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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 3/09/2026 has been entered.
Response to Amendment
This office action is in response to the Amendment filed on 3/09/2026. Claims 2-3, 5 and 8-10 were canceled. Claims 1, 4, 6-7 and 11-15 are currently pending.
The rejection of the claims under 35 USC 103 over of Li et al. ‘418 A1 in view of Li et al. ( Green Chemistry) and the rejection of the claims under 35 USC 103 over of Li et al. ‘418 A1 in view of Sugawara set forth in the Office Action dated April 30, 2025 are WITHDRAWN due to Applicant’s responsive amendments.
Claim Analysis
Summary of Claim 1:
A method for preparing a bonding resin, the method comprising:
mixing an aqueous solution comprising lignin generated in a Kraft process and
ammonia or an organic base, or a combination thereof 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. ( Green Chemistry, 2018, 20, 1459-1466) in view of Li et al. (US PG Pub 2004/0089418 A1).
Regarding claim 1, Li et al. (Green Chemistry) teach a formaldehyde- free adhesive formulation comprising kraft lignin and glycerol-derived crosslinker epoxide. Li et al. further teach 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, thereby reading on the aqueous solution of lignin and crosslinker (p.1459: left. col., p. 1463: right col, p.1464: col.1: first and second paragraph). Additionally, Li et al. teach 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 et al. teach 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 et al. teach 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 et al. are silent on the ammonia or organic base.
In the same field of endeavor (adhesive composition for plywood applications), Li et al. disclose an aqueous solution of kraft lignin that contains ammonium hydroxide or an amine or pyridine [0017]. Li et al. offer the motivation of using ammonium hydroxide or an amine or pyridine to increase the pH, which improves the reactivity of the lignin with the epoxy-based crosslinker [0017], thereby arriving at the claimed invention.
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.
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 et al.’418 disclose 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 et al.’418 further teach 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 et al. because Li et al.’418 teaches these amounts are viable in an adhesive for plywood applications.
Response to Arguments
Applicant’s arguments, see p.5-6, filed 03/09/2026, with respect to the 103 rejections over Li et al’418 as a primary reference have been fully considered and are persuasive. Therefore, the rejections have been withdrawn. However, upon further consideration, a new ground of rejection is made in view of Li et al. (Green Chemistry) in view of Li et al.’418.
Regarding the rejection of the claims under 103 over Li et al. (Green Chemistry) in view of Li et al. ‘418) that claim 5 was not rejected and amended claim 1 includes features that are neither disclosed or suggested by the cited art alone or in combination. In response, attention is drawn to the rejection as set forth above, wherein Li et al. (Green Chemistry) teaches the claimed amount of lignin as required by the instant claim. It is noted that the submission of a RCE allows to make a new ground of rejection considering that Applicant has combined two different limitations that were never combined previously.
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, it is noted that amended claim 1 of the RCE is not just claim 5 and 9 as previously presented, and a new double patenting rejection is appropriated.
Conclusion
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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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