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 .
Response to Amendment
The Amendment filed 06/08/2026 has been entered. Claims 1, 4, and 8-13 remain pending in the application. Claims 2-3, and 6-7 were previously canceled, and Claims 5 and 14 are newly cancelled. Claim 1 was amended and support for the amendments are found in the claims as originally filed. Claim 1 was amended to address the objections outlined in the Non-Final Office Action mailed on 02/09/2026, and are thus, withdrawn. Claim 14 was canceled so the 35 U.S.C. 112(d) rejection outlined in the Non-Final Office Action mailed on 02/09/2026, is no longer applicable and rendered moot.
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, and 8-10 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;
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.
Regarding the weight ratio of dry lignin to crosslinker of Claim 1, Bode teaches said adhesive composition may comprise 1-99 wt. % lignin [Paragraph 0015] and 1-99 wt. % crosslinker [Paragraph 0019], which is equivalent to a weight ratio of lignin to crosslinker is 1-9,900% (
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), which corresponds to a weight ratio between lignin, and a total amount of crosslinker is from 0.1:10 to 10:0.1 (which is equivalent to a weight ratio of 1-10,000%) of Claim 1.
However, Bode does not teach all of the claimed ingredients together in one embodiment.
Regarding all the claimed ingredients together in one embodiment, 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 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, 8-13 rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1, and 3-13 of U.S. Patent No. US 12163064 B2. 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, 4, and 8-13 rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-7, 10, and 12-15 of U.S. Patent No. US 12286565 B2. 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 9-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1, 4, 6-7, and 11-15 of copending Application No. 17/757,258. 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 8-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-5, 7-11, 13-18 of copending Application No. 18/717,644. 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 06/08/2026 have been fully considered but they are not persuasive.
Applicant references in re Rijckaert to explain how Bode makes no disclosure or suggestion of the claimed weight ratio. Firstly, as outlined in the disclosure above, Bode teaches said adhesive composition may comprise 1-99 wt. % lignin [Paragraph 0015] and 1-99 wt. % crosslinker [Paragraph 0019], which is equivalent to a weight ratio of lignin to crosslinker is 1-9,900% (
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), which corresponds to a weight ratio between lignin, and a total amount of crosslinker is from 0.1:10 to 10:0.1 (which is equivalent to a weight ratio of 1-10,000%) of Claim 1. Thus, Applicant’s argument is not persuasive.
Applicant argues that since Claim 5 was not provisionally rejected on the grounds of nonstatutory double patenting, the rejections should be withdrawn. However, the double patenting rejections have been updated to include the weight ratio claimed in the amended Claim 1, and the nonstaturory double patenting rejections are maintained.
Conclusion
THIS ACTION IS MADE FINAL. 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 DORIS LING whose telephone number is (571)270-3961. The examiner can normally be reached Monday-Friday, 8:30am-5:00pm.
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, ARRIE LANEE REUTHER can be reached on (571)270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DORIS LING/Examiner, Art Unit 1764
/ARRIE L REUTHER/Supervisory Primary Examiner, Art Unit 1764
Prosecution Insights