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The previous objection of Claim 33 for in formalities is/are withdrawn in light of the Applicant’s amendments.
The previous rejection of Claims 26, 27, 37-42, under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite is/are withdrawn in light of the Applicant’s amendments.
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 43 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 43 recites, “wherein the material includes the aminophenolic compound and either ethanol or an ethanol and water mixture.” However, claim 22 recites “a material consisting of an aminophenolic compound…” Claim 43 broadens the transitional phrase of claim 22 from being an exclusive/closed group to an inclusive/open-ended group and thus, fails to further limit. (See MPEP 2111.03).
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 22-42 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 6,608,162 B1 to Chiu et al. (hereinafter Chiu’162), and in further view of US 4,433,120 A to Chiu (hereinafter Chiu’120), and further in view of JP 04-198251 A to Tsunaga et al. (hereinafter Tsunaga).
Regarding claims 22-42, Chiu’162 teaches preparing a liquid phenol-formaldehyde resole resin by reacting phenol with formaldehyde in two stages at 90 deg C to reflux (i.e. distillation) and 65-70 deg C in a medium of water and sodium hydroxide, with a final molar ratio of phenol:formaldehyde is preferable 1:(1.8-2.2) (col 3, ln 40-67 and See Example 1, col 7 ln 1-67). The above reaction continued allowed until the free formaldehyde is constant (col 4, ln 1-2), wherein the free formaldehyde is analyzed and determined (col 4, ln 3-6, and See Example 1, col 7 ln 1-67). Chiu’162 further teaches rapidly cooling the reaction mixture to 50 deg C (See Example 1, col 7 ln 1-67), and the residual formaldehyde is reduced and removed by a formaldehyde scavenger agent used in an amount of 0.061 parts per 100 parts of liquid resin, and examples of formaldehyde scavenger agents include ammonia or amines. (col 4, ln 5-39, and See Example 1, col 7 ln 1-67). Chiu’162 further teaches the amount of scavenger is determined by stoichiometric calculation. (col 4, ln 31-32). Specifically, in Example 1, the overall reaction contains 1 mol of phenol, 2.18 mols of formaldehyde, and 0.197 mols of NaOH, (See col 7), which correlates to 16 molar% of basic medium with respect to phenol, and a 2.18 (formaldehyde/phenol) ratio. Chiu’162 further teaches the phenol-formaldehyde resin is mixed with a curing accelerator (col 4, ln 50-64) sprayed and applied to wood strands, hot pressed at 410 deg C and cured. (See Examples), which meets the hardening method and fillers of claims 39-42. Chiu’162 further teaches the phenol-formaldehyde is spray dried (col 8, ln 43-51), which meets the claimed vacuum concentration step of claim 36.
Chiu’162 also teaches that a liquid phenol-formaldehyde resin made in US 4,433,120 A to Chiu (hereinafter Chiu’120), can also be used and is incorporated by reference. (col 4, ln 9-10).
Chiu’120 teaches phenol-formaldehyde composition is manufactured to have 20-80% phenol-formaldehyde resin and 80-20% non-resinous phenol-formaldehyde condensates (col 3, ln 20-25, and col 6, ln 9-14), which meets the claimed phenol conversion rate. Chiu’120 also teaches the liquid phenol-formaldehyde resin composition is obtained by reflux (i.e. distillation) reacting phenol and formaldehyde in water, sodium hydroxide and ammonium hydroxide (i.e. ammonia in water), with an overall formaldehyde/phenol ratio of 2.75/2.02=1.36, overall NaOH:phenol ratio of 0.67:2.02, (See Example 1), and further reacted until a desired residual formaldehyde content is 0-4% is reached and cooled, which can be further reduced with a formaldehyde scavenger (col 5, ln 15-52), which meets the claimed condensing molar excess formaldehyde, the NH3 base of claim 24 and the mole ratio of claim 27.
