DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Arguments
In response to the non-final Office Action (dated 19 March 2026), the Applicant submits the following:
-- The independent base claim 1 has been amended with limitations previously established by claims 5, 7 & 16 (now canceled).
-- Claims 4, 5, 7, 12, 16 & 59 have been canceled.
-- A Declaration of co-inventor Alexander Henn has been submitted.
-- New matter has been entered.
The arguments provided by the Applicant have been fully considered & thoroughly reviewed but are ultimately found unpersuasive in view of the amended claims.
Pertaining to the declaration submitted by a co-inventor of the instant application; this declaration is regarded as opinion-based evidence. See MPEP § 716.01(c)(III). Therefore, the examiner must assess the value of opinion-based evidence by considering the nature of the matter sought be established, the strength of any opposing evidence, the interest of the expert in the outcome of the case, and the presence or absence of factual support for the expert’s opinion.
The declaration is provided to show that Bode contains non-enabling embodiment; that one of ordinary skill in the art would not have found it obvious to combine the teachings of Bode and Lintinen to arrive at the claimed invention; and how the invention of claim 1 led to unexpected results (Declaration, [4]).
Pertaining to Bode being allegedly non-enabling; the MPEP provides the following. Prior art is presumed to be operable and enabling. See MPEP § 2121. The Bode reference was filed as US application number 14/652,480. This application was not subject to an enablement rejection during examination on the merits, and an identical disclosure later issued as US Patent Number 10,913,824 (from CON application number 16/106,450). Therefore, Bode is entitled to a presumption of enablement, and no enablement issues were identified during examination of the application corresponding to Bode.
In the context of compounds and compositions, prior art is enabled if one of ordinary skill in the art has the ability to make or synthesize the disclosed product. See MPEP § 2121.02(I). The Declarant has provided opinions regarding the operability of certain embodiments of Bode’s disclosure, but no evidence has been provided to support those opinions. The Declarant’s opinion further fails to provide sufficient reasoning as to why one of ordinary skill in the art would question the veracity of Bode’s working examples or would lack the ability to repeat those working examples.
Additionally, a reference does not contain an enabling disclosure if attempts at making the compound or composition were unsuccessful before the relevant time. When a prior art reference merely discloses the structure of the claimed compound, evidence showing that attempts to prepare that compound were unsuccessful before the relevant time will be adequate to show inoperability. In re Wiggins, 488 F.2d 538, 179 USPQ 421 (CCPA 1973). The fact that an author of a publication did not attempt to make the compound disclosed, without more, will not overcome a rejection based on that publication. In re Donohue, 766 F.2d 531, 226 USPQ 619 (Fed. Cir. 1985). See § MPEP 2121.02(II). The Declaration provides no evidence showing that attempts at making Bode’s composition were unsuccessful.
Therefore, the Bode reference is entitled to a presumption of enablement.
The Declarant further challenges the combinability of Bode & Lintinen (Declaration, [7]) and concludes one of ordinary skill in the art would not modify said references in view of one another as Lintinen merely discloses “many potential uses benefit from a smaller particle size [of lignin]”, without sufficiently specifying the nature of the alleged benefits.
Bode is drawn to coatings comprising lignin (Abstract). Lintinen is drawn to methods of forming colloidal lignin particles (CLP) and states said CLP may be used in applications where the colloidal nature of lignin affords an advantage over bulk lignin (Abstract). Lintinen expressly discloses applications in which CLP can be used (p. 5, [0095]), including coatings. This is sufficient for one of ordinary skill in the art to look to both Bode & Lintinen to arrive at the invention of the instant application. 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).
To the points of unexpected results; the amended claims require that the inventive composition of the instant application comprises colloidal lignin particles having a diameter in the range of 10 – 2,000 nm (Claim 1). From the examples provided in the Specification, it appears that the particle sizes tested only ranged from 600 – 900 nm (Specification, p. 26, [00115]). This is not commensurate with the scope of the claims, as the data only spans ~15% of the claimed CLP size range.
Whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support. See MPEP § 716.02(d). Additionally, applicants have the burden of explaining the data proffered as evidence of non-obviousness. See MPEP § 716.02(b). The examples in the specification are not reasonably commensurate in scope with the claims, and the Applicant has provided no explanation regarding how the exemplified results could reasonably be extended to the full scope of the claims. The examples are therefore insufficient to establish non-obviousness of the claims.
The interest of the Declarant on the outcome of this case is high, as the Declarant is a co-inventor of the invention that is claimed in the instant application, and would have an interest in finding that the claims are patentably distinct over Bode & Lintinen.
The expert’s opinion has no factual support save for the examples presented in the instant specification. These examples have been evaluated and, as explained above, are not sufficient to establish non-obviousness.
The Applicant challenges Bode and states Bode is directed to lignin solutions (instead of dispersions) that contain lignin, a solvent, and a cross-linker that can be an epoxy compound (Abstract), and points to [0014] in Bode for support where Bode defines ‘mixture’ to mean a solution. The Applicant submits that this disclosure is meant to be understood that Bode teaches a true solution and not a dispersion (Remarks, p. 7)
Examiner points to Bode (p. 2, [0019]) where dispersing the lignin in a mixture including a solvent is discussed. Further, Bode also generally contemplates compositions in the form of dispersions containing up to about 60% by weight of solids (p. 4, Claim 21). Even if the Applicant’s remark (above) is accurate, Bode still contains express language that discloses the invention may take the form of a dispersion.
