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 .
Applicant's submission filed on 10/3/25 has been entered. Claims 1-2, and 4-25 are currently pending.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-2, and 4-25 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 was amended to recite: “the drying step B is above 150oC”. The closest basis for this limitation appears to be original claim 10, which recited “drying steps is in the range of 150-190oC.”. Thus Applicant’s original disclosure does not adequately support all temperatures beyond 190oC that would currently be included within the recitation of “above”.
Claim 9 was previously amended to recite “heating to a temperature above 160oC”. The closest basis for this limitation appears to be original claim 9, which recited “heating to a temperature of 160-190oC”. Thus Applicant’s original disclosure does not adequately support all temperatures beyond 190oC that would currently be included within the recitation of “above”.
Claim 10 was previously amended to recite “the drying temperature… is above 150oC”. The closest basis for this limitation appears to be original claim 10, which recited “the drying temperature…is in the range 150-190oC”. Thus Applicant’s original disclosure does not adequately support all temperatures beyond 190oC that would currently be included within the recitation of “above”.
Claim 20 has been amended to recite: “wherein drying step B gives dried wood with a width and a thickness of from 1 to 30 cm and a length of from 1 to 6 m.” The original disclosure does not provide a teaching of post processed and dried wood dimensions. The closest basis for this limitation appears to be [0009]: “The wood suitable for the method according to the invention can be either solid wood or wood elements. Solid wood would typically have a width and a thickness of from 1 to 30 cm, and a length of from 1 to 6 m.”. The recitation of “the wood suitable for the method” appears suggestive only of a starting dimension for the wood to be used within the method, and not suggestive of wood dimensions for wood produced by the method.
Claim 22 recites: “a pressure higher than -0.4 barg”. Applicant offered (in 5/28/24 remarks) that the basis for this limitation is from [0016], which recited “the pressure drops to about -0.4 barg to 0.3 barg”. Thus Applicant’s original disclosure does not adequately support all pressures beyond 0.3 barg that would currently be included within the recitation of “higher than”.
Newly presented claim 25 recites: “the drying step A is above 150oC,”. The closest basis for this limitation appears to be original claim 10, which recited “drying steps is in the range of 150-190oC.”. Thus Applicant’s original disclosure does not adequately support all temperatures beyond 190oC that would currently be included within the recitation of “above”.
The other dependent claims do not cure the defects of the claims from which they depend.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim(s) 1-2, 4, 5, 7, 8, 10-16, 19-22, and 24-25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nelson et al (US 5,608,051; hereafter Nelson) in view of Pol et al (WO2013/175420; hereafter Pol) and Rowell (US 2013/0303751; hereafter Rowell). {Mykytka (US 2010/0331531; hereafter Mykytka, relied upon only as evidence for claims 24 and 25}.
Claim 1: Nelson teaches a method for wood acetylation comprising treating the wood with an acetylation medium under wood acetylation reaction conditions including a pressure to give acetylated wood and drying the acetylated wood (See, for example, abstract, Fig, col 1 lines 30-41, col 2 line 6– col 3 line 50), wherein the drying comprises drying step A and subsequent drying step B, wherein the wood is dried with drying medium A in drying step A (step b – performed as stripping acetylated LM with medium comprising superheated acetic) and with a drying medium B (such as thermal processing, at temperatures of about 150oC, with superheated steam and other entraining gas(es) to remove odor) (See, for example, col 2 line 24– col 3 line 41). Nelson further teaches wherein the drying step A comprises drying the acetylated wood while supplying a flow of drying medium A (See, for example, col 2 lines 35-68). Although “about 150oC” is not explicitly above 150oC, it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated at temperature within the claimed range since 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, 191USPQ 90 (CCPA 1976), and since 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.(MPEP 2144.05 II A).
