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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 05/08/2026 has been entered.
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.
Claims 1-2, 7-8, 10-18, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent No. 6,509,392 to Jhaveri et al. in view of WO-92/09645 to Hunter et al.
As to claims 1-2, 7-8, 13-14, and 21, Jhaveri discloses a binder composition comprising a single component (additive package) of 18 grams of a polyol component, 27 grams of a polyisocyanate component and 0.18 grams of catalyst, useful catalyst include potassium acetate, dizaobicycloundecance, alkali metal salts of aliphatic carboxylic acids as well as 0.03 to 5.0% by weight of urethane catalysts such as dibutyltin dilaurate, phenyl mercuric acetate, bismuth or lead naphthenate (6:17-27). Jhaveri discloses wherein the catalyst composition is dissolved in propylene carbonate or dibasic esters (6:33-35) wherein the content of solvent is 0 up to 95% by weight based on the weight of the catalyst (6:35-37). Jhaveri discloses wherein solvent in amounts of 10 to 30% by weight are used to dissolve the polyisocyanate component (5:3-5). The content of polyisocyanate within the composition is 60% or greater (note ratio of 3:1 to 10:1, 5:37-34). At the time of filing it would have been obvious to a person of ordinary skill in the art to use more polyisocyanate within the binder of Jhaveri to improve hot strength (5:16-17). The content of catalyst and solvent composition sit within the claimed range. A person of ordinary skill in the art could routinely work through different amounts of catalyst and solvent including those within the broad claimed ranges to lower viscosity, thus increasing volume of catalyst that allows for larger amounts of catalyst to be weighted and/or metered into foundry sand mold compositions (6:26-30).
With regards the limitation for forming a cellulosic composite, case law holds that 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. Nevertheless, within the same field of endeavor Hunter discloses binder compositions comprising an isocyanate compound, a catalyst and a solvent, preferably propylene carbonate that is used for forming a cellulosic composite (Abstract).
Therefore, it would have been obvious to a person of ordinary skill in the art to use the binder composition of Jhaveri within the same use as Hunter based on the tenet wherein 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. See MPEP 2100.
As to claims 10-18, Jhaveri in view of Hunter disclose solvent blends including amines and mixtures of N-alkyl amides including dimethylformamide or N-methyl pyrrolidone or organic carbonates including propylene carbonate and DMSO (0055). In particular, Hunter discloses propylene carbonate as a preferred solvent because it is substantially odorless and colorless, has a low viscosity, low toxicity, and low flammability (Pg. 9. ll. 27-31). At the time of filing it would have been obvious to a person of ordinary skill in the art to substitute one known solvent for another type of solvent including blends of certain solvents to improve solubility, improve fluidity and film forming of the binder and based on the tenet wherein it is prima facie obvious to add a known ingredient to a known composition for its known function. In re Lindner 173 USPQ 356; In re Dial et al 140 USPQ 244.
Claims 3-6 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over
U.S. Patent No. 6,509,392 to Jhaveri et al. in view of U.S. Patent No. 7,001,964 to Kiso et al. or WO-2016/039856 to Stengel et al.
As to claims 3-6 and 9, Jhaveri discloses a binder composition comprising 18 grams of a polyol component, 27 grams of a polyisocyanate component and 0.18 grams of catalyst, useful catalyst include potassium acetate, dizaobicycloundecance, alkali metal salts of aliphatic carboxylic acids as well as 0.03 to 5.0% by weight of urethane catalysts such as dibutyltin dilaurate, phenyl mercuric acetate, bismuth or lead naphthenate (6:17-27). Jhaveri discloses wherein the catalyst composition is dissolved in propylene carbonate or dibasic esters (6:33-35) wherein the content of solvent is 0 up to 95% by weight based on the weight of the catalyst (6:35-37).
Jhaveri does not expressly disclose the metal complex.
However, Kiso within the same field of endeavor teaches a catalyst composition
comprising a mixture of cooper acetylacetonate and a bicyclic tertiary amine (Abstract, 2:17-25). Stengel further discloses the use of copper acetate, copper acetylacetonate, or copper salicylate as suitable catalyst to improve isocyanate reaction speed that is dissolved in dimethyl sulfoxide that is used in amounts that range from 0.04 to 10 wt% of the catalyst composition (0006-0011) with the rest being the solvent (0055-0057).
At the time of filing it would have been obvious to substitute the copper ion catalyst of
Jhaveri with the catalyst composition of Kiso to improve curing speed and to avoid toxicity problems typically associated with tin catalysts to improve environmental issues (1:44-54, 0003 Stengel).
Response to Arguments
Applicant's arguments filed 05/08/2026 have been fully considered but they are not persuasive.
The applicant argues that the binder composition of Jhaveri comprises a polyol component, which is excluded from the claimed binder composition. This is not found persuasive because the claims do not limit the scope as alleged by applicants to only a binder composition comprising polyisocyanate, solvent, and catalyst. The claims are open to other components including the polyol component within Jhaveri.
With regards the intended use of the binder for forming a cellulosic material. The intended use of a composition 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. Further, the use of binders for forming a cellulosic material comprising the same components as Jhaveri was known at the time of filing. This is supported by Hunter. Therefore, a person of ordinary skill in the art could have used the binder composition of Jhaveri within the claim scope based on the teachings in the prior art and because the binder of Jhaveri comprises the same components as currently claimed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL L LEONARD whose telephone number is (571)270-7450. The examiner can normally be reached M - F 7:00-4:00.
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, Joseph Del Sole can be reached at 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MICHAEL L LEONARD/Primary Examiner, Art Unit 1763
Prosecution Insights