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 .
The amendment filed 4/15/2025 has been entered. Claims 1-38, 45, and 47-48 have been canceled. Claims 39-44, 46, and 49-57 are pending in the application. Claims 53-56 have been withdrawn from consideration as being directed to nonelected inventions. 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 Objections
Claims 39 and 42 are objected to because of the following informalities: claims 39 and 42 include various capitalized limitations wherein the capitalization is either inconsistent and/or unnecessary given that capitalization is usually reserved for proper names only (e.g. in claim 39, “Douglas fir” on line 4 and “Douglas Fir” on line 12; “poplar” on line 4 and “Poplar” on line 12; “Beech” on line 12 and “beech” on line 15, etc.). It is also noted that claim 39 recites both “rubber wood” (two words, neither of which are capitalized) and “Rubberwood” (one capitalized word) although such wood is typically referred to as “rubberwood” – one word, not capitalized. Claim 42 similarly recites various capitalized limitations wherein the capitalization is either inconsistent and/or unnecessary (e.g. claim 39 recites, “alkaline copper quaternary (ACQ) modification and copper azole treatment” on lines 16-17, while claim 42 recites, “Copper Quaternary, Alkaline copper quaternary (ACQ)” on line 5 and “Micronized Copper Azole (MCA)” on line 7. Appropriate correction is required.
Claim Rejections - 35 USC § 112
Claim 46 is 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 46 still recites the limitation “substantially” on line 5 wherein as noted in the prior office action, the term “substantially” is a relative term that renders the claim indefinite (see Paragraph 9a of the prior office action).
Claim 50 is 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 50 has been amended to recite, “a preservative selected from the group consisting of LOSP, a solvent and water borne azole and/or an insecticide from the group consisting of synthetic pyrethroids, neonicotinoids and boron” (emphasis added) on lines 3-5, and although alternative expressions are permissible in the claims, they should be drafted in proper alternative format such that there is no uncertainty or ambiguity with respect to the question of scope or clarity of the claims. In the above limitation, it is unclear as to which alternative preservatives are encompassed by the first Markush group, e.g. option 1: a) LOSP, b) a solvent, and c) water borne azole wherein the “and/or” limitation is separate from the preservative; or option 2: a) LOSP, b) a solvent borne azole, and c) a water borne azole wherein again the “and/or” limitation is separate from the preservative; or option 3: a) LOSP, b) a solvent, c) water borne azole, and d) an insecticide which is selected from the second Markush group; or option 4: a) LOSP, b) a solvent borne azole, c) water borne azole, and d) an insecticide which is selected from the second Markush group; etc. Hence, one having ordinary skill in the art would not be reasonably apprised of the scope of the claimed invention and could not interpret the metes and bounds of the claim so as to understand how to avoid infringement.
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 51 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 51 recites specific combinations of thermally modified substrate timber and veneer timber, however, given that claim 39, from which claim 51 depends, recites that the thermally modified substrate timber is “selected from the group consisting of Pinus species (pine), Douglas fir, poplar, and rubber wood” while the veneer timber is selected from those as recited in step b), claim 51 appears to extend the claimed substrate/veneer combination beyond those required by claim 39 (see particularly the second option/bullet point). 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
Claims 39-44, 46, 49-52 and 57 are rejected under 35 U.S.C. 103 as being unpatentable over Izumi (JP2004250919A, please refer to the machine translation sent with the prior office action dated 12/16/2024 for the below cited sections) in view Gudsell (US2016/0325460A1).