Nelson has taught the drying medium B comprises other entraining gas(es), but does not explicitly recited one of those claimed. Rowell teaches a method for the acetylation of wood comprising treating the wood with an acetylation medium under wood acetylation reaction conditions including a pressure to give acetylated wood and drying the acetylated wood (See, for example, abstract, [0007], [0010], [0015],[0017], [0021-26]). Like Nelson, Rowell’s drying process comprises application of heat and gas particularly to reduce acetic anhydride / and or acetic acid vapors coming off the material, and explicitly teaches wherein nitrogen predictably serves as such a gas (See, for example, [0021], [0025-26]). Therefore it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated drying medium B as comprising nitrogen since it would predictably act to reduce acetic anhydride / and or acetic acid vapors / odors within a post acetylation process, and since “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980), and / or since where two known alternatives are interchangeable for a desired function, an express suggestion to substitute one for the other is not needed to render a substitution obvious. In re Fout, 675 F.2d 297,301 (CCPA 1982); In re Siebentritt, 372 F.2d 566, 568 (CCPA 1967).
Nelson further teaches control of the pressure during acetylation and during drying step A (its step B stripping reaction), but does not explicitly teach the drying step A being carried out at a pressure lower than the acetylation reaction pressure. Pol similarly teaches a method of wood acetylation with acetic acid and / or acetic anhydride in a heated and pressurized system (See, for example, abstract, pg 11). Like Nelson, Pol additionally teaches wherein following acetylation the wood is treated with a medium comprising acetic acid and / or acetic anhydride originating from the same fluid used during acetylation (see, for example, paragraph bridging pg 9-pg 10). Pol explicitly teaches lowering of pressure during stripping reaction as compared to acetylation reaction conditions in order to enhance stripping during post acetylation drying (See, for example, paragraph bridging pgs 9-10), therefore it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated a lower pressure than the acetylation reaction pressure as it would predictably have enhanced stripping of residual acetylation fluid.
Claim 2: Nelson teaches that the first drying medium superheated acetic acid while the second drying medium is nitrogen / steam thus A has a higher heat capacity (See, for example, col 2 line 24– col 3 line 38).
Claims 4 and 16: refer to the rejection of claim 1 above, wherein the drying medium B is nitrogen (refer particularly to combination of Nelson and Rowell in rejection of claim 1 above).
Claim 5: Pol further teaches wherein acetylation can predictably be performed at a pressure of between 0 and 6 barg (See, for example, pg 9 lines 12-15). Although such a range is not explicitly at least 1 barg, it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated a pressure within the claimed range since 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, 191USPQ 90 (CCPA 1976).
Claim 7: Nelson further teaches wherein acetylation medium comprises a mixture of acetic anhydride and acetic acid (See, for example, col 1 lines 41-50).
Claim 8: Nelson further teaches wherein the acetylation medium comprises at least 50% acetic anhydride, further 90% acetic anhydride and 10% acetic acid (see, for example, col 1 lines 41-50).
Claim 10: Nelson further teaches wherein drying temperature in step A is preferably 185-195C (see, for example, col 2 lines 63-65).
Claim 11: Nelson further teaches wherein the drying step A, which is directed to stripping of excess, residence time is 2 minutes (See, for example col 5 lines 15-18). Although such an amount is not explicitly 5-25 minutes, it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated a duration within the claimed range since a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner,778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
Claim 12: Nelson is silent as to the duration of drying step B, so it does not explicitly teach wherein in the second drying step the residence time is 15-40 min. Drying processes naturally present an economy; too short a duration and there is insufficient drying, too long and you’ve wasted energy and time. Therefore it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated a duration of the second drying within the claimed range since “[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).
Claim 13: Nelson further teaches wherein prior to the drying step A, the acetylated wood possesses a liquid content of 40% to up to 110% (See, for example, col 2 lines 23-29). Although such an amount is not explicitly at least 55%, it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated a duration within the claimed range since 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, 191USPQ 90 (CCPA 1976).
Claim 14: Nelson further teaches wherein drying step A results in 4% residual acid, and Step B results in 1 %, further suitably less than 0.5% (See, for example, col 3 lines 35-37 and col 5 lines 19-20).
