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 .
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-5, 8, 10, and 12 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the limitation "the Kraft process" in line 5. There is insufficient antecedent basis for this limitation in the claim. Accordingly, dependent claims 2-5, 8, 10, and 12 are indefinite.
Claim Rejections - 35 USC § 102
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 (i.e., changing from AIA to pre-AIA ) 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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-4, 8 and 10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Billington et al. (US 2015/0329753).
Regarding claims 1-4 and 8: Billington et al. (US ‘753) discloses a method of preparing an adhesive formulation containing lignin and a crosslinker [abstract], wherein Billington et al. (US ‘753) discloses glycerol diglycidyl ether (GDE [0052]) and polyglycerol polyglycidyl ether as crosslinkers [0044]. Billington et al. (US ‘753) discloses Example 1 [Ex. 1; 0051-0056] prepares a resin by mixing 58 wt% lignin, 32 wt% polyglycerol polyglycidyl ether {note polyglycerol polyglycidyl ether exchanged for GDE as the crosslinker [0044]; see MPEP 2131.02}, and 12 wt% gamma-valerolactone (GVL [0045; 0052] {organic solvent; ester} [corresponding to 1.8:1 lignin:polyglycerol polyglycidyl ether] [Ex. 1; 0051-0056]. Billington et al. (US ‘753) discloses lignin is not pre-functionalized [abstract; 0005; 0039; 0052].
While Billington et al. (US ‘753) does not disclose the adhesive is for coating a metal substrate, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim [see MPEP 2111.02].
While Billington et al. (US ‘753) does not disclose the lignin has been generated in the Kraft process, “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) [See MPEP 2113].
Regarding claim 10: Billington et al. (US ‘753) discloses the prepared resin was used for coating birch veneer [Ex. 1; 0051-0056].
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.
Claim(s) 5 and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Billington et al. (US 2015/0329753) as applied to claim 1 above.
Regarding claims 5 and 12: Billington et al. (US ‘753) discloses the basic claimed method [as set forth above with respect to claim 1]; wherein Billington et al. (US ‘753) discloses the adhesive composition can contain walnut shell powder (additive/filler) [0049].
Billington et al. (US ‘753) does not specifically disclose the adhesive composition of Ex. 1 containing walnut shell powder. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included walnut shell powder based on the invention of Billington et al. (US ‘753), and would have been motivated to do so since Billington et al. (US ‘753) discloses the adhesive composition can contain walnut shell powder to produce plastic like panels [0049]. Additionally, “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) [see MPEP 2144.06].
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, 4-5, 8, 10 and 12 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 12,163,064. Although the claims at issue are not identical, they are not patentably distinct from each other because the method of preparing a bonding resin of comprising mixing lignin and an ether (ex. polyglycerol polyglycidyl ether [claims 1-2]) substantially overlap in scope with the instant claimed method. While U.S. Patent No. 12,163,064 does not include a solvent in claim 1, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included a solvent, as U.S. Patent No. 12,163,064 claims the resin mixture can contain a solvent [claims 10-11].
While U.S. Patent No. 12,163,064 does not claim the adhesive is for coating a metal substrate, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim [see MPEP 2111.02].
Claims 1, 4-5, 8 and 12 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 12,286,565. Although the claims at issue are not identical, they are not patentably distinct from each other because the method of preparing a bonding resin of comprising mixing lignin and an ether (ex. polyglycerol polyglycidyl ether [claims 1-3]) substantially overlap in scope with the instant claimed method. While U.S. Patent No. 12,286,565 does not include a solvent in claim 1, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included a solvent, as U.S. Patent No. 12,286,565 claims the resin mixture can contain a solvent [claims 4 and 6-7].
While U.S. Patent No. 12,286,565 does not claim the adhesive is for coating a metal substrate, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim [see MPEP 2111.02].
While U.S. Patent No. 12,286,565 does not claim the lignin has been generated in the Kraft process, “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) [See MPEP 2113].
Response to Arguments
Applicant's arguments filed 9/16/25 have been fully considered but they are not persuasive. The rejection of claims based upon Billington et al. (US 2015/0329753) is maintained.
Billington et al. (US ‘753) was relied on for disclosing a method of preparing an adhesive formulation containing lignin and a crosslinker [abstract], wherein Billington et al. (US ‘753) discloses glycerol diglycidyl ether (GDE [0052]) and polyglycerol polyglycidyl ether as crosslinkers [0044]. Billington et al. (US ‘753) discloses Example 1 [Ex. 1; 0051-0056] prepares a resin by mixing 58 wt% lignin, 32 wt% polyglycerol polyglycidyl ether {note polyglycerol polyglycidyl ether exchanged for GDE as the crosslinker [0044]; see MPEP 2131.02}, and 12 wt% gamma-valerolactone (GVL [0045; 0052] {organic solvent; ester} [corresponding to 1.8:1 lignin:polyglycerol polyglycidyl ether] [Ex. 1; 0051-0056]. Billington et al. (US ‘753) discloses lignin is not pre-functionalized [abstract; 0005; 0039; 0052].
Gamma-valerolactone (GVL [0045; 0052]) corresponds to the claimed organic solvent {ester solvent}. While Billington et al. (US ‘753) discloses gamma-valerolactone as a dispersant, gamma-valerolactone is a known solvent for lignin (see, for example, Hegg et al. (WO 2018/195000): γ-valerolactone (GVL) as a solvent for providing a homogenous medium including lignin [0042; 0052]).
As Billington et al. (US ‘753) discloses Example 1 [Ex. 1; 0051-0056] prepares a resin by mixing 58 wt% lignin, 32 wt% polyglycerol polyglycidyl ether and 12 wt% gamma-valerolactone (solvent) {see above}, the instant claimed method of mixing a solution of lignin in an organic solvent with polyglycerol polyglycidyl ether to provide a resin is anticipated.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., first preparing a solution of lignin in organic solvent, followed by addition of crosslinker) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
In response to applicant's argument that the process does not require the use of a radical crosslinker, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
While Billington et al. (US ‘753) does not disclose the lignin has been generated in the Kraft process, “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) [See MPEP 2113].
The nonstatutory double patenting rejections over U.S. Patent No. 12,163,064 and U.S. Patent No. 12,286,565 are maintained {see above}.
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL F PEPITONE whose telephone number is (571)270-3299. The examiner can normally be reached on 7:00 AM - 3:30 PM.
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/MICHAEL F PEPITONE/Primary Examiner, Art Unit 1767