This rejection is FINAL.
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.
Claims 1, 3, 8-11, 13-15, 17-20, 26 & 39 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 independent base claim 1 has been amended to further limit the inventive composition to comprise, “…one or more organic solvents, wherein more than 70 vol% of the one or more organic solvents is water…” (Claim 1, lines 1-5). Support for this amendment is unfound. The specification discloses an aqueous phase which may include organic volatile solvents, although water content should usually be above 70 vol% (spec, p. 11, [0051]). This disclosure is inconsistent with the amended claim language, which now recites organic solvents (rather than an aqueous phase) made up of more than 70 vol% water.
Regarding claims 3, 8-11, 13-15, 17-20, 26 & 39, said claims all depend from claim 1, either directly or indirectly, and inherit all the limitations established therein. Similarly, said claims also inherit all introductions of new matter established therein and are therefore similarly rejected.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claims 1, 3, 8-11, 13-15, 17-20, 26 & 39 are 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.
Regarding claim 1, the independent base claim 1 has been amended to further limit the inventive composition to comprise, “…one or more organic solvents, wherein more than 70 vol% of the one or more organic solvents is water…” (Claim 1, lines 1-5). Water is not an organic solvent. It is unclear if the Applicant is attempting to redefine “organic” solvents to also include inorganic solvents like water, or if the “one or more organic solvents” encompasses a range of unidentified additional constituents other than organic solvents. The full metes and bounds of claim 1 therefore cannot be determined.
Regarding claims 3, 8-11, 13-15, 17-20, 26 & 39, said claims all depend from claim 1, either directly or indirectly, and inherit all the limitations established therein. Similarly, said claims also inherit all indefiniteness established therein and are therefore similarly rejected.
Claim Rejections - 35 USC § 103
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, 8, 13, 15, 17-20 & 26 are rejected under 35 U.S.C. § 103 as being unpatentable over Bode et al. (US 2015/0344737 A1) in view of Lintinen et al. (US 2020/0255466 A1). Brooks et al. (US 2016/0201031 A1) is provided as an evidentiary reference where applicable.
Regarding claims 1, 3, 13 & 20, Bode teaches coating compositions, methods for coating substrates with said composition and substrates coated with said composition. The composition comprises a lignin, an epoxy crosslinker and a solvent (Abstract). The composition comprises lignins in amounts ranging from 1 - 99 wt.% (p. 1, [0016]) and the epoxy crosslinker in amounts ranging from 1 - 99 wt.% (p. 2, [0020]). Bode teaches a method of creating said coating composition (p. 3, [0026]) resulting in an aqueous polymeric dispersion. Bode’s composition may comprise water, an organic solvent or a mixture thereof in amounts ranging from 1 - 95 wt.% (p. 2, [0019]).
Lignins suitable for use in Bode’s coating compositions are not limited (p. 2, [0018]) and may be kraft lignin. The lignins in the mixture are unmodified (p. 1, [0014]), however, Bode is silent on the dimensions of said lignins.
In the same field of endeavor, Lintinen teaches methods of forming colloidal lignin particles (Abstract). An object of the invention incorporated controlling the particle size of said lignins, with Lintinen expressly disclosing many potential benefits arise from lignin particles with sizes below 1,000 nm (p. 1, [0009]). Compositions comprising lignin particles of this nature can find use in various capacities such as adhesives and coatings (p. 5, [0095]). Lignins suitable for use in Lintinen’s invention include kraft lignin and plant lignin (p. 1, [0020]).
It would have been obvious to one of ordinary skill in the art at the time of filing to employ the desired lignin particle range of 200-400 nm taught by Lintinen (p. 3, [0049]) as a guide for the lignins in Bode’s invention, as this range is recognized by the prior art as suitable for lignin particles in similar compositions with similar end uses. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07. A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05.
Modification of Bode in view of Lintinen as detailed above reads on limitations established by claims 1, 3, 13 & 20.
Regarding claim 8, maintaining the modification of Bode in view of Lintinen previously detailed, Bode teaches examples of compounds suitable for use as the epoxy compound, citing butane diol diglycidyl ether (p. 2, [0020]). Butane diol diglycidyl ether is hydrophilic (see Carl Roth, p. 6). It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
Regarding claim 15, maintaining the modification of Bode in view of Lintinen previously detailed, Lintinen prefers spherical colloidal lignin particles. Average lignin particle size as taught by Lintinen ranges from 200-400 nm & is preferably less than 200 nm (p. 3, [0049], [0050]). It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07. A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05.
Regarding claim 17, maintaining the modification of Bode in view of Lintinen previously detailed, Bode teaches the lignins have a neutral or negative charge (p. 1, [0008]). The 'negative charge' limitation reads on over 66% of the claimed range for lignin particle charge as detailed in the instant claim 17. A charge of -10mV to +10 mV is recognized in the art as being approximately neutral, (see Brooks, p. 5, [0056]). A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05.