Claim 15: Nelson further teaches the drying medium A has a higher content of acetylation medium than drying medium B (see, for example, col 2 line 24– col 3 line 38, wherein medium A has superheated vaporized acetic acid / acetic anhydride within the sealed vessel while medium B is steam).
Claim 19: Nelson further teaches wherein the weight gain due to acetylation, prior to step A, is from 5-25% by weight (see, for example, col 3 lines 14-18). Although not explicitly 17% to 26%, it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated an uptake within the claimed range since 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, 191USPQ 90 (CCPA 1976). As the required content is obviated, the present limitation is met as such a content would still be present regardless of the type of determination.
Claim 20: Pol further teaches wherein wood desirable to be treated possesses dimensions of 0.5-20 cm, 3-5 cm, and a length of 0.5 to 6 m, and moisture content of 2-5% (See, for example, pg 11 lines 4-9). Although such dimensions are not explicitly 1-30 cm, 1-30cm, and 1-6 m, as claimed (considering a moisture content of only 2-5%, accounting for shrinkage would still result in the recited ranges as being overlapping with those claimed), it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated dimensions within the claimed range since 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, 191USPQ 90 (CCPA 1976).
Claim 21: Nelson further teaches wherein the acetylation medium comprises acetic and acetic anhydride (See, for example, col 1 lines 42-46).
Claim 22: Nelson further teaches drying step A is carried out at 100-150 KPa (1-1.5 barg) (See, for example, col 2 lines 61-68).
Claim 24: Nelson further teaches wherein prior to / at the beginning of the drying step A, the acetylated wood possesses a liquid content of 40% to up to 110% (See, for example, col 2 lines 23-29). The combination of Nelson in view of Pol and Rowell inherently meet the limitation directed to wherein the liquid content at the beginning of the first drying step A is lower than at the end of the acetylation step, as per the combination with Pol there is an incorporation of a lowering of pressure between acetylation and drying step A; which as evidenced by {Mykytka} would inherently incur a reduction in temperature and in the liquid due to flashing caused by the release / reduction of pressure (see, for example, [0073] of {Mykytka}). Alternatively, as the claim is drafted in open comprising language and the thermal treatment is a serial process, drying step A can be designated as beginning at a particular point wherein such claimed conditions are met.
Claim 25: refer to the rejections of claims 1, 10, and 24 above. Nelson further teaches wherein the drying step A is conducted after the acetylation is completed (See, for example, col 2 lines 24-68), and wherein drying medium A comprises superheated acetic acid and / or acetic anhydride vapor, while drying medium B does not (therefore different), but rather comprises nitrogen. (refer to rejection of claim 1 above).
Claim 17-18 is rejected under 35 U.S.C. 103 as being unpatentable over Nelson in view of Pol and Rowell as applied to claim 1 above and further in view Nelson et al (WO95/23168; hereafter Nelson168).
Claims 17-18: Nelson in view of Pol and Rowell teach the method of claim 1 above. Nelson further teaches wherein drying medium B is gaseous (such as steam entrained in gas(es)) (See, for example, col 3 lines 20-25). Pol further teaches a reactor system designed for controlling flow of gaseous media therethrough in motion relative to the acetylated article (See, for example, Figures, pg 6, pg 8-9). But Nelson in view of Pol are silent as to a flow rate / mass ratio of flow rate between drying medium and the acetylated wood, therefore they do not explicitly teach the claimed ratio ranges. Nelson168 teaches a method of acetylating wood (See, for example, abstract). Nelson168 further teaches varying the flow rate of stripping / drying medium relative to the acetylated wood influences the rate of residual acid removal (See, for example, pg 6-7 and Tables 1-2). Therefore it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated a ratio of a first flow rate of the gaseous drying medium A / B to a flow rate of the acetylated wood of 1-6 / 0.7-5 on mass basis since such ratios between drying medium to acetylated wood are recognized in the art to be result effective, thus ripe for optimization, “[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).
