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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 January 05, 2026 has been entered.
Response to Amendment
The Amendment filed December 09, 2025 has been entered. Claims 1, 4-5, and 8-14 remain pending in the application. Claims 2-3 were previously canceled and Claims 6-7 are newly cancelled. Claims 1 and 13 were amended and support for the amendments are found in the claims as originally filed.
Claim Objections
Claim 1 is objected to because of the following informalities:
Claim 1, Line 16 recites “carbon atom” and should be “carbon atoms” (plural).
Claim recites “or” before 4-hdyroxybenzoic acid which is not proper Markush language. It is suggested the “or” be removed. See MPEP 803.02. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 14 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 14 claims “wherein the aqueous lignin solution further comprises an additive.” However, Claim 1, which Claim 14 is dependent upon, also comprises an additive. Thus, Claim 14 is not further limiting Claim 1 and improperly dependent. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claims 1, 4-5, 8-10 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Bode et al., (US 2018/0355119; cited in the IDS submitted on 06/13/2022; hereafter as “Bode”).
Bode teaches a method of preparing an adhesive composition [Claims 1, 8; Paragraph 0014], corresponding to the method for preparing a bonding resin of Claim 1, and bonding resin of Claim 10. Bode also teaches said resin comprises:
A lignin [Claims 1, 8; Paragraph 0014], corresponding to the lignin of Claim 1;
A crosslinker including epoxy crosslinkers (claim 4), including sorbitol epoxy [Paragraph 0019], thereby reading on the polyglycidyl ether of a carbohydrate of Claim 1;
Basic lignin mixtures that may include water [Paragraph 0016], corresponding to the aqueous lignin solution is alkali of Claim 4;
Urea formaldehyde [Paragraph 0019], thereby reading on the urea of Claim 1, and corresponding to an additive of Claim 14;
Wherein said lignin is an unmodified lignin [Claims 2 and 14; Paragraph 0019], corresponding to wherein the lignin is not chemically modified of Claim 9.
However, Bode does not teach all of the claimed ingredients together in one embodiment.
Nevertheless, Bode teaches an aqueous lignin solution, crosslinker, and urea formaldehyde with sufficient specificity that one of ordinary skill in the art would arrive at the claimed combination. Moreover, one of ordinary skill in the art at the time of the claimed invention would have found it “obvious to try” (list the components) as the teaching represents a finite number of identified, predictable combinations. KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398 (2007).
Regarding Claim 5, Bode does not specifically teach a weight ratio of dry lignin: crosslinker is 0.1:10 to 10:0.1.
However, Bode teaches said adhesive composition may comprise 1-99 wt. % lignin [Paragraph 0015] and 1-99 wt. % crosslinker [Paragraph 0019].
It would be obvious to one of ordinary skill that these taught amounts result in a weight ratio range of 1:99 to 99:1, which overlaps the claimed range. By choosing the overlapping portion of the range taught in the prior art and the range claimed by the applicants, it has been held to be a prima facie case of obviousness. See MPEP section 2144.05(I). It would have also been obvious to one having ordinary skill in the art to tune the lignin and crosslinker amounts through routine experimentation.
Regarding Claim 8, Bode further teaches the polymeric epoxy crosslinker of said lignin composition may be prepared in a solvent with initiators and monomers, including hydroxyl alkyl acrylates and amino acrylates [Paragraph 0020].
However, Bode does not specifically teach said lignin modified by glyoxylation, etherification, esterification, or any other method where hydroxyl, amine, or thiol content is increased of Claim 8.
Nevertheless, it would be obvious to one of ordinary skill in the art that mixing lignins with crosslinkers, initiators and monomers with hydroxyl and amino groups as disclosed by Bode [0020] would expectedly result in an increase in ether and amino groups, respectively, thereby reading on the increase of ether and amine content of the lignins.
Claims 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over Bode et al., (US 2018/0355119; cited in the IDS submitted on 06/13/2022; hereafter as “Bode”) in view of Gaul et al., (US 4,486,557; cited in the IDS submitted on 06/13/2022; hereafter as “Gaul”).
