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 § 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, 4, 14, 15, 18, 20, 22, 24, and 32-40 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.
Considering Claim 1: Claim 1 recites a range of the ratio of the alkaline hydroxide to phenol of 0.01 to 0.1. There is not support for this claim in the original specification as filed. The applicant points to the examples for support for this limitation. While the examples appear to have alkaline hydroxide contents within the claimed range, they do not encompass the entirety of the claimed range, and there is no broader discussion that would lead a person of ordinary skill in the art to understand the invention as encompassing the claimed end points for the range, and the points between.
Considering Claim 32: Claim 32 recites a range of the ratio of the alkaline hydroxide to phenol of 0.01 to 0.1. There is not support for this claim in the original specification as filed. The applicant points to the examples for support for this limitation. While the examples appear to have alkaline hydroxide contents within the claimed range, they do not encompass the entirety of the claimed range, and there is no broader discussion that would lead a person of ordinary skill in the art to understand the invention as encompassing the claimed end points for the range, and the points between.
Considering Claim 33: Claim 33 recites a range of the ratio of the alkaline hydroxide to phenol of 0.01 to 0.1. There is not support for this claim in the original specification as filed. The applicant points to the examples for support for this limitation. While the examples appear to have alkaline hydroxide contents within the claimed range, they do not encompass the entirety of the claimed range, and there is no broader discussion that would lead a person of ordinary skill in the art to understand the invention as encompassing the claimed end points for the range, and the points between.
Considering Claim 37: Claim 1 recites a range of the ratio of the alkaline hydroxide to phenol of 0.01 to 0.1. There is not support for this claim in the original specification as filed. The applicant points to the examples for support for this limitation. While the examples appear to have alkaline hydroxide contents within the claimed range, they do not encompass the entirety of the claimed range, and there is no broader discussion that would lead a person of ordinary skill in the art to understand the invention as encompassing the claimed end points for the range, and the points between.
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 1, 4, 14, 15, 18, 20, 22, 27, and 28 are rejected under 35 U.S.C. 103 as being unpatentable over Lemon et al. (US Pat. 4,468,359) in view of Funabiki et al. (US Pat. 4,058,403), Benk et al. (Fuel Processing Technology, 8-9, 2008, 38-46) and King et al. (Journal of Applied Polymer Science, Vol 18, pg. 1117-1130, 1974).
Considering Claims 1, 27, and 28: Lemon et al. teaches a liquid phenolic resin composition for refractory materials (2:16-34) comprising a phenol formaldehyde resin prepared with a formaldehyde to phenol ratio of 1.2: to 2.6:1 and a silane in an amount of 0.05 to 3 weight percent (2:16-34). The original specification identifies silanes as being vapor suppressants (4:12-25). Lemon et al. teaches the solids content as being 50 to 75 weight percent (2:51-62).
Lemon et al. does not teach the claimed molar ratio between alkaline hydroxide and phenol. However, Benk et al. teaches a referactory phenol formaldehyde resin having an alkaline hydroxide to phenol ratio of 0.1 (Fig. 2). Lemon et al. and Benk et al. are analogous art as they are concerned with the same field of endeavor, namely refractory phenolic resins. It would have been obvious to a person of ordinary skill in the art to have used the molar ratio of Benk et al. in the resin of Lemon et al., and the motivation to do so would have been, as Benk et al. suggests, to control the tensile strength of the resin (Fig. 2).
Lemon et al. does not teach the vapor suppressant as being from the claimed list. However, Funabiki et al. teaches a refractory binder made by adding kraft lignin to a phenolic resin in an amount of 5 to 300 parts per 100 parts of phenol (1:46-54). Funabiki et al. teaches adding the lignin after formation of the phenolic resin (4:32-47). Lemon et al. and Funabiki et al. are analogous art as they are concerned with the same field of endeavor, namely refractory binders. It would have been obvious to a person of ordinary skill in the art to have added the lignin of Funabiki et al. to the phenolic resin of Lemon et al., and the motivation to do so would have been, as Funabiki et al. suggests, to increase the carbonization rate and strength after carbonization (1:30-40).