Claim(s) 1-2, 4-12, 15-16, and 20-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rowell et al (US 2013/0303751; hereafter Rowell) in view of Pol et al (WO2013/175420; hereafter Pol)
Claims 1, 4, and 16: Rowell teaches a method for the acetylation of wood comprising treating the wood with an acetylation medium under wood acetylation reaction conditions including a pressure to give acetylated wood and drying the acetylated wood (See, for example, abstract, [0007], [0010], [0015],[0017], [0021-26]), wherein the drying comprises a drying step A and a subsequent drying step B, wherein the acetylated wood is dried with a first drying medium A in drying step A and then with a second drying medium B in drying step B (drying step A occurs during the refining step wherein nitrogen and vaporized acetic acid / acetic anhydride within the sealed vessel would form the medium A which undergoes heating at temperatures of ~135oC-160oC, and the drying step B occurs in the collection vessel / screw conveyor in inert gas at 150oC (see, for example, [0015],[0017], [0021-26])). Rowell has taught medium A as a mixture comprising vaporized acetic acid / acetic anhydride within the sealed vessel undergoing heating at temperatures of ~135oC-160oC, but does not specify that there is a flow of medium comprising a superheated acetylation medium vapor comprising acetic acid. Pol similarly teaches a method of wood acetylation with acetic acid and / or acetic anhydride in a closed / sealed , heated and pressurized system (See, for example, abstract, pg 2, pg 11). Like Rowell, Pol additionally teaches wherein following acetylation the wood is treated with a medium comprising acetic acid and / or acetic anhydride originating from the same fluid used during acetylation; and further, particularly, that the medium comprises flowing superheated acetic acid, as it, in combination with heat and lowered pressure, acts as a stripping gas allowing for removal and recovery of unreacted acetylation fluid and acid products from the wood (see, for example, pg 2-3, Figures, and paragraph bridging pg 9-pg 10). Therefore it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated a superheated acetylation medium vapor which comprises acetic acid via flowing as such a medium flow would allow for removal and recovery of unreacted acetylation fluid and acid products from the wood.
With respect to the added limitation of the drying step A being carried out at a pressure lower than the acetylation reaction pressure, Pol explicitly teaches lowering of pressure from acetylation reaction conditions to enhance stripping during post acetylation drying (See, for example, paragraph bridging pgs 9-10), therefore it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated a lower pressure than the acetylation reaction pressure as it would predictably have enhanced stripping of residual acetylation fluid.
Rowell in view of Pol has further taught drying medium A would possess nitrogen and superheated vaporized acetic acid / acetic anhydride while the drying medium B is nitrogen (see, for example, [0015],[0017], [0021-26]).
Rowell further teaches drying step B at 150oC (See, for example, [0021-26]). Although not explicitly above 150oC, it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated a value within the claimed range since a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner,778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) and since 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. (MPEP 2144.05 II A).
Claim 2: Rowell in view of Pol has further taught drying medium A would possess nitrogen and superheated vaporized acetic acid / acetic anhydride while the drying medium B would possess nitrogen, as the heat capacity is of acetic anhydride is higher than that of nitrogen the first system which possess such additions would possess a higher heat capacity (see, for example, [0015],[0017], [0021-26]).
Claim 5: Rowell has taught exemplary embodiments wherein the acetylation reaction conditions comprise an acetylation reaction pressure of at least 1 barg (See, for example, [0021-26]).
Claim 6: Rowel further teach wherein the drying in step B is carried out at a pressure lower than the acetylation reaction pressure (See, for example, [0023-0026] of Rowell, wherein drying step B is carried out occurring in the screw conveyor / collection vessel at atmospheric pressure which is lower than that of 2, 3, or 6 bar acetylation pressures taught in examples 5-7)
Claims 7: Rowell and Pol further teaches wherein acetylation medium comprises a mixture of acetic acid and acetic anhydride (See, for example, [0013] of Rowell and pg 11 of Pol).
