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 the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-3, 5-7, 9-10, 14-23, and 25-26 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 1, the claim now requires “20-80% moisture content” (emphasis added). Since the term “moisture” is used in the specification with respect to the substrate (see par. 0033, instant specification) “[i]n one configuration the substrate has a moisture content of less than 10%, less than 8%, or less than 6% by weight,” this limitation, as drafted, would not seem to have support in the instant specification, as filed.
However, this rejection can be (easily) overcome by amending the claim to instead read “20-80% water content” (see par. 0077 of the Instant Specification, as filed, where this would have implied support in the specification; assuming the end points of 20% or 80% weight of solid plastic, the remaining 80%/20% would be water, when water is selected as the carrier, thus implying support for this suggested limitation).
Dependent claims are also subject to this rejection, including each and every limitation of claim 1, from which they depend or ultimately depend.
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 (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 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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) 1-3, 5-7, 9-10, 14-23, and 25-26 are rejected under 35 U.S.C. 103 as being unpatentable over Dubelsten (US Patent No. 6,821,614) et al., hereinafter Dubelsten, in view of Wold (US Patent No. 5,435,954), and further in view of Jaffee (US 2006/0105662).
Regarding claims 1, 5, 17-19, 21, and 25-26, Dubelsten discloses a method of manufacturing a composite panel comprising: (a) introducing a composite mixture (charge 42) (5:28-5:36; 10:48-10:55) into a press (Figs. 3-6) to form a desired product end shape, the composite mixture comprising: (i) a binder that contains particularized plastic (granulated plastic, or flakes) (6:58-7:24; 15:64-16:26) that can be 3/16 inch (16:20), which is around 4.75 mm or 0.5 inches (15 mm) (16:14); (ii) a “plurality of substrate” (6:19-6:55 – the wood particles are what make up “substrate” and would be wood fiber or wood dust/cellulosic material); and (iii) a crosslinking agent (7:36-8:14 – peroxides are listed as in claim 17); (b) subjecting the composite mixture to pressure of 550 psig (~3.75 MPa) and heating the composite to about 100-220 C (reference uses 250 F = 121.11 C) (19:39-19:46; 27:60-27:63; Example 1) and the particularized plastic would be a plastic emulsion or mixture (7:16).
The binder and substrate are in a ratio of 70/30% wood (substrate) to plastic (binder) (17:53-17:56). Example 2 presses at 550 psig and 275 F (28:10-28:15). Either the processing of the faces or the processing of the core can read upon some of these steps as all steps are completed and the term “comprising” does not exclude unrecited further limitations/steps. The product produced would be a “wood-based composite panel” as in claim 26.
Dubelsten does not appear to disclose that the binder is “less than 4 mm” as it is 3/16 in, or around 4.75 mm, but does state that the size of the flakes or particles can be as desired. Dubelsten further explains that the thermoplastic material must be heated as to “activate” or “become more flowable” (10:15-10:23) and to allow for the thermoplastic material to flow over and around the filler materials. Dubelsten further explains (10:26-10:50) that the particle size has an effect upon how long the material takes to melt the solid thermoactive materials, resulting in less coverage thereof, meaning that Dubelsten has demonstrated that these variables are result-effective as would have been understood by one of ordinary skill in the art.
However, furthermore, like Dubelsten, Wold discloses a process of making a composite panel with wood and plastic that are both ground into smaller pieces before processing (as in Wold, 6:54-7:37). Wold describes using plastic of a particle size of 1/8 inch (Wold, 8:58-9:21) or less, which would be less than 4 mm as is required in the claims. Wold further describes that the length of the fiber or flake and the type of plastic are dependent upon the material characteristics desired in the final product (Wold, 3:93:22).
Thus, one of ordinary skill in the art would have recognized that the particle size of either Wold or Dubelsten would have resulted in a suitable product, in that the plastic particles would melt and mix with the wood fibers/particles as to form a composite product or layer thereof, as is also in the claimed invention. As such, one of ordinary skill in the art would have found it obvious to have used the particle size as suggested by Dubelsten or Wold or a modification thereof, in the plastic binder, as to have achieved a rate of coverage of the filler material that is suitable to fully cover the material with thermoplastic material as is required in the claims and to have achieved the desired physical properties of the final product.
Dubelsten does not explicitly disclose that the binder comprises 20-80% water content, as it uses a dry forming method, using residual moisture from the wood only during formation.
However, Jaffee discloses a method of producing a fibrous composite mat that explains that dry forming methods can be used [which one of ordinary skill in the art would have recognized that Dubelsten is describing a dry forming method – air laying], but cost more than the “wet forming” methods described (Jaffee, par. 0011). Jaffee uses an “aqueous binder” that has a solids content of about 20%, which implies that the remainder, or 80%, is water (Jaffee, par. 0014, 0016; the binder mixture is described as an “aqueous mixture” which implies the remainder, or 80% is water).
