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 § 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.
Claims 1, 3, 4, 7, 12, 15, 21, 25, 103-104, 106-107, & 110-113 are rejected under 35 U.S.C. 103 as being unpatentable over Hu et al. (WO 2019/055789; hereafter ‘789).
Claim 1: ‘789 is directed towards methods of fabricating delignified wood and use thereof (title) comprising:
producing a piece of partially-delignified wood by subjecting a piece of natural wood to one or more chemical treatments so as to remove at least some lignin therefrom while preserving a microstructure of the piece of natural wood, the microstructure comprising cellulose-based longitudinal cells extending along an extension direction that is substantially parallel to a longitudinal growth direction of the natural wood (see title, abstract, & Step 106, Fig. 1), the piece of partially-delignified wood comprises more than 10% lignin and less than 100% lignin (the product is a composite of a substantially-delignified wood and at least a piece of non-processed wood – i.e. a composite where less than 90% of the lignin are removed depending on the relative amount of the two pieces of wood in the laminate; see pg 1, lines 1-20 and pg 27 – pg 28);
drying the piece of partially-delignified wood so as to remove moisture therefrom, such that lumina of at least some of the cellulose-based longitudinal cells collapse (the wood is dried which in turn collapses some of the cells, see Steps 110, Fig. 1 and at least some of the cells collapse, pg 1, lines 20-25);
performing a fluid-shock treatment to the dried piece of partially-delignified wood to yield a rehydrated piece of partially-delignified wood, the fluid-shock treatment comprising exposing the dried piece to moisture (the wood is subjected to a humidification process, Step 118, Fig. 1 and pg 11, lines 10-20); and
forming the rehydrated piece of partially-delignified wood from a substantially flat planar configuration into a non-planar three-dimensional configuration (the processed wood is bent or molded into a new shape from planar to non-planar, see pg 118, lines 25-30 and step 114, Fig. 1),
wherein the lumina of first cellulose-based longitudinal cells in the rehydrated piece of partially-delignified wood that have a cross-sectional size less than a first size are substantially collapsed and lumina of second cellulose-based longitudinal cells in the rehydrated piece of partially-delignified wood that have a cross-sectional size greater than the first size are at least partially open (it is apparent that the product produced by ‘789 reads on this limitation because there is inherently a size on which the product reads on this). The burden is upon the Applicant to prove otherwise. In re Fitzgerald 205 USPQ 594. In addition, the presently claimed properties would obviously have been present once the product is provided. Note In re Best, 195 USPQ at 433, footnote 4 (CCPA 1977).
‘789 teaches controlling the moisture content to a desired level between drying and humidifying the partially-delignified wood (pg 11, lines 10-20).
It would have been obvious to one of ordinary skill in the art at the time of filing to dry the partially-delignified wood to a moisture content of less than or equal to 15wt% and rehydrate said piece to a moisture content of at least 35 wt% because ‘789 teaches controlling the moisture content to a desired level and differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP 2144.05(II)(A).
Although the taught range of greater than or equal to 10% and less than 100% lignin is not explicitly the claimed range of greater than 50% lignin remains, it does overlap the claimed range. Therefore it would have been obvious to one of ordinary skill in the art at the time of filing to have incorporated a value within the claimed range since in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Additionally, the different in concentration of lignin remaining would have been obvious because differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP 2144.05(II)(A).
Claim 3: It would have been obvious to one of ordinary skill in the art at the time of filing to rehydrate said piece to a moisture content of at least 50 wt% because ‘789 teaches controlling the moisture content to a desired level and differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP 2144.05(II)(A).
Claim 4: ‘789 is directed towards methods of fabricating delignified wood and use thereof (title) comprising:
producing a piece of partially-delignified wood by subjecting a piece of natural wood to one or more chemical treatments so as to remove at least some lignin therefrom while preserving a microstructure of the piece of natural wood, the microstructure comprising cellulose-based longitudinal cells extending along an extension direction that is substantially parallel to a longitudinal growth direction of the natural wood (see title, abstract, & Step 106, Fig. 1), the piece of partially-delignified wood comprises more than 10% lignin and less than 100% lignin (the product is a composite of a substantially-delignified wood and at least a piece of non-processed wood – i.e. a composite where less than 90% of the lignin are removed depending on the relative amount of the two pieces of wood in the laminate; see pg 1, lines 1-20 and pg 27 – pg 28);
partially drying the piece of partially-delignified wood so as to remove some moisture therefrom (see Steps 110, Fig. 1, pg 11, lines 15-20);
forming the partially-dried piece of partially-delignified wood from a substantially flat planar configuration into a non-planar three-dimensional configuration (the processed wood is bent or molded into a new shape from planar to non-planar, see pg 118, lines 25-30 and step 114, Fig. 1),
wherein the lumina of first cellulose-based longitudinal cells in the rehydrated piece of partially-delignified wood that have a cross-sectional size less than a first size are substantially collapsed and lumina of second cellulose-based longitudinal cells in the rehydrated piece of partially-delignified wood that have a cross-sectional size greater than the first size are at least partially open (it is apparent that the product produced by ‘789 reads on this limitation because there is inherently a size on which the product reads on this). The burden is upon the Applicant to prove otherwise. In re Fitzgerald 205 USPQ 594. In addition, the presently claimed properties would obviously have been present once the product is provided. Note In re Best, 195 USPQ at 433, footnote 4 (CCPA 1977).
