DETAILED ACTION
This office action is in response to the Amendment filed on 6/25/2026. Claims 1, 4, 6-7, and 11-15 are pending in the application.
The rejections of the claims under 35 USC 103 set forth in the Office Action dated 03/20/2026 are WITHDRAWN due to Applicant’s amendments.
The obviousness-type double patenting rejection of claim 1 over claim 3 of U.S. Patent No. 12163064 B2 in view of Li et al. 418 set forth in the Office Action dated 03/20/2026 is MAINTAINED for the reasons set forth below.
This action is final.
Claim Analysis
Summary of Claim 1:
A method for preparing a bonding resin, the method comprising:
mixing lignin generated in a Kraft process with ammonia or an organic base, or a combination thereof to form an aqueous solution; and,
then mixing the aqueous solution with one or more crosslinkers selected from a group consisting of:
glycerol diglycidyl ether, polyglycerol diglycidyl ether, polyglycerol polyglycidyl ether, glycerol triglycidyl ether, sorbitol polyglycidyl ether, alkoxylated glycerol polyglycidyl ether, trimethylolpropane triglycidyl ether, trimethylolpropane diglycidyl ether… resorcinol diglycidyl ether, isosorbide diglycidyl ether, pentaerythritol tetraglycidyl ether, ethylene glycol diglycidyl ether.
wherein the lignin is not chemically modified before being used in the method, and,
wherein the aqueous solution comprises at least 5% by weight of lignin.
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 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.
Claims 1,6-7 and 11-15 are rejected under 35 U.S.C. 103 as obvious over of Li et al. hereafter Li Green Chemistry ( Green Chemistry, 2018, 20, 1459-1466) in view of Li et al. hereafter Li’418 (US PG Pub 2004/0089418 A1) as evidenced by Green Agrochem (Solvents in which Lignin is soluble, October 31, 2013).
Regarding claim 1, Li Green Chemistry teaches a method for preparing a formaldehyde- free adhesive formulation comprising mixing kraft lignin and glycerol-derived crosslinker epoxide (p.1461,section 3.1, 2nd paragraph). Li Green Chemistry further teaches that different lignin and crosslinkers feedstock can be used in the formulation with water as a cosolvent to produce a resin with similar properties and mechanical strength (p.1459: left. col., p. 1463: right col, p.1464: col.1: first and second paragraph). Additionally, Li Green Chemistry teaches resin compositions consists of 50 wt.% of lignin and 50 wt.% of GDE and the addition of equal parts of water to the formulation (1:1:1 lignin, GDE: water) (Fig.3, p.1463: right col., Fig.5), thereby reading on the aqueous solution comprising at least 5wt.% of lignin.
Li Green Chemistry teaches kraft lignin precipitated from black liquor of linearboard grade pulp (p.1460, right column: 2nd paragraph; p. 1463: 1st paragraph left and right column), thereby reading on the lignin that has not been chemically modified. Furthermore, Li Green Chemistry teaches epoxides as preferred crosslinkers to react with the OH groups in lignin (p.1464, col. 1, 3rd paragraph), wherein glycerol diglycidyl ether (GDE) and ethylene glycol diglycidyl ether (EDGE) are provided as examples of these epoxide-based crosslinkers (abstract, fig. 1b, fig. 3b, fig. 6, p.1464: column 1, p. 1463: col.2).
Li Green Chemistry is silent on how to prepare the aqueous lignin component as recited in the instant claim.
In the same field of endeavor (adhesive composition for plywood applications), Li ‘418 teaches lignin is prepared for use in adhesive compositions in aqueous solution, wherein the aqueous adhesive solution is prepared by initially mixing lignin in water and adjusting the pH by addition of ammonium hydroxide or an amine or pyridine; followed by the mixture with the crosslinking agent (adhesion promoter). Li ‘418. further teaches the pH of the lignin aqueous solution should be sufficiently alkaline so that the resulting lignin/crosslinking agent mixture is non-acidic or, more particularly, alkaline [0017], thereby reading on the first step of preparing an aqueous solution of lignin as recited in the instant claim.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to prepare an adhesive formulation (bonding resin) combining the teachings of Li Green Works and Li’418 because Li Green Works recognizes that lignin solubility in an aqueous solution would affect the adhesion strength of the resin (p.1463, right column) and it is also noted that kraft lignin dissolves in alkaline conditions due to the protonation of phenolic hydroxyl groups, which increases polarity, as evidenced by Green Agrochem, Numeral 1, therefore increasing the reactivity with epoxy crosslinkers. Accordingly, it would have been reasonable to one of ordinary skill in the art before the effective filing date of the claimed invention to prepare the lignin aqueous component of Li Green works according to the alkaline aqueous lining preparation taught by Li’418 to improve the reactivity of the lignin with the epoxy-based crosslinker [0017 of Li’418], thereby arriving to the claimed invention. "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." MPEP 2143A.