Claim 8: Rowell further teaches the acetylation medium comprises 95%-55% acetic anhydride (See, for example, [0013]).
Claim 9: Rowell further teaches wherein the acetylation conditions comprise heating to a temperature in the range 140-170o C (See, for example, [0006]). Although such range is not explicitly 160-190oC as claimed, it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated a temperature within the claimed range since 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, 191USPQ 90 (CCPA 1976), and since 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. (MPEP 2144.05 II A).
Claim 10: Rowell further teaches drying of step A at 160oC (See, for example, [0023]).
Claim 11: Rowell teaches the method of claim 1 (described above). Drying step A of Rowell is interpreted as aligning / occurring with refining (refer to rejection of claim 1 above). Rowell has further taught wherein the refining occurs for a period of 1-60 minutes (See, for example, [0006]). Although such a range is not explicitly a residence time is 5-25 min it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated the first drying / refining for a duration within the claimed range since 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, 191USPQ 90 (CCPA 1976).
Claim 12: Rowell teaches the method of claim 1 (described above). Rowell is silent as to the duration of drying step B, so it does not explicitly teach wherein in the second drying step the residence time is 15-40 min. Drying processes naturally present an economy; too short a duration and there is insufficient drying, too long and you’ve wasted energy and time. Therefore it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated a duration of the second drying within the claimed range since “[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).
Claim 15: Rowell in view of Pol teaches wherein the drying medium A has a higher content of acetylation medium than drying medium B (see, for example, [0015],[0017], [0021-26] and rejection of claim 1 above, wherein medium A has nitrogen and superheated vaporized acetic acid / acetic anhydride within the sealed vessel while medium B is inert gas).
Claim 20: Pol further teaches wherein wood desirable to be treated possesses dimensions of 0.5-20 cm, 3-5 cm, and a length of 0.5 to 6 m, and moisture content of 2-5% (See, for example, pg 11 lines 4-9). Although such dimensions are not explicitly 1-30 cm, 1-30cm, and 1-6 m, as claimed (considering a moisture content of only 2-5%, accounting for shrinkage would still result in the recited ranges as being overlapping with those claimed), it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated dimensions within the claimed range since 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, 191USPQ 90 (CCPA 1976).
Claim 21: Rowell in view of Pol further teach wherein the acetylation medium comprises acetic and acetic anhydride (See, for example, [0013] of Rowell and pg 11 of Pol).
Claim 22: Rowell in view of Pol teach wherein the drying in step A is carried out at a pressure lower than the acetylation reaction pressure (See, for example, [0021] of Rowell, wherein drying step A / refining is carried out at ~0 barg (atmospheric pressure) additionally / alternatively Pol explicitly teaches lowering of pressure from acetylation reaction conditions (0.5 to 4 barg) to enhance stripping (See, for example, pgs 9-10). If not already met by the teaching of 0 barg, it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated a pressure within the claimed range since 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, 191USPQ 90 (CCPA 1976).
Claims 13 and 24-25 are rejected under 35 U.S.C. 103 as being unpatentable over Rowell in view of Pol as applied to claim 1 above and further in view of Cwirko et al (US 2013/0202789; hereafter Cwirko) {Mykytka relied upon solely as evidence}.