Regarding claim 18, maintaining the modification of Bode in view of Lintinen previously detailed, Bode teaches the inventive composition may include conventional additives known to those in the art, including without limitation, additives to control foaming, equilibrium, surface tension, surface lubricity and rheology (p. 2, [0024]). Absent of any examples of the plasticizer or further definitions thereof in the instant specification, almost all of the aforementioned additives taught by Bode read on the limitation established in claim 18.
Regarding claim 19, maintaining the modification of Bode in view of Lintinen previously detailed, the coating composition may be a surface coating, as it may be applied directly to the substrate or the substrate may be coated with a prime coat first followed by coating with the coating composition taught by Bode (p. 2 & 3, [0025]).
Regarding claim 26, maintaining the modification of Bode in view of Lintinen previously detailed, Bode teaches a method of coating substrates using their inventive aqueous composition involving applying the composition and heating the coated substrate after applying (p. 3, [0026]).
Claims 9 – 11 are rejected under 35 U.S.C. § 103 as being unpatentable over Bode et al. (US 2015/0344737 A1) in view of Lintinen et al. (US 2020/0255466 A1) in further view of Briggs (US 3,935,101).
Regarding claim 9, maintaining the modification of Bode in view of Lintinen previously detailed, neither Bode nor Lintinen teach the epoxy compound as detailed in claim 9.
In the same field of endeavor, Briggs teaches a water-soluble composition comprising lignin particles and an epoxy compound (Abstract). Suitable epoxy compounds for use in said composition include diglycidyl ethers of 1,4-butanediol and glycerol (col. 19, Claim 5), both of which are hydrophilic.
It would have been obvious to one of ordinary skill in the art at the time of filing to substitute the epoxy in Bode with glycerol diglycidyl ether as the epoxy compound, as Briggs cites glycerol diglycidyl ether in parallel with 1,4-butanediol diglycidyl ether as alternatives suitable for use for the same purpose in the same capacity. It is prima facie obvious to substitute equivalents where the equivalence is recognized by the prior art. See MPEP § 2144.06.
Regarding claims 10 & 11, maintaining the modification of Bode in view of Lintinen in further view of Briggs previously detailed, Briggs discloses several embodiments of his invention (Table 1, cols. 16 & 17), all of which abide by the limitations established by claims 10 & 11. The ratio of epoxy groups to hydroxyls of lignin may range from 0.75:1 to 1.2:1 (Table 1, col. 17). A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05.
Claim 14 is rejected under 35 U.S.C. § 103 as being unpatentable over Bode et al. (US 2015/0344737 A1) in view of Lintinen et al. (US 2020/0255466 A1) in further view of Eick et al. (US 2012/0037368 A1).
Regarding claim 14, maintaining the modification of Bode in view of Lintinen previously detailed, Bode teaches suitable crosslinking initiators for the composition (p. 2, [0022]), but neither Bode nor Lintinen teach a composition comprising a curing initiator as detailed in claim 14.
In the same field of endeavor, Eick teaches an encapsulated material composition which may be an adhesive and may also be made with lignins (p. 2, [0011]). Eick teaches adhesives may use varieties of hardeners including epoxy resins, triethylenetetramine, diethylenetetramine & the like (p. 3, [0029]).
It would have been obvious to one of ordinary skill in the art at the time of filing to create a composition by following the teachings of Bode and further add either triethylenetetramine or diethylenetetramine, as Eick teaches both of these compounds suitable for use in similar compositions for the same purpose. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
Claim 39 is rejected under 35 U.S.C. § 103 as being obvious over Bode et al. (US 2015/0344737 A1) and Lintinen et al. (US 2020/0255466 A1) in view of Devenney et al. (US 2013/0192783 A1).
Regarding claims 39, maintaining the modification of Bode in view of Lintinen previously detailed, Bode demonstrates their invention is capable of functioning as an adhesive & details an embodiment, Example 5, which demonstrated 100% adhesion (p. 3, [0034]), Lintinen teaches colloidal lignin particles and dried lignin particles are suitable for use in multiple applications, including adhesives (p. 5, [0095]). Lintinen teaches a method of drying an aqueous dispersion of colloidal lignin particles, providing an appropriate temperature of 180°C (p. 4, [0083]). Neither Bode nor Lintinen teach the method of adhering as detailed in claim 39.
In the same field of endeavor, Devenney teaches adhesives are compounds capable of adhering to a substrate or may be used to bond two substrates together (p. 16, [0105]).
It would have been obvious to one of ordinary skill in the art at the time of filing to develop a method of adhering two substrates together by applying the composition arising from the modification of Bode in view of Lintinen to two substrates and pressing them together, as taught by Devenney, followed by drying them at 180°C, as taught by Lintinen. A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTIAAN ROELOFSE whose telephone number is (571)272-2825. The examiner can normally be reached Monday-Friday 8:00-4:00 EST.
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, Robert Jones can be reached at (571)270-7733. 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.
/CHRISTIAAN ROELOFSE/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
Prosecution Insights