It would have been obvious to one ordinarily skilled in the art before the effective date of the claimed invention to also use the manufacturing method of the liquid phenol-formaldehyde composition of Chiu’120 for the phenol-formaldehyde composition of Chiu’162 because Chiu’162 teaches that a liquid phenol-formaldehyde resin made in US 4,433,120 A to Chiu (hereinafter Chiu’120), can also be used and is incorporated by reference. (col 4, ln 9-10).
Chiu’162 does not explicitly teach the aminophenolic compound.
However, Tsunaga teaches eliminating formaldehyde in a formaldehyde-based thermosetting resin (See abstract) by adding a substance that chemically reacts with formaldehyde such as an ammonia or primary amine (line 63-68). Specifically, in Example 2, 20 parts of phenolic resin with 2% residual formaldehyde is mixed/kneaded with 5 parts of o-aminophenol (i.e. 2-aminophenol) and a solvent at a temperature range of 0-100 deg C (line 99), and until the residual formaldehyde is not detected, (See Table 1, Examples, line 98-109),
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. The above correlates to 0.4 parts (0.013 mols) of formaldehyde to 5 parts (0.05 mols) of 2-aminophenol, which is 1:3.8 mol ratio of formaldehyde:aminophenol, which meets the claimed excess amount of aminophenolic compounds. Tsunaga further teaches that adding the additive 2-aminophenol will remove all the residual formaldehyde by reacting with it. (line 57-101 and 115-118).
It would have been obvious to one ordinarily skilled in the art before the effective date of the claimed invention to use the amount of 2-aminophenol additive of Tsunaga as the formaldehyde scavenger agent of Chiu’162 because Tsunaga teaches the field of reducing formaldehyde in a phenolic resin which is the same field of invention of the Applicant’s, and Tsunaga further teaches that the additive 2-aminophenol will react with the residual formaldehyde and remove it from the phenolic resin. (line 57-101 and 115-118).
Allowable Subject Matter
Claim 43 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
It is noted that the allowable subject matter is only in reference to the process claims. Claims 38-40 are product-by -process claims and would still be read upon by the above rejection.
The following is a statement of reasons for the indication of allowable subject matter: As cited above, the claims are rejected over Chiu’162 and in further view of Chiu’120 and further in view of Tsunaga.
The above does not teach the material consisting of the aminophenol compound and either ethanol or an ethanol and water mixture.
Response to Arguments
Applicant's arguments filed 09/22/2025 have been fully considered but they are not persuasive. On page 6-7, the Applicant argues that the material is consisting of only the aminophenolic compound and optionally ethanol or ethanol/water, while Tsunaga teaches using both o-aminophenol and a metal powder in the resin composition. The Applicant further argues that Tsunaga does not teach using the o-aminophenol alone to treat the resin for residual formaldehyde. This is not persuasive because in the above rejection, only the aminophenol of Tsunaga is used as the formaldehyde scavenger agent to be combined in the Chiu’162 reference. The metal powder of Tsunaga is not used to react with and lower the formaldehyde because Tsunaga teaches that the metal powder is in the composition to specifically give the composition its electrical conductivity. (See page 2, ln 101-104). As cited above, Tsunaga teaches that the substance that is used to directly react with the residual formaldehyde in order to remove it is specifically o-aminophenol.
Thus, it would have been obvious to one ordinarily skilled in the art before the effective date of the claimed invention to only use the amount of 2-aminophenol additive of Tsunaga as the formaldehyde scavenger agent of Chiu’162 because Tsunaga teaches the field of reducing formaldehyde in a phenolic resin which is the same field of invention of the Applicant’s, and Tsunaga further teaches that the additive 2-aminophenol will react with the residual formaldehyde and remove it from the phenolic resin. (line 57-101 and 115-118).
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 HA S NGUYEN whose telephone number is (571)270-7395. The examiner can normally be reached Mon-Fri, Flex schedule 7:30am-3:45pm.
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/HA S NGUYEN/Primary Examiner, Art Unit 1766