Claims 13 and 24: Rowell teaches the method of claim 1 above, Rowell further teaches a method of acetylation of wood including achieving acetyl weight gains of 13.5-30% involving the impregnation of acetylation medium (See, for example, [0021-26], but is silent as to the liquid content in the acetylated wood after acetylation and before / at the beginning of drying. Cwirko teaches a method of acetylation of wood (See, for example, abstract). Cwirko further teaches the relative amount of acetylation liquid impregnated is result effective, and preferably is on the order of 0.8 to 2 grams of fluid per gram of wood (see, for example, [0012], [0045-46]). And wherein such amounts allow for final degrees of acetylation on the order of about 10-30% (See, for example, [0062]). Therefore it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated 0.8 to 2 grams of impregnating fluid per gram of wood (80-200% by weight of dry wood) prior to / present at the beginning of drying as such an amount allows for predictably achieving ultimate dry acetylation concentrations at the specified desired levels of Rowell, additionally / alternatively 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, 191USPQ 90 (CCPA 1976) and “[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). The combination of Rowell in view of Pol and Cwirko further inherently meet the limitation directed to wherein the liquid content at the beginning of the first drying step A is lower than at the end of the acetylation step, as per the combination with Pol there is an incorporation of a lowering of pressure between acetylation and drying step A; which as evidenced by {Mykytka} would inherently incur a reduction in temperature and in the liquid due to flashing caused by the release / reduction of pressure (see, for example, [0073] of {Mykytka}). Alternatively, as the claim is drafted in open comprising language and the thermal treatment is a serial process, drying step A can be designated as beginning at a particular point wherein such claimed conditions are met.
Claim 25: refer to the rejections of claims 1 and 10 over Rowell in view of Pol and the rejection of claim 24 over Rowell in view of Pol and Cwirko above. Rowell further teaches wherein the drying step A is conducted after the acetylation is completed (see, for example, [0007], [0022] wherein “the acetylation” is interpreted as corresponding to the only claimed acetylation step encompassed by lines 2-5 of applicant’s claim 25, and with respect to Rowell corresponding to the acetylation which occurs in an impregnation vessel prior to being fed to the refiner; thus such an acetylation is completed prior to the drying step A), and wherein drying medium A comprises superheated acetic acid and / or acetic anhydride vapor, while drying medium B does not (therefore different), but rather comprises nitrogen. (refer to rejection of claim 1 above).
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Rowell in view of Pol and Cwirko as applied to claim 13 above and further in view of Van Dijk (US 2007/0044416; hereafter Van Dijk).
Claim 14: Rowell in view of Pol and Cwirko teaches the methods of claim 13 above, wherein the liquid content achieved by acetylation prior to drying step A, is above 55 wt%. (see rejection of claim 13 above). Rowell further teaches wherein acetylation medium comprises a mixture of acetic acid and acetic anhydride thereof, further comprising 95-55 wt% acetic anhydride (See, for example, [0013]). And wherein Rowell has further taught wherein the wood produced within its process can be used as wood fibers for boards / panels (See, for example, abstract); but is silent as to the details of liquid content of the wood element during drying, so it does not explicitly teach wherein the liquid content in the acetylated wood is reduced during the drying step A to 2-8 wt. % on dry basis of the acetylated wood weight and drying step B to max 0.5 wt. % on dry basis. Van Dijk teaches a method of forming panels from wood fibers (See, for example, abstract, [0002-0003], [0050]). Van Dijk further teaches wherein wood fibers used for preparing such components should be dried preferably to liquid content of less than 0.5 % by weight (see, for example, [0050]). As both Rowell and Van Dijk are directed to preparing dried wood elements / fibers and producing articles from said elements, it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated the drying end point of drying step B to be at a liquid content of less than 0.5% by weight as such a liquid content is preferable in the art to yield predictable wooden element members and since when a primary reference is silent as to a certain detail, one of ordinary skill would be motivated to consult a secondary reference which satisfies the deficiencies of the primary reference.
Further by incorporation of the less than 0.5% moisture content for the drying step B, an intermediate liquid content of between 2-8 wt% would be overlapped by the starting condition of at least 55 wt % and the ending of less than 0.5 wt%; thus it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated a reduction in the liquid content during the drying step A to 2-8 wt% on dry basis since 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, 191USPQ 90 (CCPA 1976), and “[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).
Claim 17-18 is rejected under 35 U.S.C. 103 as being unpatentable over Rowell in view of Pol as applied to claim 1 above and further in view Nelson et al (WO95/23168; hereafter Nelson168).