As discussed in the prior office action, Izumi teaches an exterior finishing material having durability against the outdoor environment while retaining the beauty of natural wood grain, wherein the exterior finishing material comprises a decorative veneer 10 glued to an outside face of a base material 20 that is formed of a wooden material impregnated with a synthetic resin that improves dimensional stability and is cured by heat treatment (thus “a thermally modified substrate timber”), while the decorative veneer is formed from thinly cut wood such as of western red cedar or teak (“veneer of timber selected from the group consisting of western red cedar,…teak…and thermally modified ash”), with a thickness of 1.0 mm or more such that it will not weather for a considerable period of time (“suitable for use in outdoor applications”) and is preferable from a cost standpoint (Entire document, particularly Paragraphs 0005-0017, 0020-0023, and 0032). Izumi also teaches that the exterior finishing material of a first embodiment is produced by first selecting a species of wood for the base material 20 from the wood species recited in Paragraph 0011 such as pine (as in instant claim 39); producing the substrate 20 by impregnating the selected cut wood with phenolic resin, drying the base material 20 at a temperature at which the phenolic resin does not cure in order to volatize water contained in the base material 20 forming voids which are filled with the phenolic resin, and curing the phenolic resin by heat treatment to provide improved dimensional stability to the substrate wood so that it is excellent for use as an exterior material for outdoors (broadly reading upon the claimed “thermally modified” limitation of instant claim 39; Paragraphs 0012-0013); selecting a decorative veneer having a thickness from 1.0 mm to 3.0 mm (as in instant claim 50) that may be formed from one of the tree species recited in Paragraph 0014 such as western red cedar (as in instant claim 39), with teak (as in instant claim 39), walnut, kokutan (i.e. ebony wood), and rosewood being preferred, and dried to a moisture content of 10% or less to prevent cracks from occurring on the outer surface due to irradiation of sunlight; and then bonding the decorative veneer 10 to one or more outer surfaces (faces) of the substrate 20 utilizing an adhesive A and curing by hot pressing to produce the exterior wood material (Paragraphs 0010-0019).
Hence, with respect to amended claims 39 and 50, Izumi teaches a method of manufacturing a timber product comprising “a) selecting a thermally modified substrate timber” such as a pine base material 20 impregnated with phenolic resin and cured by heat treatment to improve the dimensional stability of the wood base material reading upon the claimed “thermally modified substrate timber”; “b) selecting a veneer of timber” such as western red cedar or teak having a thickness as recited in instant claim 50; and “c) gluing the veneer of timber to a face of the thermally modified substrate timber”, wherein the resulting timber product is suitable for use in outdoor applications at a lower cost than that of the same thickness timber product if made of timber of step b) alone, such that the only difference between the teachings of Izumi and the claimed invention as recited in instant claims 39 and 50 is that Izumi does not specifically teach that the thermally-cured resin-impregnated wood base material 20 is thermally modified at a temperature of between about 210°C to 260°C for a duration of 1 to 6 hours as instantly claimed. However, Gudsell teaches a method of thermally treating wood or timber to be utilized in exterior/outdoor applications as in Izumi, to provide enhanced weathering properties, enhanced dimensional stability (as in Izumi) as well as enhanced aesthetic characteristics (Abstract, Paragraphs 0002, 0008-0010, and 0107), wherein thermal modification is preferably carried out prior to lamination of the wood board to avoid potential issues with glue failure which can occur when glues are heated during thermal modification (Paragraph 0126), wherein in a particular embodiment, thermal modification is carried out at a temperature between 180°C and 240°C for a period between 1 and 6 hours (Paragraph 0041, overlapping the claimed temperature range of about 210°C to 260°C and reading upon the claimed duration of 1 to 6 hours of instant claim 39, and fully encompassing the claimed “temperature of about 230°C” of instant claim 43), while in some embodiments, the method comprises thermally treating moisture reduced wood at a temperature of about 205-245°C for about 1.5 to 6.0 hours to generate thermally treated wood (reading upon the claimed thermal modification temperature and duration), wherein the timber or the moisture reduced wood is a species of wood selected from the group consisting of: radiata pine, southern yellow pine, scots pine, ash, maple, beech, birch, aspen or rubber wood (Paragraphs 0022 and 0047, e.g. as in Izumi). Gudsell specifically teaches that the thermal modification is conducted on wood that is to be laminated to other wood via a glue to form a laminated board as in Izumi and/or on wood that is to undergo one or more further treatments to increase surface hardness, dimensional stability and/or durability such as furfuryl modification and resin impregnation as in Izumi (Gudsell: Entire document, particularly Abstract, Paragraphs 0002-0010, 0020, 0038, and 0057). Gudsell also teaches that “[t]imber modification processes are processes that result in modification of the structure of the wood and result in increased resistance to degradation by fungi, insects, bacteria and/or algae” with “[s]uitable timber modification processes” including: thermal modification, resin impregnation (as in Izumi), oil impregnation, acetylation, and furfurylation (Paragraphs 0120-0126), wherein Gudsell found that thermal modification of timber provides a more consistent color across the surface of laminated timber having a variety of different layers of wood, with thermal modification at a temperature of 200-240°C imparting durability and stability that provides a suitable product for exterior applications in addition to a medium dark brown color while thermal modification at a temperature of 180-200°C provides increased stability but only gives a lighter brown color (Paragraphs 0127-0128). Hence, given that Gudsell and Izumi are both directed to laminated wood products with a particular interest in providing improved dimensional stability and durability for outdoor use as well as improved aesthetic properties, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Gudsell with respect to thermal modification, particularly the treatment temperature and time as taught by Gudsell, with the teachings of Izumi to arrive at the claimed invention given that it is prima facie obviousness to use a known technique to improve similar devices in the same way. Hence, the claimed invention as recited in instant claims 39, 43, and 50 would have been obvious over the teachings of Izumi in view of Gudsell.