Bode teaches a method of preparing an adhesive composition, lignin and crosslinkers of Claim 1 as set forth above and incorporated herein by reference.
Bode further teaches said composition has excellent adhesion when cured [Paragraph 0019], and after application on a substrate, the composition can be cured thermally [Paragraph 0025], corresponding to curing the bonding resin when exposed to heat to form an adhesive of Claim 12.
However, Bode is silent regarding manufacturing a laminate, mineral wool insulation, or wood product of Claims 11 and 13, and curing a bonding resin when exposed to pressure of Claim 12.
Nevertheless, Gaul teaches an adhesive binder composition [Claim 1]. Gaul further teaches a method for the preparation of lignocellulosic composite articles, wherein the article is a wood particle board [Claims 22 and 25], thereby reading on manufacturing a wood product of Claims 11 and 13, and reading on providing bonding resin to a wood product of Claim 12. Gaul also teaches curing at temperatures between 140° C to 220° C and at pressures from 100 to 600 psi [Claim 22], corresponding to curing a bonding resin when exposed to heat and pressure of Claim 12. Gaul also teaches their composition has reduced isocyanate levels when producing a cured pressed composite lignocellulosic product that has superior composite board properties [Column 1, Line 67 – Column 2, Line 3].
Bode and Gaul are considered to be analogous art as the claimed invention, as all are in the same field of methods of preparing adhesives comprising lignins, and crosslinkers.
Therefore, it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the product of Gaul with the method of Bode, 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.
Claims 1, 4-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1 and 5-8 of copending Application No. 17/622,368 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the method of preparing a bonding resin comprising a basic aqueous lignin solution with an ether solvent and crosslinker, anticipate the instant claimed bonding resin comprising a basic aqueous lignin solution with an ether solvent and crosslinker. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1 and 4 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1, 7 of copending Application No. 17/ 757,258 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the method of preparing a bonding resin comprising a basic aqueous lignin solution with an ether solvent and crosslinker, anticipate the instant claimed bonding resin comprising a basic aqueous lignin solution with an ether solvent and crosslinker. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, and 8-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1, 9-11, 13, and 16-18 of copending Application No. 18/717644 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the method of preparing a bonding resin comprising a basic aqueous lignin solution with an ether solvent and crosslinker, anticipate the instant claimed bonding resin comprising a basic aqueous lignin solution with an ether solvent and crosslinker. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed December 09 2025 have been fully considered but they are not persuasive.
Applicant argues (1) Bode fails to disclose the claimed solvents and (2) that there is nothing in Bode that would suggest using a different solvent from claim 1. In response, attention is drawn to the language as set forth in the amended claim 1, wherein claim 1 recites “wherein the aqueous lignin solution further comprises an additive, and wherein the additive is selected from the group consisting of urea, tannin, surfactant, dispersing agent, filler, coupling agent, a solvent, and combinations thereof.” As such, the solvent is an optional ingredient, as it is one member of the Markush group. The rejection as set forth above reads on the additive that is urea. The particular solvents recited in the claim 1 are limiting an optional ingredient. Thus, the prior art is not required to teach said optional solvent.
Furthermore, Bode teaches solvents, albeit different solvents from the claimed solvents. For example, Bode teaches “common solvents” [Paragraph 0021], any “solvent capable of dissolving the lignin to form a solution” [Claim 13], and that the disclosed solvent embodiments are non-limiting [Paragraph 0025]. Thus, it would be obvious to one of ordinary skill to look to solvents that are well known in the field that can dissolve lignins which include the claimed solvents [Dastpak et al., Solubility study of lignin in industrial organic solvents and investigation of electrochemical properties of spray-coated solutions, Industrial Crops & Products 148 (2020) 112310]. Thus, applicant’s arguments are not persuasive.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DORIS LING whose telephone number is (571)270-3961. The examiner can normally be reached Monday-Friday, 8:30am-5:00pm.
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/DORIS LING/Examiner, Art Unit 1764
/ARRIE L REUTHER/Supervisory Primary Examiner, Art Unit 1764