Claims 17-18: Rowell in view of Pol teach the method of claim 1 above. Rowell further teaches wherein drying medium B is gaseous (such as nitrogen gas) (See, for example, examples). Pol further teaches a reactor system designed for controlling flows of gaseous media relative to the acetylated article (See, for example, Figures, pg 6, pg 8-9). But Rowel in view of Pol are silent as to a flow rate / mass ratio of flow rate between drying medium and the acetylated wood, therefore they do not explicitly teach the claimed ratio ranges. Nelson168 teaches a method of acetylating wood (See, for example, abstract). Nelson168 further teaches varying the flow rate of stripping / drying medium relative to the acetylated wood influences the rate of residual acid removal (See, for example, pg 6-7 and Tables 1-2). Therefore it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated a ratio of a first flow rate of the gaseous drying medium A / B to a flow rate of the acetylated wood of 1-6 / 0.7-5 on mass basis since such ratios between drying medium to acetylated wood is recognized in the art to be result effective, thus ripe for optimization, “[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).
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Rowell in view of Pol as applied to claim 1 above and further in view of Pol et al (WO 2013/139937; hereafter Pol937).
Claim 19: Rowell in view of Pol teach the method of claim 1 above, Rowell further teaches wherein the WPG influences the stability and decay resistance (See, for example, Table 4), but is silent as to “acetyl content” of the acetylated wood prior to drying, so it does not teach a content within the claimed range. Pol937 teaches a method of wood acetylation (See, for example, abstract). Pol937 teaches wherein the acetyl content allows for improved material properties and wherein such content is readily quantified by HPLC is preferably 21-26% (See, for example, pg 1 lines 7-12, pg 18 line 16-pg 19 line 30, and examples). Therefore it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated acetylation to an acetyl content of 21-26% prior to the drying step A, as determined by HPLC, for the acetylated wood as such contents would predictably enhance materials properties such as durability, and stability.
Allowable Subject Matter
The examiner contacted Applicant’s representative, Vic Lin, with respect to an examiner’s amendment comprising the following amendments which collectively would place the Application in condition for allowance:
Incorporation of the content of claim 23 into each independent claim (1, 4, and 25); and then cancel claim 23
At the end of claim 1: "above 150oC." would be amended to --in the range of above 150oC to 190oC.--
At line 12 of claim 25: “above 150oC” would be amended to --in the range of above 150oC to 190oC.--
At claim 9: “above 160oC” would be amended to --in the range of above 160oC to 190oC--.
At claim 10: “above 150oC” would be amended to --in the range of above 150oC to 190oC--.
Claim 20 would revert back to the language from the 5/22/22 claim set.
At claim 22: “higher than -0.4 barg.” would be amended to --in the range of higher than -0.4 barg to 0.3 barg.”
At this time the Applicant has not authorized such an examiner’s amendment, but rather requested the Examiner prepare an office action.
Response to Arguments
With respect to Applicant’s arguments directed to the 35 USC 112 (a) rejection of claim 9, the examiner is not persuaded by applicant’s citation from [0013] of generic “elevated temperature” and the range of 160-190 adequately supports the entirety of the range including any and all temperatures beyond 190oC that would currently be included within the recitation of “above”. The examiner similarly is not persuaded by Applicant’s unsupported argument that “one skilled in the art would understand that there is an inherent upper limit to the heating the acetylation medium” The examiner asserts that the arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965). Further the examiner notes that as presently claimed there is no said “upper limit”.
With respect to Applicant’s arguments direct to the 35 USC 112 (a) rejection of claim 10, the examiner is not persuaded that the citation from [0026] of generic “blowing with a (hot) gas” and the range of 150-190 adequately supports the entirety of the range including any and all temperatures beyond 190oC that would currently be included within the recitation of “above”. The examiner similarly is not persuaded by Applicant’s unsupported argument that “an upper limit is inherent in the claim, established by the pressure and composition of acetylation medium”. The examiner asserts that the arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965). Further the examiner notes that as presently claimed there is no “upper limit”, there is no particular pressure, and there is no particular composition.