With respect to instant claim 40, although Izumi teaches that the base material 20 is a veneer cut from wood (Paragraph 0011), Izumi does not specifically teach that the base material 20 as the claimed substrate timber is flat sawn (plain sawn) or rotary peeled timber, however, given that flat sawing and rotary peeling are obvious methods for cutting veneer from a timber in the art, wherein Gudsell specifically teaches that the thermally modified timber may be flat sawn as instantly claimed (Examples), the claimed invention as recited in instant claim 40 would have been obvious over the teachings of Izumi in view of Gudsell for the same reasons as discussed above with respect to instant claim 39.
With respect to instant claims 41-42, given that all or any thermal modification is either with or without preservative treatment, the claimed invention as recited in instant claim 41 would have been obvious over the teachings of Izumi in view of Gudsell. It is also noted that with respect to instant claim 42, given that claim 41, from which claim 42 depends, recites “with or without preservative treatment” and that claim 42 does not positively recite that the thermally modified substrate timber is thermally modified with preservative treatment, the claimed invention as recited in instant claim 42 would have been obvious over the teachings of Izumi in view of Gudsell when no preservative treatment is utilized. Further, Izumi teaches that design changes can be made without departing from the gist of the invention such as in a second embodiment, the base material 30 as the claimed substrate timber may be formed by stacking a plurality of veneers 31, 32, and 33 formed from the same tree species as base material 20 as noted above, wherein in addition to impregnating the veneers 31, 32, and 33 with synthetic resin, veneer 32 may be impregnated with a preservative having an antiseptic effect with example preservatives including chromium/copper/arsenic compound preservatives, phenol/inorganic fluoride preservatives, alkylammonium compound preservatives, chromium/copper/zinc compound preservatives, aliphatic metal salt-based preservatives, and the like (Paragraphs 0020-0026), reading upon the claimed preservative treatment of instant claim 41 and preservatives of instant claim 42; while Gudsell teaches that where timber may be subject to termite attack, a chemical preservative may also be used in the treatment process (Paragraph 0131) and/or that the timber may be colored with a chemical preservative such as those recited in Paragraph 0148 like CCA, ACQ, and copper azole (Paragraphs 0147-0148) as instantly claimed. Hence, the claimed invention as recited in instant claims 41-42 would have been obvious over the teachings of Izumi in view of Gudsell without or with preservative treatment for the same reasons as discussed above with respect to instant claim 39.
With respect to instant claim 44, as noted above, Izumi teaches that in a second embodiment, the base material 30 as the claimed substrate timber is formed by stacking a plurality of veneers 31, 32, and 33 (Paragraphs 0020-0023) reading upon the claimed timber configuration as recited in instant claim 44 for the same reasons as discussed above with respect to instant claim 39.
With respect to instant claim 46, although Izumi teaches that the exterior finishing material has durability against the outdoor environment while retaining the beauty of natural wood grain as discussed above, Izumi does not specifically teach that the veneer comprises “vertical grain timber or is laminated with vertical grain orientation so that the veneer has the appearance of a vertical grain on the face of timber but is made from flat grain timber” as instantly claimed. However, given that vertical grain is an obvious grain orientation in the art and that as evidenced by Gudsell, it “is known in the art that boards with a vertical grain orientation are more resistant to warping, splitting and surface checking and are thus more stable when used” (Paragraph 0008), it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to utilize a veneer comprising vertical grain orientation in the invention taught by Izumi, and hence instant claim 46 would have been obvious over Izumi in view of Gudsell for the same reasons as discussed above with respect to instant claim 39.