‘789 teaches controlling the moisture content to a desired level between drying and humidifying the partially-delignified wood and only humidifying when necessary to obtain the desired moisture content (pg 11, lines 10-20).
It would have been obvious to one of ordinary skill in the art at the time of filing to dry the partially-delignified wood to a moisture content of at least 35 wt% because ‘789 teaches controlling the moisture content to a desired level and differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP 2144.05(II)(A).
Although the taught range of greater than or equal to 10% and less than 100% lignin is not explicitly the claimed range of greater than 50% lignin remains, it does overlap the claimed range. Therefore it would have been obvious to one of ordinary skill in the art at the time of filing to have incorporated a value within the claimed range since in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Additionally, the different in concentration of lignin remaining would have been obvious because differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP 2144.05(II)(A).
Claim 7: ‘789 is directed towards methods of fabricating delignified wood and use thereof (title) comprising:
producing a piece of partially-delignified wood by subjecting a piece of natural wood to one or more chemical treatments so as to remove at least some lignin therefrom while preserving a microstructure of the piece of natural wood, the microstructure comprising cellulose-based longitudinal cells extending along an extension direction that is substantially parallel to a longitudinal growth direction of the natural wood (see title, abstract, & Step 106, Fig. 1; up to 10% of the lignin remains – i.e. partially-delignified, pg 1, lines 6-7);
partially drying the piece of partially-delignified wood so as to remove some moisture therefrom (see Steps 110, Fig. 1, pg 11, lines 15-20);
forming the partially-dried piece of partially-delignified wood from a substantially flat planar configuration into a non-planar three-dimensional configuration (the processed wood is bent or molded into a new shape from planar to non-planar, see pg 118, lines 25-30 and step 114, Fig. 1),
wherein the lumina of first cellulose-based longitudinal cells in the rehydrated piece of partially-delignified wood that have a cross-sectional size less than a first size are substantially collapsed and lumina of second cellulose-based longitudinal cells in the rehydrated piece of partially-delignified wood that have a cross-sectional size greater than the first size are at least partially open (it is apparent that the product produced by ‘789 reads on this limitation because there is inherently a size on which the product reads on this). The burden is upon the Applicant to prove otherwise. In re Fitzgerald 205 USPQ 594. In addition, the presently claimed properties would obviously have been present once the product is provided. Note In re Best, 195 USPQ at 433, footnote 4 (CCPA 1977).
‘789 teaches controlling the moisture content to a desired level between drying and humidifying the partially-delignified wood and only humidifying when necessary to obtain the desired moisture content (pg 11, lines 10-20).
It would have been obvious to one of ordinary skill in the art at the time of filing to dry the partially-delignified wood to a moisture content of at least 35 wt% because ‘789 teaches controlling the moisture content to a desired level and differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP 2144.05(II)(A).
‘789 further teaches after forming into the non-planar three-dimensional configuration to further coat with dyes or paints (see pgs 18-19) which imply a further drying step.
‘789 does not teach a moisture content of the monolithic piece after painting/dying and drying.
However, it would have been obvious to drying to a moisture content of less than or equal to 15 wt% because differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP 2144.05(II)(A).
Claim 12: The paint inherently forms a barrier and prevent rehydration to some degree.
Claim 15: It would have been obvious to one of ordinary skill in the art at the time of filing maintain a moisture content of at least 50 wt% because ‘789 teaches controlling the moisture content to a desired level and differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP 2144.05(II)(A).
Claim 21: ‘789 teaches that the delignification process can remove some or all of the hemicellulose (pg 6, lines 15-20).
Although the taught range of some is not explicitly the claimed range of less than 10%, it does overlap the claimed range. Therefore it would have been obvious to one of ordinary skill in the art at the time of filing to have incorporated a value within the claimed range since in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Claim 25: The delignification process comprises chemical treatment by immersion in a solution of NaOH (pg 9, lines 14-25 and pg 14, lines 5-20).