Regarding claim 6, Li et al. teach a ratio of 1:1 of the dry lignin to crosslinker (Fig.3, p.1463: right col., Fig.5), as required by the instant claim.
Regarding claims 7 and 15, Li et al are silent on the additives.
However, Li et al. ’418 in the same field of endeavor (adhesive composition for plywood applications) teach the binder resin composition comprises additives and fillers such as bactericides, insecticides, silica, wheat flour, tree bark flour, nut shell flour and the like [0027]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the additives of Li et al.’418 as Li et al.’418 demonstrates these additives are commonly used in lignocellulosic adhesives [0027].
Regarding claim 11, Li et al. teach a method for making an adhesive composition, (title, abstract) (see rejection of claim 1), thereby reading on the bonding resin.
Regarding claim 12, Li et al. teach the adhesive composition is used to make furniture items and construction materials including plywood products (abstract, p.1460: left col.; p.1461: section 3.2), thereby reading on the wood products, as required by the instant claim.
Regarding claims 13 and 14, Li et al. teach a method comprising assembling plywood samples with veneer sheets pre-dried to 2-4 % moisture content prior to application of the adhesive, while keeping a temperature of 150°C for 15 min at a pressing pressure of 0.70 MPa., thereby reading on the laminate wood product of claim 14 prepared according to the method of claim 13.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Li et al. ( Green Chemistry, 2018, 20, 1459-1466) in view of Li et al. ‘418 as set forth above for claim 1 and further in view of Billington et al. (US 2015 -0329753 A1, as listed on the IDS dated 12/03/2024).
Regarding claim 4, Li et al. in view of Li et al. ’418 teach the method according to claim 1 as set forth above and incorporated herein by reference.
Li et al.in view of Li et al. ‘418 are silent on the claimed polyglycerol polyglycidyl ether.
In the same field of endeavor, Billington et al. disclose a method to produce an adhesive formulation to be used in plywood applications (title) comprising mixing kraft lignin ([0035], [0037][0039][0040]) and a crosslinker (abstract) in liquid state [0013], where in the crosslinker comprises glycerol diglycidyl ether (GDE), poly(ethylene glycol)diglycidyl ether, ….., polyglycerol polyglycidyl ether, propylene glycol diglycidyl ether, glycerol triglycidyl ether, and so forth [0044], wherein GDE is a functional equivalent to the polyglycerol polyglycidyl ether. Case law has held that substituting known equivalents for the same purpose is prima facie obvious. (MPEP 2144.08.I.). Therefore, it would have been obvious to one of ordinary skill in the art to use the polyglycerol polyglycidyl ether as the crosslinker instead of GDE or EGDE in the method of Li et al. in view of Li et al.’418, thereby arriving at the claimed invention.
Claims 1 and 6-7 and 11-15 are rejected under 35 U.S.C. 103 as obvious over Li et al., hereinafter Li’418 (US PG Pub 2004/0089418 A1) in view of Li et al. hereinafter Li Green Chemistry ( Green Chemistry, 2018, 20, 1459-1466).
Regarding claim 1, Li ’418 teaches a method for making an adhesive composition (bonding resin) used to produce plywood or laminated veneer lumber [0031](claim 1), wherein the method comprises mixing an aqueous solution of kraft lignin [0011],[0016], [0040]) that contains ammonium hydroxide or an amine or pyridine to modify the pH of the mixture ([0013], [0017]); along with a crosslinker agent (adhesion promoter, first variant) including adducts of epoxides with polyamine resin, polyamidoamines resins or polyamide resin [0019]. Li’418 further teaches the lignin solids content in the aqueous solution is from about 10 to about 60 weight percent ([0017], [0026]). It is noted that the first variant of Li’418 does not include chemically modified kraft lignin.
Li’418 is silent on the claimed epoxides crosslinkers as recited by the instant claim.
Li Green Works teaches a formaldehyde- free adhesive formulation comprising kraft lignin and glycerol-derived crosslinker epoxide. Li Green Works further teaches that different lignin and crosslinkers feedstock can be used in the formulation with water as a cosolvent to produce a resin with similar properties and mechanical strength (p.1459: col.1, p. 1463: right col, p.1464: col.1: first and second paragraph). Furthermore, Li Green Works teaches epoxides as preferred crosslinkers to react with the OH groups in lignin (p.1464, col. 1, 3rd paragraph), wherein glycerol diglycidyl ether (GDE) and ethylene glycol diglycidyl ether (EDGE) are provided as examples of these epoxide-based crosslinkers (abstract, fig. 1b, fig. 3b, fig. 6, p.1464: column 1, p. 1463: col.2). Li Green Works offers the motivation of using the specific GDE or EDGE as the epoxide crosslinker due to its ability to form non-hydrolyzable ether bonds between lignin and the epoxide crosslinker, which prevent the degradation of the bonding resin (p.1460, column 2) . In light of these benefits, it would have been obvious to one of ordinary skill in the art to use GDE or EDGE on the method of Li’418, thereby arriving at the claimed invention.