With respect to instant claims 49 and 51, although Izumi teaches that the wood of the base material 20 may be a domestic species including ash (sen), birch (“hippo”), and conifers such as radiata pine (Pinus radiata) as in instant claims 49 and 51 (Paragraph 0011); and that the tree species of the decorative veneer is not particularly limited but may also be formed from domestic woods such as oak, ash, birch, cedar (as in instant claim 51), and teak; and can be subjected to drying to reduce the moisture content thereof (Paragraph 0014); Izumi does not specifically teach that the veneer is also formed from radiata pine as in instant claim 49, nor that the exterior finishing material comprises a specific combination of decorative veneer and base material 20 as the claimed substrate as recited in instant claim 51. However, given that it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to utilize any of the wood species taught by Izumi for either the decorative veneer and/or the base material, including radiata pine of any suitable grade, with Gudsell also teaching the use of radiata pine and more particularly, thermally modifying the radiata pine to enhance the durability thereof as discussed in detail above (Paragraphs 0003-0007, 0022, 0047,0107, 0110, and 0164; and Examples), the claimed invention as recited in instant claims 49 and 51 would have been obvious over the teachings of Izumi in view of Gudsell for the same reasons as discussed above with respect to instant claim 39, and given that it is prima facie obviousness to combine prior art elements according to known methods to yield predictable results.
With respect to instant claim 52, Izumi teaches that the base material or substrate wood (20) of the first embodiment is of a solid construction while the base material or substrate wood (30) of the second embodiment as described in Paragraphs 0022-0025 is of a laminated construction (as in instant claim 52) of a plurality of impregnated veneers 31, 32, and 33 as noted above, with the decorative veneer 10 similarly laminated to an outer surface thereof utilizing adhesive A, particularly a phenolic adhesive, resorcinol adhesive, polyurethane adhesive, or isocyanate resin adhesive (as in instant claim 52), and hence, the claimed invention as recited in instant claim 52 would have been obvious over the teachings of Izumi in view of Gudsell for the same reasons as discussed above with respect to instant claim 39.
With respect to instant claim 57, Izumi teaches that in one embodiment, veneers 31, 32, and 33 can be laminated and bonded utilizing an adhesive and then impregnated with a phenolic resin (Paragraph 0027), while Gudsell teaches that the thermally treated wood or timber that can be laminated to form a laminated board may also undergo one or more further treatments to increase surface hardness, dimensional stability and/or durability, such as acetylation, furfuryl modification and resin impregnation as well as coloring utilizing a chemical preservative wherein a process of coloring the wood by use of a chemical colorant incorporated into a preservative treatment may be carried out either before or after lamination of individual boards (Paragraphs 0057, 0121-0125, and 0139-0150). Gudsell also teaches that where the wood is colored by thermal modification, a subsequent preservation step may be carried out either before or after lamination of individual boards (Paragraph 0150). Hence, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to include a further treatment or modification step after lamination or gluing of the timber product including the wood veneer and thermally modified substrate as taught Izumi in view of Gudsell, such as a subsequent preservative treatment as in Gudsell, thereby rendering the claimed invention as recited in instant claim 57 obvious over the teachings of Izumi in view of Gudsell for the same reasons as discussed above with respect to instant claim 39.
Claims 39-44, 46, 49-52 and 57 are rejected under 35 U.S.C. 103 as being unpatentable over Tebb (US2018/0223542A1) in view of Gudsell (US2016/0325460A1).