One of ordinary skill in the art would have found that the dry forming method as shown in Dubelsten and the wet forming method as shown in Jaffee are substitutable alternatives to one another, and would have had a reasonable expectation of success from having used either of these methods of deposition/forming (and corresponding binder compositions).
Accordingly, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to have substituted the aqueous binder/wet forming method of Jaffee for the “dry forming” or air laying of Dubelstein/Wold above as in both cases, a composite material with a mixture of fibers and binder is produced. In doing so, one of ordinary skill in the art would have found it obvious to have specified that the binder is as formulated in Jaffee, including water at about 80% and solids at about 20%, as is required in the claim.
Regarding claim 2, Dubelsten/Wold/Jaffee discloses the subject matter of claim 1, and further discloses the use of a “fine mixture” (wood fines) and a “coarse mixture” (wood flakes) (D, 17:15-17:41). Furthermore, the “wood flakes” of Dubelsten are larger than 3/16 of an inch, or about 4.76 mm, while the “wood fines” are the pieces smaller than this size of 3/16 of an inch. Additionally, as described in Wold, the wood pieces can be 0.015 inches or less (Wold, 7:5-7:6). Also, the claim is written such that the fine/coarse mixtures can have the same size of particles (between 1-2 mm where the range overlaps).
Furthermore, the difference in size here between the particles is such that one of ordinary skill in the art would have expected similar properties from using slightly larger or smaller wood fibers and/or plastic flakes/fines in view of the above discussion from Dubelsten as in claim 1 above, with the goal being to fully cover the filler material with polymer when the polymer melts. Accordingly, in view of the above, one of ordinary skill in the art would have found it obvious before the effective filing date of the claimed invention to have modified the above to have specified that the wood flakes/fines are of a size as is required in the claim.
Regarding claim 3, Dubelsten/Wold/Jaffee discloses the subject matter of claim 1, and further discloses that the crosslinking agent can be present in a percentage of 3% (Wold, 10:3-10:4).
Regarding claims 6-7, Dubelsten/Wold/Jaffee discloses the subject matter of claims 1/5, and further discloses that the binder (thermoactive material) can be polyethylene (Dubelsten, 10:16-10:22; 10:39-10:46) and have a melting point at 250 F (123 C) and a particle size as outlined above, and can also have a melting point of above 250 F (or 123 C) up to higher values, with a particle size as outlined above.
Regarding claim 9, Dubelsten/Wold/Jaffee discloses the subject matter of claim 1, and further discloses that the thermoactive material can be PVC (Dubelsten, 7:12) or PE (7:11) with the particle size as described above in claim 1.
Regarding claim 10, Dubelsten/Wold/Jaffee discloses the subject matter of claim 1, and further discloses that the MOR is about 25 MPa (or ~29 MPa as converted) (Wold, Example A, shows an example with an MOR of 4249 PSI corresponds with the example containing the blend of HD and LDPE), which is about 29.3 MPa and would be considered to be “. . . about 25 MPa”).
Regarding claims 14-15, Dubelsten/Wold/Jaffee discloses the subject matter of claims 1/9, and further discloses that the plastic can be a combination of HDPE and LDPE (Wold, 3:9-3:19) in a blend (see Wold, Example A, Table, columns 17-18).
Regarding claim 16, Dubelsten/Wold/Jaffee discloses the subject matter of claim 1, and further discloses that the binder is a plastic mixture of between 20-80% solids (Dubelsten, 9:22-9:31; Example 1, 27:44-27:52). See also Jaffee, par. 0014, 0016.
Regarding claim 20, Dubelsten/Wold/Jaffee discloses the subject matter of claim 1, and further discloses that the substrate has a moisture content of 9.8% (Dubelsten, Example 1, 27:52).
Regarding claims 22-23, Dubelsten/Wold/Jaffee discloses the subject matter of claims 2/16, and further discloses that the panel would have about 20:80 to 80:20 fine to coarse fiber (Dubelsten, 17:19-17:22) and the fine layer would have more moisture due to having less wood by volume.
Response to Arguments
Applicant’s arguments with respect to all claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Jaffee (US 2006/0105662) is applied to claim 1, as to address the amended portion of the claims.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 ANDREW D GRAHAM whose telephone number is (469)295-9232. The examiner can normally be reached Monday - Friday 7:30AM-4:00PM (CST).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christina Johnson can be reached at (571) 272-1176. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREW D GRAHAM/Primary Examiner, Art Unit 1742