With respect to Applicant’s arguments direct to the 35 USC 112 (a) rejection of claim 22, the examiner is not persuaded that the citation from [0016] of generic “elevated pressure” and the range of -0.4 to 0.3 barg adequately supports the entirety of the range including any and all pressures higher than -0.4 barg that would currently be included within the recitation of “higher than”.
Applicant’s arguments that Nelson in view of Pol do not teach the newly added limitations are unconvincing in view of newly-incorporated Rowell, as discussed above.
Rowell and Pol:
Applicant appears to argue (pg 9-14) that as Rowell has taught a sealed chamber for refining / drying step A that Rowell does not teach flowing are presently amended. In response to applicant's arguments against the references individually, one cannot show non-obviousness 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). The rejection is over a combination of references, not Rowell alone. The teaching toward modifying the sealed vessel and medium chemistry with accompanying flow is provided by supporting reference Pol. Pol similarly has taught a closable / sealable chamber like Rowell, but further equipped with gas flow line (see, for example, pg 2-3, figures), the system is still closed / sealed as it is further explicitly taught to be capable of pulling a vacuum therein (see, for example, pg 2-3). The examiner maintains that incorporation of such features from Pol would provide benefits including enhanced removal and recovery of unreacted acetylation fluid and acid products from the wood per the motivation gleaned from Pol. Thus the examiner maintains modification in view of Pol is apt, and would not involve a change in principle as argued by applicant. With respect to Applicant’s addition arguments that an open system of Pol would result in escape of wood material from the refiner, the examiner asserts that the arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965). The physical dimensions and configuration from Pol are not rigidly incorporated but rather open to configurations suitable for primary reference Rowell, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). “A person of ordinary skill is also a person of ordinary creativity, not an automaton.” The [obviousness] analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) see also id.
Applicant additionally argues that the modification would diminish physical contact of the wood with the acetylation fluid and undermine the principle of operation of Rowell. The examiner in not convinced by this argument and maintains that [0007] has explicitly provided an alternative embodiment wherein the acetylation occurs prior to introduction into the refiner, and it not requisite therein. Consider further examples 3 and 4 wherein the liquid from the impregnation vessel is explicitly taught to be mostly drained off, thus similarly not requisite. When considering the combination with Pol, the incorporation of a superheated acetylation medium vapor comprising acetic acid within the refiner would align with the teaching of Rowell wherein the refiner can be inclusive of minor amounts of acetylation medium, thus it would not undermine the operative principle.
With respect to Applicant’s arguments to claim 14 over the combination of Rowell in view of Pol, Cwirko and Van Dijk, the examiner maintains (as above) that Rowell is not solely concerned with acetylation while refining, thus arguments to the contrary are not convincing (refer to previous paragraphs). The Applicant argues that “there is no teaching in Rowell that at the end of the simultaneous refining an acetylation step of Rowell (allegedly providing drying step A of claim 14), the final moisture content is less than 0.5 wt%”. The examiner notes that the rejection has not relied upon such a position. By the applied combination, the max 0.5 wt% threshold is reached at the of drying step B, not step A, thus arguments to the latter are not convincing. As such, the examiner maintains that by incorporation of the less than 0.5% moisture content for the completion of drying step B, the % liquid content during drying A would range from somewhere below the starting condition of at least 55 wt % (derived from prior to drying step A) and less than 0.5 wt% (derived from the end point of drying step B) thus overlapping the claimed liquid content of between 2-8 wt%.
As to the remaining dependent claims they remain rejected as no additional separate arguments are provided.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NATHAN H EMPIE whose telephone number is (571)270-1886. The examiner can normally be reached Monday-Thursday 5:30AM - 4 PM.
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/NATHAN H EMPIE/Primary Examiner, Art Unit 1712