As discussed in the prior office action, Tebb teaches a method of manufacturing a strong, aesthetically pleasing outdoor wood decking board 10 that is specifically adapted for use as an outdoor wood decking board as discussed previously, particularly to address the need for an effective way to reduce splintering of low grade wood cores by increasing outdoor deck floor smoothness and aesthetics while still maintaining low costs and durability of the outdoor wood decking board for outdoor use (Paragraph 0010), comprising the steps of selecting a wood core (“substrate timber”) of a first wood species preselected from any one of a common grade or general purpose grade of North American Softwood species such as Douglas Fir and pine/Pinus species (Paragraph 0106, reading upon “substrate timber selected from the group consisting of Pinus species (pine)” of instant claim 39); selecting a facing wood veneer of a second wood species selected from any one of a superior grade of North American wood species including a clear vertical grain western red cedar species and clear grain of the North American Softwood species, or from an exotic hardwood species (i.e. “a veneer of timber selected from the group consisting of western red cedar” as in instant claim 39); and permanently gluing the veneer as a solid rigid wood finishing layer to a face of the wood core (“substrate timber”) via a pressure sensitive liquid adhesive under heat and pressure, wherein the resulting “outdoor wood decking boards 10 can be used to provide an aesthetically pleasing outdoor deck floor 100 to simulate an outdoor deck floor 100 constructed from outdoor wood decking boards 10 of superior quality grade wood species at a low cost and, more particularly, at an increased conservation of the superior grade wood species” (Paragraph 0096), providing environmental compliant and economical replacements for use of integral or one piece outdoor wood decking boards of superior grade wood species in conventional construction of outdoor deck floors that are of similar dimensions and strength and/or durability for outdoor use (reading upon the claimed “resulting timber product is suitable for use in outdoor applications at a lower cost than that of the same thickness timber product if made of timber of step b) alone” limitation of instant claim 39; Entire document, particularly Abstract, Paragraphs 0010-0011, 0096, 0100, 0153, and 0161; Claim 79). Tebb teaches that in an embodiment, the facing wood veneered face-to-face wood core (90), e.g. after lamination of the veneer (50) of clear vertical grain western red cedar to the laminated wood core of first and second wood core, “is treated with one or more aqueous compositions comprising one or more agents, an agent of the one or more agents selected from the group consisting of biocides, wood strength enhancers, fungicides, bactericides, insecticides water repellants, UV blockers, fire retardants, and wood hardeners” (Paragraphs 0210-0224, Figs. 11A-11G). Tebb also teaches that in an exemplary embodiment, the wood core is dried to a moisture content suitable for receiving the adhesive, thus reading upon and/or suggesting the broadly claimed “thermally modified substrate timber”; and given that Tebb also teaches that in one embodiment, two cores can be adhered together via liquid adhesive under heat and pressure prior to applying the facing veneer to the laminated core such that the laminated core also broadly reads upon the claimed “thermally modified substrate timber” of instant claim 39, the only difference between the teachings of Tebb and the claimed invention as recited in instant claim 39 is that Tebb does not specifically teach that the core(s) as the claimed substrate timber is/are subjected to thermal modification at a temperature of between about 210°C to 260°C for a duration of 1 to 6 hours as instantly claimed (Entire document, particularly Paragraphs 0230, 0329, 0364, and 0401; Claims 79, 97, and 107).
However, Gudsell teaches a method of thermally treating wood or timber to be utilized in exterior/outdoor applications, e.g. as in Tebb, to provide enhanced weathering properties, enhanced dimensional stability as well as enhanced aesthetic characteristics, e.g. as in Tebb (Abstract, Paragraphs 0002, 0008-0010, and 0107), wherein thermal modification is preferably carried out prior to lamination of the wood board to avoid potential issues with glue failure which can occur when glues are heated during thermal modification (Paragraph 0126), wherein in a particular embodiment, thermal modification is carried out at a temperature between 180°C and 240°C for a period between 1 and 6 hours (Paragraph 0041, overlapping the claimed temperature range of about 210°C to 260°C and reading upon the claimed duration of 1 to 6 hours of instant claim 39, and fully encompassing the claimed “temperature of about 230°C” of instant claim 43), while in some embodiments, the method comprises thermally treating moisture reduced wood (e.g. as in Tebb) at a temperature of about 205-245°C for about 1.5 to 6.0 hours to generate thermally treated wood (reading upon the claimed thermal modification temperature and duration), wherein the timber or the moisture reduced wood is a species of wood selected from the group consisting of: radiata pine, southern yellow pine, scots