DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on August 20, 2025 has been entered.
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, 10, 11, 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) and King et al. (Journal of Applied Polymer Science, Vol 18, pg. 1117-1130, 1974).
Considering Claims 1, 3, 10,11, 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 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 2: Lemon et al. teaches examples with a non-volatile content of 66% (Example 2).
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).
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 5, 7, 8, 12, 13, 16, 17, 21, 23 and 29 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).
Considering Claims 5, 7, 12, 13, and 29: 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 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 8: Lemon et al. teaches examples with a non-volatile content of 66% (Example 2) and viscosities between 81 and 500 cPs (Example 1 and 2).
Considering Claims 16 and 17: Lemon et al. teaches the composition as comprising aminopropyltriethoxy silane/an adhesion promoter (Example 1).
Considering Claim 21: Lemon et al. teaches a composition comprising the resin and greater than 50 weight percent of a refractory aggregate (4:48-54), where the resin is cured (3:45-57).
Considering Claim 23: Lemon et al. teaches forming a 5 x5 cm test piece/brick (5:30-46).
Claims 25 and 31 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 23 above, and further in view of Passera et al. (Metallurgical and Materials Transactions B Vol. 52B, 2021, pg. 1681-1694).
Considering Claims 25 and 31: Lemon et al. teaches the refractory material of claim 23 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 9 and 26 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).
Considering Claims 9 and 26: 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 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.
Response to Arguments
Applicant's arguments filed August 20, 2025 have been fully considered but they are not persuasive, because:
A) The applicant’s argument that Lemon et al. teaches away from the claimed viscosity is not persuasive. The Office does not disagree with the applicant that the examples of show a lower viscosity for the phenolic resin than claimed. However, the claims recite a viscosity for the entire composition rather than the phenolic resin itself. Lemon et al. is silent towards the viscosity of the phenolic resin 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).
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