Regarding claim 6, Li ’418 teach the mass ratio of lignin to crosslinker ranges from 1:1 to about 1000:1 and in a particular embodiment the mix ratio is about 1:1 to about 5:1, based on dry weight [0026], as required by the instant claim.
Regarding claims 7 and 15, Li ’418 teaches the binder resin composition comprises additives and fillers such as bactericides, insecticides, silica, wheat flour, tree bark flour, nut shell flour and the like [0027], as required by the instant claim.
Regarding claim 11, Li et al.’418 teaches a method for making an adhesive composition, (claim 8) (see rejection of claim 1), thereby reading on the bonding resin.
Regarding claim 12, Li ’418 teaches that the adhesive composition is used to produce plywood (wood product) or laminated veneer lumber [00031], as required by the instant claim.
Regarding claims 13 and 14, Li ’418 teaches a method of preparing a laminated veneer lumber comprising: applying the adhesive composition onto the surfaces of the veneers, then a plurality of veneers is assembled to form sheets of required thickness. These sheets are then subjected to a heated press, where they are compressed to achieve consolidation and curing of the materials, resulting in the formation of a board [0031], as required by the instant claims.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Li ‘418 (US PG Pub 2004/0089418 A1) in view of Li Green Works( Green Chemistry, 2018, 20, 1459-1466) as set forth above for claims 1 and further in view of Billington et al. (US 2015 -0329753 A1, as listed on the IDS dated 12/03/2024).
Regarding claim 4, Li’418 in view of Li Green Works teach the method according to claim 1 as set forth above and incorporated herein by reference.
Li ‘418 in view of Li Green Works are silent on the claimed polyglycerol polyglycidyl ether.
In the same field of endeavor, Billington et al. disclose a method to produce an adhesive formulation to be used in plywood applications (title) comprising mixing kraft lignin ([0035], [0037][0039][0040]) and a crosslinker (abstract) in liquid state [0013], where in the crosslinker comprises glycerol diglycidyl ether (GDE), poly(ethylene glycol)diglycidyl ether, ….., polyglycerol polyglycidyl ether, propylene glycol diglycidyl ether, glycerol triglycidyl ether, and so forth [0044], wherein GDE is a functional equivalent to the polyglycerol polyglycidyl ether. Case law has held that substituting known equivalents for the same purpose is prima facie obvious. (MPEP 2144.08.I.). Therefore, it would have been obvious to one of ordinary skill in the art to use the polyglycerol polyglycidyl ether as the crosslinker instead of GDE or EGDE in the method of Li ’418 in view of Li Green Works, thereby arriving at the claimed invention.
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.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of U.S. Patent No. 12163064 B2 (Application 17/059,590) in view of Li et al. (US PG Pub 2004/0089418 A1) .
Although the claims at issue are not identical, they are not patentably distinct from each other because both claim sets teach a method for preparing a bonding resin, the method comprising: mixing an aqueous lignin solution with one of more of the same ethers of the instant claim 1, wherein the aqueous lignin solution is an alkali solution and the lignin has not been chemically modified. It is noted that the US Patent ‘064 teaches the lining is isolated from black liquor, which is a subproduct of a Kraft process, thereby the lignin of claim 1 of US. Patent ‘064 is considered a Kraft Lignin.
The difference between the present claims and the US Patent ‘064 is the claimed ammonia or an organic base and the content of lignin in the aqueous solution.
However, Li’418 discloses a method for making an adhesive composition (bonding resin) (claim 8), comprising an aqueous solution of kraft lignin that contains ammonium hydroxide or an amine or pyridine to modify the pH of the mixture [0017]. Li’418 further teaches the lignin solids content in the aqueous solution of form about 10 to about 60 weight % ([0017],[0026]). Thus, it would have been obvious prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the ammonia or the organic base to obtain the alkali solution and to have used the content of lignin in the aqueous solution of Li’418. because Li ’418 teaches these amounts are viable in an adhesive for plywood applications.
Response to Arguments
Applicant’s arguments, see p.5-7, filed 06/25/2026, with respect to the 103 rejections have been fully considered and are persuasive. Therefore, the rejections have been withdrawn. However, upon further consideration, a new ground of rejection is made over Li Green Chemistry in view of Li ’418.
Regarding the obviousness-type double patenting rejection of claim 1 over claim 3 of U.S. Patent No. 12163064 B2 in view of Li et al. 418, Applicant states that “ claim 3 of U.S. Patent No. 12,163.064 does not include the features absent from Li”. In response, Examiner states that the obviousness-type double patenting rejection does not rely on Li Green works, it relies on Li’418 that discloses mixing kraft lignin with an organic base to form an aqueous solution and then mixing with the adhesion promoter [0017].
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 OLGA L. DONAHUE whose telephone number is (571)270-1152. The examiner can normally be reached M-F 8:00-5:00.
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/OLGA LUCIA DONAHUE/Examiner, Art Unit 1763
/JOSEPH S DEL SOLE/Supervisory Patent Examiner, Art Unit 1763
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