pine, ash, maple, beech, birch, aspen or rubber wood (Paragraphs 0022 and 0047, e.g. as in Tebb). Gudsell specifically teaches that the thermal modification is conducted on wood that is to be laminated to other wood via a glue to form a laminated board as in Tebb and/or on wood that is to undergo one or more further treatments to increase surface hardness, dimensional stability and/or durability such as furfuryl modification and resin impregnation (Gudsell: Entire document, particularly Abstract, Paragraphs 0002-0010, 0020, 0038, and 0057). Gudsell also teaches that “[t]imber modification processes are processes that result in modification of the structure of the wood and result in increased resistance to degradation by fungi, insects, bacteria and/or algae” with “[s]uitable timber modification processes” including: thermal modification, resin impregnation, oil impregnation, acetylation, and fufurylation (Paragraphs 0120-0126), wherein Gudsell found that thermal modification of timber provides a more consistent color across the surface of laminated timber having a variety of different layers of wood, with thermal modification at a temperature of 200-240°C imparting durability and stability that provides a suitable product for exterior applications in addition to a medium dark brown color while thermal modification at a temperature of 180-200°C provides increased stability but only gives a lighter brown color (Paragraphs 0127-0128). Hence, given that Gudsell and Tebb are both directed to laminated wood products with a particular interest in providing improved dimensional stability and durability for outdoor use as well as improved aesthetic properties, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Gudsell with respect to thermal modification, particularly the treatment temperature and time as taught by Gudsell, with the teachings of Tebb to arrive at the claimed invention given that it is prima facie obviousness to use a known technique to improve similar devices in the same way. Hence, the claimed invention as recited in instant claims 39 and 43 would have been obvious over the teachings of Tebb in view of Gudsell.
With respect to instant claim 40, Tebb teaches that the facing wood veneer is of superior grade than the core (Paragraph 0011), and although Tebb teaches that the facing may be a quarter sawn vertical grain wood species (Paragraph 0134, Claim 16), Tebb does not teach that the core or substrate timber is a flat sawn or rotary peeled timber as instantly claimed. However, given that flat sawing is an obvious cutting method for producing low/regular grade wood timber and that Tebb teaches an embodiment wherein core assemblies are cut from a block through one or more frontal planes via a cutting machine (Paragraph 0406), the claimed invention as recited in instant claim 40 would have been obvious over the teachings of Tebb in view of Gudsell for the same reasons as discussed above with respect to instant claim 39.
With respect to instant claims 41-42, given that all or any thermal modification is either with or without preservative treatment, the claimed invention as recited in instant claim 41 would have been obvious over the teachings of Tebb in view of Gudsell. It is also noted that with respect to instant claim 42, given that claim 41, from which claim 42 depends, recites “with or without preservative treatment” and that claim 42 does not positively recite that the thermally modified substrate timber is thermally modified with preservative treatment, the claimed invention as recited in instant claim 42 would have been obvious over the teachings of Tebb in view of Gudsell when no preservative treatment is utilized. Further, as discussed in detail above, Tebb teaches that in an embodiment, the facing wood veneered face-to-face wood core (90), e.g. after lamination of the veneer (50) of clear vertical grain western red cedar to the laminated wood core of first and second wood cores, “is treated with one or more aqueous compositions comprising one or more agents, an agent of the one or more agents selected from the group consisting of biocides, wood strength enhancers, fungicides, bactericides, insecticides water repellants, UV blockers, fire retardants, and wood hardeners” (Paragraphs 0210-0224, Figs. 11A-11G), reading upon the claimed “with…preservative treatment” of instant claim 41 as well as insecticides of instant claim 42; while Gudsell teaches that where timber may be subject to termite attack, a chemical preservative may also be used in the treatment process (Paragraph 0131) and/or that the timber may be colored with a chemical preservative such as those recited in Paragraph 0148 like CCA, ACQ, and copper azole (Paragraphs 0147-0148) as instantly claimed. Hence, the claimed invention as recited in instant claims 41-42 would have been obvious over the teachings of Tebb in view of Gudsell without or with preservative treatment for the same reasons as discussed above with respect to instant claim 39.
With respect to instant claim 44, as noted above, Tebb teaches that the “substrate timber” may be a single core or a laminated core as shown in the figures, and hence, the claimed invention as recited in instant claim 44 would have been obvious over the teachings of Tebb in view of Gudsell for the same reasons as discussed above with respect to instant claim 39.