Lemon et al. is silent towards the viscosity of the entire composition. Funabiki et al. teaches an example having a viscosity of 5500 cPs (5:1-10). It would have been obvious to a person of ordinary skill in the art to have prepared a mixture having the viscosity of Funabiki et al., and the motivation to do so would have been to allow for the mixture to obtain the proper working properties for use as an adhesive (7:55-8:9).
Lemon et al. teaches that high levels of unreacted formaldehyde are undesirable and teaches controlling the ratio of formaldehyde and phenol to reduce free formaldehyde (3:20-26). King et al. teaches controlling the ratio of formaldehyde and phenol to produce a resin with a free formaldehyde content of 0.2% (Table II). Lemon et al. and King et al. are analogous art as they are concerned with the same field of endeavor, namely phenol formaldehyde resins. It would have been obvious to a person of ordinary skill in the art to have limited the formaldehyde of the resin of Lemon et al., as King et al., and the motivation to do so would have been, formaldehyde is a toxic chemical when inhaled.
Lemon et al. is silent towards the pH of the resin. However, King et al. teaches resins resole resins with a pH of 7.5-8.4 (Table II). It would have been obvious to a person of ordinary skill in the art to have prepared a resin with a pH of King et al. in the composition of Lemon et al., and the motivation to do so would have been, as King et al. suggests, it is a suitable pH to catalyze the phenol formaldehyde formation for a resole resin.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients, in the claimed amounts, and teaches the composition as being made by a substantially similar process. The original specification teaches that the vaporization percentage of phenol results from using a phenol formaldehyde resin with a molar ratio of greater than 1.2, and/or the inclusion of a vapor suppressant, which are features present in Lemon et al. Therefore, the claimed effects and physical properties, i.e. the vaporization percentage of phenol would necessarily arise from a composition with all the claimed ingredients. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Considering Claim 4: Lemon et al. teaches the resin as having a weight average molecular weight of 600 to 1500 (2:16-34).
Considering Claims 14 and 15: Lemon et al. teaches the composition as comprising aminopropyltriethoxy silane/an adhesion promoter (Example 1).
Considering Claims 18 and 20: Lemon et al. teaches a composition comprising the resin and greater than 50 weight percent of a refractory aggregate (4:48-54).
Lemon et al. teaches a cured product, but does not teach the claimed curing conditions. However, the instant claims are product by process claims. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted). See MPEP § 2113.
Considering Claim 22: Lemon et al. teaches forming a 5 x5 cm test piece/brick (5:30-46).
Claim 24 and 30 are rejected under 35 U.S.C. 103 as being unpatentable over Lemon et al. (US Pat. 4,468,359) in view of Funabiki et al. (US Pat. 4,058,403) and King et al. (Journal of Applied Polymer Science, Vol 18, pg. 1117-1130, 1974) as applied to claim 22 above, and further in view of Passera et al. (Metallurgical and Materials Transactions B Vol. 52B, 2021, pg. 1681-1694).
Considering Claim 24 and 30: Lemon et al. teaches the refractory material of claim 22 as shown above.
Lemon et al. does not teach forming a ladle from the refractory bricks. However, Passera et al. teaches using phenolic resin refractory bricks to form a ladle, by stacking the bricks and carbonizing the resin (pg. 1683). Lemon et al. and Passera et al. are analogous art as they are concerned with the same field of endeavor, namely refractory materials. It would have been obvious to a person of ordinary skill in the art to have formed a ladle using the phenolic resin of Lemon et al., as in Passera et al., and the motivation to do so would have been, as Passera et al. suggests, it is a conventional use for refractory phenolic resins.
Claims 37-40 are rejected under 35 U.S.C. 103 as being unpatentable over Lemon et al. (US Pat. 4,468,359) in view of Funabiki et al. (US Pat. 4,058,403), Benk et al. (Fuel Processing Technology, 8-9, 2008, 38-46) and King et al. (Journal of Applied Polymer Science, Vol 18, pg. 1117-1130, 1974).
Considering Claim 37: Lemon et al. teaches a liquid phenolic resin composition for refractory materials (2:16-34) comprising a phenol formaldehyde resin prepared with a formaldehyde to phenol ratio of 1.2: to 2.6:1 and a silane in an amount of 0.05 to 3 weight percent (2:16-34). The original specification identifies silanes as being vapor suppressants (4:12-25). Lemon et al. teaches the solids content as being 50 to 75 weight percent (2:51-62).