Claim 103: ‘789 does not teach a specific means for drying after painting or dying.
However, air drying is a well-known means of drying a painted or dyed surface.
It would have been obvious to one of ordinary skill in the art at the time of filing to air dry the painted or dyed surface of ‘789 because it is a well-known and art recognized means of drying.
Claim 104: ‘789 teaches forming a composite of the rigid monolithic partially-delignified wood with other partially-delignified or other pieces of wood (see pg 27, line 25 – pg 28, line 10).
Claim 106: As a general rule, no invention is involved in the broad concept of performing simultaneously operations which have previously been performed in sequence. In re Eksergian, 25 C.C.P.A., Patents, 734, 92 F.2d 811, 35 USPQ 530, and In re Mink, 27 C.C.P.A., Patents, 726, 107 F.2d 586, 43 USPQ 456. An exception may be made where a new and unexpected result is obtained by performing the operations simultaneously". Application of Tatincloux, 228 F.2d 238, 242 (C.C.P.A. 1955).
Claim 107: The modifications of ‘798 can be performed pre-pressing (see pg 17, line 30 – pg 18, line 15 and pg 26, lines 20-35) and the pressing can be performed by hot-pressing (pg 13, line 4).
Claim 110: The natural wood can be hardwood (the wood can be basswood; pg 6, lines 15-20) wherein up to 10% lignin can remain after delignification (pg 1, lines 6-7).
Although the taught range of up to 10% remain is not explicitly the claimed range of at least 10% lignin, it does overlap the claimed range. Therefore it would have been obvious to one of ordinary skill in the art at the time of filing to have incorporated a value within the claimed range since in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Claim 111: It would have been obvious to one of ordinary skill in the art at the time of filing maintain a moisture content of at least 50 wt% because ‘789 teaches controlling the moisture content to a desired level and differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP 2144.05(II)(A).
Claim 112: The piece of partially-delignified wood comprises more than 10% lignin and less than 100% lignin (the product is a composite of a substantially-delignified wood and at least a piece of non-processed wood – i.e. a composite where less than 90% of the lignin are removed depending on the relative amount of the two pieces of wood in the laminate; see pg 1, lines 1-20 and pg 27 – pg 28);
Although the taught range of greater than or equal to 10% and less than 100% lignin is not explicitly the claimed range of greater than 50% lignin remains, it does overlap the claimed range. Therefore it would have been obvious to one of ordinary skill in the art at the time of filing to have incorporated a value within the claimed range since in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Additionally, the different in concentration of lignin remaining would have been obvious because differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP 2144.05(II)(A).
Claim 113: The delignification process comprises chemical treatment by immersion in a solution of NaOH (pg 9, lines 14-25 and pg 14, lines 5-20).
Allowable Subject Matter
Claims 105, 108, & 109 are allowed.
Claim 114 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Claims 105, 108, & 109 and claim 114 recite forming a honeycomb structure from the partially delignified wood produced. Though the ‘789 reference teaches a monolithic structure which comprises an undulating configuration formed by multiple bends with a repeating pattern with at least one peak and at least one trough, the reference does not teach or suggest orienting two pieces such that they form a honeycomb as recited in claims 105 and 114 and there is no teaching or suggestion in the prior art to orient the structures such.
Response to Arguments
Applicant's arguments filed 2/19/26 have been fully considered but they are not persuasive.
In regards to applicant’s argument that ‘789 does not teach forming a structure with at least 50% of the lignin remaining; the Office does not find this argument convincing because (1) ‘789 teaches that the structure can be a laminate of the delignified portion and a nondelignified portion which overlaps the claimed value as discussed above and (2) differences in concentration are prima facie obvious unless there is a showing of unexpected results which applicant has not provided.
In regards to applicant’s argument that ‘789 does not teach a monolithic structure which comprises an undulating configuration formed by multiple bends with a repeating pattern with at least one peak and at least one trough because the structure is the microscopic structure and not the overall configuration of the wood piece itself; the Office does not find this argument convincing because the microscopic structure still is the structure and thus given its presence it is apparent that the limitation is taught.
In regards to applicant’s argument concerning (c) & (d) of claim 105 and that ‘789 does not form the claimed undulating patter which is set in (d); applicant is advised that the claim does not require that the undulating pattern be formed in (c) but instead that the piece is changed shape.
After further consideration, the rejection of claim 105 has been withdrawn for the reasons stated above.
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 JAMES M MELLOTT whose telephone number is (571)270-3593. The examiner can normally be reached 8:30AM-4:30PM CST.
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/James M Mellott/ Primary Examiner, Art Unit 1759
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