With respect to instant claim 46, as noted above, Tebb teaches that the facing wood veneer is a clear vertical grain wood (Paragraph 0109), and hence, the claimed invention as recited in instant claim 44 would have been obvious over the teachings of Tebb in view of Gudsell for the same reasons as discussed above with respect to instant claim 39.
With respect to instant claim 49, as noted above, Tebb teaches that the facing wood veneer is generally a superior grade of the North American Softwood species, particularly clear vertical grain of a wood species including Pinus species (Paragraph 0109), such that the instantly claimed vertical grain Pinus radiata, an obvious Pinus species in the art, would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention. Hence, the claimed invention as recited in instant claim 49 would have been obvious over the teachings of Tebb in view of Gudsell for the same reasons as discussed above with respect to instant claim 39.
With respect to instant claim 50, Tebb teaches that the facing wood veneer has a thickness of about 1/8 inch (i.e. about 3.175 mm),reading upon the claimed thickness of about 1mm to 10mm, and hence, the claimed invention as recited in instant claim 50 would have been obvious over the teachings of Tebb in view of Gudsell for the same reasons as discussed above with respect to instant claim 39.
With respect to instant claim 51, Tebb teaches one embodiment wherein the core is a composite or complex wood core assembly (60) formed from a series of wood cores (62) laminated to each other with an adhesive under heat and pressure as discussed above, to form a simulated single unit solid rigid wood core (e.g. “plywood”) to which the facing veneer of superior grade wood species (e.g. “veneer of timber”) is bonded under heat and pressure to form a veneered complex wood core assembly (70) as shown in Figs. 15A-15F, and given that Tebb teaches that the series of wood cores (62) can be formed from pine, thereby reading upon the claimed “pine plywood”, and that as noted above, the facing veneer may be of vertical grain wood, particularly a vertical grain western red cedar (Paragraphs 0016, and 0264-0288; Claims 107-108), the claimed invention as recited in instant claim 51 would have been obvious over the teachings of Tebb in view of Gudsell for the same reasons as discussed above with respect to instant claim 39.
With respect to instant claim 52, as noted above, Tebb teaches that the veneer can be laminated to a face of a solid core, a laminated core formed by gluing two separate cores, or a complex core assembly reading upon the claimed “plywood” as discussed above with respect to instant claim 51, and given further that Tebb also teaches that the pressure sensitive liquid adhesive to bond the veneer to the core is a melamine resin adhesive in one embodiment or a polyurethane adhesive in another embodiment (Paragraphs 0146-0149; Claims 91, 95, 96, 99, 112, and 115-116), the claimed invention as recited in instant claim 52 would have been obvious over the teachings of Tebb in view of Gudsell for the same reasons as discussed above with respect to instant claim 39.
With respect to instant claim 57, as discussed above, Tebb specifically teaches one exemplary embodiment wherein a facing wood veneered face-to-face wood core (90), thus after gluing the veneer to the wood core, “is treated with one or more of the aqueous compositions, selected from the group consisting of biocides, wood strength enhancers, fungicides, bactericides, insecticides water repellants, UV blockers, fire retardants, and wood hardeners” (Paragraph 0210), particularly a colorless wood conditioner coat via a coating process (Paragraph 0382), reading upon the broadly claimed “preservative treatment” of instant claim 57. Hence, the claimed invention as recited in instant claim 57 would have been obvious over the teachings of Tebb in view of Gudsell for the same reasons as discussed above with respect to instant claim 39.