Lemon et al. does not teach the claimed molar ratio between alkaline hydroxide and phenol. However, Benk et al. teaches a referactory phenol formaldehyde resin having an alkaline hydroxide to phenol ratio of 0.1 (Fig. 2). Lemon et al. and Benk et al. are analogous art as they are concerned with the same field of endeavor, namely refractory phenolic resins. It would have been obvious to a person of ordinary skill in the art to have used the molar ratio of Benk et al. in the resin of Lemon et al., and the motivation to do so would have been, as Benk et al. suggests, to control the tensile strength of the resin (Fig. 2).
Lemon et al. does not teach the vapor suppressant as being from the claimed list. However, Funabiki et al. teaches a refractory binder made by adding kraft lignin to a phenolic resin in an amount of 5 to 300 parts per 100 parts of phenol (1:46-54). Funabiki et al. teaches adding the lignin after formation of the phenolic resin (4:32-47). Lemon et al. and Funabiki et al. are analogous art as they are concerned with the same field of endeavor, namely refractory binders. It would have been obvious to a person of ordinary skill in the art to have added the lignin of Funabiki et al. to the phenolic resin of Lemon et al., and the motivation to do so would have been, as Funabiki et al. suggests, to increase the carbonization rate and strength after carbonization (1:30-40).
Lemon et al. is silent towards the viscosity of the entire composition. Funabiki et al. teaches an example having a viscosity of 5500 cPs (5:1-10). It would have been obvious to a person of ordinary skill in the art to have prepared a mixture having the viscosity of Funabiki et al., and the motivation to do so would have been to allow for the mixture to obtain the proper working properties for use as an adhesive (7:55-8:9).
Lemon et al. teaches that high levels of unreacted formaldehyde are undesirable and teaches controlling the ratio of formaldehyde and phenol to reduce free formaldehyde (3:20-26). King et al. teaches controlling the ratio of formaldehyde and phenol to produce a resin with a free formaldehyde content of 0.2% (Table II). Lemon et al. and King et al. are analogous art as they are concerned with the same field of endeavor, namely phenol formaldehyde resins. It would have been obvious to a person of ordinary skill in the art to have limited the formaldehyde of the resin of Lemon et al., as King et al., and the motivation to do so would have been, formaldehyde is a toxic chemical when inhaled.
Lemon et al. is silent towards the pH of the resin. However, King et al. teaches resins resole resins with a pH of 7.5-8.4 (Table II). It would have been obvious to a person of ordinary skill in the art to have prepared a resin with a pH of King et al. in the composition of Lemon et al., and the motivation to do so would have been, as King et al. suggests, it is a suitable pH to catalyze the phenol formaldehyde formation for a resole resin.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients, in the claimed amounts, and teaches the composition as being made by a substantially similar process. The original specification teaches that the vaporization percentage of phenol results from using a phenol formaldehyde resin with a molar ratio of greater than 1.2, and/or the inclusion of a vapor suppressant, which are features present in Lemon et al. Therefore, the claimed effects and physical properties, i.e. the vaporization percentage of phenol would necessarily arise from a composition with all the claimed ingredients. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Considering Claims 38 and 39: Lemon et al. teaches a composition comprising the resin and greater than 50 weight percent of a refractory aggregate (4:48-54).
Lemon et al. teaches a cured product, but does not teach the claimed curing conditions. However, the instant claims are product by process claims. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted). See MPEP § 2113.
Considering Claim 40: Lemon et al. teaches forming a 5 x5 cm test piece/brick (5:30-46).
Response to Arguments
Applicant's arguments filed April 2, 2026 have been fully considered but they are not persuasive, because:
A) The applicant’s argument that Funabiki does not teach a liquid phenolic resin is not persuasive. Funabiki teaches the use of liquid resole resins (3:1-6; 5:1-10).
B) The applicant’s argument that the example of Funabiki uses a large amount of lignin is not persuasive. While the example of Funabiki uses a large amount of the lignin, the broader recitation of the reference overlaps with the claimed range. 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.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/LIAM J HEINCER/Primary Examiner, Art Unit 1767
Prosecution Insights