1 as shown above.
Patent ‘468 is silent towards the acetyl content of the wood. However, Pol et al. teaches the wood elements as having a acetyl content of 17 to 26% acetyl as measured by HPLC after the reaction (18:16-19). It would have been obvious to a person having ordinary skill in the art to have prepared a wood element with the acetyl content of Pol et al. in the process of Patent ‘468, and the motivation to do so would have been, as Pol et al. suggests, to provide high dimensional stability (1:9-12).
Considering Claim 16: Claim 7 of Patent ‘468 teaches that the residence time in the continuous acetylation reactor is under 1 hour.
Considering Claim 17: Claim 8 of Patent ‘468 teaches the continuous acetylation reactor comprises acetylation reaction zone (A), wherein wood elements in the continuous acetylation reactor have an average temperature, and wherein the wood elements are introduced into the acetylation reaction zone (A) at a temperature within 15° C. of said average temperature, wherein the acetylation reaction zone (A) has a pressure of at least 1.5 barg and wherein the wood elements have a residence time in said acetylation zone (A) of under 1 hour.
Claims 12 and 13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 11,338,468 as applied to claim 1 above, and further in view of Pol et al. (WO 2013/139937).
Considering Claim 12: Patent ‘468 teaches the process of claim 1 as shown above.
Patent ‘468 is silent towards the reaction temperature. However, Pol et al. teaches the acetylation temperature as being 135 to 180 ºC (16:11-16). Patent ‘468 and Pol et al. are analogous art as they are concerned with the same field of endeavor, namely wood acetylation. It would have been obvious to a person having ordinary skill in the art to used the reaction temperature of Pol et al. in the process of Patent ‘468, and the motivation to do so would have been, as Pol et al. suggests, to increase the reaction rate (16:11-16).
Considering Claim 13: Patent ‘468 teaches the process of claim 1 as shown above.
Patent ‘468 is silent towards the acetyl content of the wood. However, Pol et al. teaches the wood elements as having a acetyl content of 17 to 26% acetyl as measured by HPLC after the reaction (18:16-19). It would have been obvious to a person having ordinary skill in the art to have prepared a wood element with the acetyl content of Pol et al. in the process of Patent ‘468, and the motivation to do so would have been, as Pol et al. suggests, to provide high dimensional stability (1:9-12).
Claims 2 and 4 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 11,338,468 in view of Pol et al. (WO 2013/139937).
Considering Claim 2: Claim 1 of Patent ‘468 teaches a method for continuous acetylation of wood elements, wherein the acetylation is conducted with an acetylation medium under wood acetylation reaction conditions at a pressure of at least 1.5 barg in a substantially oxygen free environment. Claim 1 of Patent’468 teaches adding the acetylation medium in the continuous acetylation reactor. Claim 1 of Patent ‘468 teaches transferring the oxygen-removed wood elements under said oxygen-free inert atmosphere from said batch vessel into a continuous acetylation reactor and treating the wood elements with an acetylation medium in said continuous acetylation reactor under wood acetylation reaction conditions, at a pressure of at least 1.5 barg.
Patent ‘468 is silent towards the ratio of acetic anhydride and acetic acid in the acetylation mixture. However, Pol et al. teaches the acetylation medium as comprising 40 to 100 weight percent of acetic anhydride and 0 to 60 weight percent acetic acid (15:14-20), with a 90:10 mix being used in the example (Example 3). Patent ‘468 and Pol et al. are analogous art as they are concerned with the same field of endeavor, namely wood acetylation. It would have been obvious to a person of ordinary skill in the art to have used the ratio of acetic anhydride and acetic acid from Pol et al. in the composition of Patent ‘468, and the motivation to do so would have been, as Pol et al. suggests, to allow for sufficient uptake of the acetylation medium into the wood (15:14-20).
Considering Claim 4: Claim 2 of Patent ‘468 teaches the oxygen content of the wood elements as being less than 0.8 vol%.
Claim 14 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 11,338,468 in view of Pol et al. (WO 2013/139937).
Considering Claims 14: Claim 1 of Patent ‘468 teaches a method for continuous acetylation of wood elements, wherein the acetylation is conducted with an acetylation medium under wood acetylation reaction conditions at a pressure of at least 1.5 barg in a substantially oxygen free environment. Claim 1 of Patent’468 teaches adding the acetylation medium in the continuous acetylation reactor. Claim 1 of Patent ‘468 teaches that at least 80 wt. % of the acetylation medium is supplied to the wood elements after the wood elements are at a pressure of at least 1.5 barg.
Patent ‘468 is silent towards the ratio of acetic anhydride and acetic acid in the acetylation mixture. However, Pol et al. teaches the acetylation medium as comprising 40 to 100 weight percent of acetic anhydride and 0 to 60 weight percent acetic acid (15:14-20), with a 90:10 mix being used in the example (Example 3). Patent ‘468 and Pol et al. are analogous art as they are concerned with the same field of endeavor, namely wood acetylation. It would have been obvious to a person of ordinary skill in the art to have used the ratio of acetic anhydride and acetic acid from Pol et al. in the composition of Patent ‘468, and the motivation to do so would have been, as Pol et al. suggests, to allow for sufficient uptake of the acetylation medium into the wood (15:14-20).
Response to Arguments
Applicant's arguments filed January 27, 2026 have been fully considered but they are not persuasive, because:
A) The applicant’s argument that Example 3 of Pol et al. does not teach a continuous process is not persuasive. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). See MPEP § 2123. Pol et al. teaches that the impregnation can take place continuously or batchwise (12:3-19). The wood elements continuously flow through the reactor (12:10-12). When using the continuous impregnation, the process would read on the claimed continuous process.
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 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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LIAM J HEINCER whose telephone number is (571)270-3297. The examiner can normally be reached M-F 7:30-5:00.
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/LIAM J HEINCER/Primary Examiner, Art Unit 1767