Response to Arguments
Applicant's arguments filed 7/16/2025 have been fully considered but they are not persuasive with respect to the teachings of Izumi in view of Gudsell or Tebb in view of Gudsell as applied above to the amended claims. On page 13 of the response, the Applicant first argues that “the recited thermal modification in claim 39 is [allegedly] not suggested in either Izumi or Tebb” and that additionally, “the recited combination of a substrate timber and a veneer timber is [allegedly] not disclosed or suggested in Gudsell,” arguing that “because the thermal modification in Izumi or Tebb is essentially a hot pressing step for the purposes of bonding (Izumi) or adhering (Tebb), a person having ordinary skill in the art, starting from Izumi or Tebb, [allegedly] would not look to Gudsell for a different or further thermal modification, as the thermal modification disclosed in Gudsell does not relate to a bonding or adhering process” (see Section VI on page 13). The Applicant further argues that “a person having ordinary skill in the art would not start from Gudsell in looking to manufacture a timber product comprising a substrate timber and a veneer timber as disclosed in Izumi or Tebb, as Gudsell [allegedly] does not disclose or suggest a veneer timber” and thus, “[a]ccordingly, the person having ordinary skill in the art [allegedly] would not combine the teachings of Izumi or Tebb with Gudsell to thermally modify a piece of substrate timber from the recited species, and then gluing a layer of veneer timber to a visible face of the recited unmodified or modified timber, in order to arrive at the claimed invention” (see last two paragraphs of page 13), wherein the “Applicant submits that the combination of the substrate timber and the veneer timber [allegedly] synergistically increases the dimensional stability, outdoor durability and weatherability of the timber product, in a way that [allegedly] could not be predicted in view of the cited prior art” (see first paragraph on page 14). However, the Examiner respectfully disagrees and first notes that the Applicant appears to be initially arguing the references separately and not as presented in the obviousness rejections. In response to Applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). In the instant case, each of Izumi and Tebb teaches lamination of a veneer timber to a substrate timber to produce a laminated wood product for outdoor use, wherein contrary to Applicant’s arguments, each of Izumi and Tebb broadly teaches and/or suggests that the substrate timber may be subjected to a heat treatment step whether to reduce the moisture thereof (Izumi or Tebb) and/or to cure the resin impregnated therein (Izumi) and/or to adhere multiple wood veneers/cores (Izumi or Tebb) to produce a laminated base or core as the claimed “substrate timber”, while Gudsell clearly teaches that the thermally modified wood may be utilized to produce laminated timber having enhanced weathering properties for outdoor use, wherein a plurality of modified wood boards are laminated together such that any facing board or board on an outer surface of the laminated timber would read upon the broadly claimed “veneer” and any board(s) thereunder would read upon the claimed “substrate timber” such that contrary to Applicant’s arguments, Gudsell does teach or suggest a timber product comprising a “substrate timber” and a “veneer timber”. Further, given that each of Izumi, Tebb, and Gudsell is directed to a wood product for use in outdoor applications wherein Izumi and Gudsell are specifically concerned with improved durability against the outdoor environment while retaining the beauty of natural wood grain, while Tebb like Gudsell is concerned with increasing outdoor aesthetics while still maintaining low costs and durability of the outdoor wood board for outdoor use, one skilled in the art starting with either Izumi or Tebb would look to the teachings of Gudsell for further improving the outdoor durability and/or aesthetics of the wood product taught by Izumi or Tebb by incorporating a thermal treatment step as taught by Gudsell reading upon the claimed thermal modification of the substrate timber that “is carried out at a temperature of between about 210°C to 260°C for a duration of 1 to 6 hours” as recited in instant claim 39. Further, given that each of Izumi and Tebb teaches that lamination of a veneer timber to a substrate timber provides a wood product that has improved dimensional stability and/or durability and/or weatherability as well as lower cost over a wood product formed of only the higher grade/cost wood of the veneer, Applicant’s arguments over Izumi in view of Gudsell as well as Tebb in view of Gudsell are not persuasive.
Any objection or rejection from the prior office action not restated above has been withdrawn by the Examiner in light of Applicant’s claim amendments and arguments filed 7/16/2025.
Citation of pertinent prior art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Nishio (JPH116277A, attached along with a machine translation thereof) teaches a flooring material comprising a wooden substrate and a surface decorative wood veneer having a thickness of approximately 0.2 mm to 3.0 mm laminated and bonded to a surface of the wooden substrate via an adhesive, wherein the wooden substrate is subjected to a dimensional stabilization treatment using heated steam and preferably at a temperature of about 150-230°C, with an example utilizing a softwood plywood substrate and a veneer of Mizunara wood. Thoma (WO2015/136069A1, attached along with a machine translation thereof) teaches a wood structure comprising at least one inner layer of thermally modified wood, preferably a hardwood like poplar, positioned between two outer layers of preferably softwood such as spruce or fir.
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.
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/MONIQUE R JACKSON/Primary Examiner, Art Unit 1787