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 the Office Action dated 25 November 2025, the Applicant submits the following:
-- Claim 7 has been amended to depend on claim 5.
-- New independent claim 59 has been added to recite the features of independent base claim 1 together with features of claims 15 & 16.
No new matter has been identified.
The amendment of claim 7 has appropriately obviated the lack of antecedent basis. The rejection of claim 7 under 35 U.S.C. § 112 is hereby withdrawn.
Applicant’s arguments, see Applicant Arguments/Remarks, filed 25 November 2025, with respect to the rejections of claims 1, 3-5, 7, 8, 12, 13, 17, 19, 20, & 26 under 35 U.S.C. § 102(a)(2), and claims 9, 10, 11, 14, 15, 16, 18 & 39 under 35 U.S.C. § 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of the references provided herein.
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, 4, 5, 7, 8, 12, 13, 15-20, 26 & 59 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, 4, 12, 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.
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. 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, 4, 12, 13 & 20.
Regarding claims 5 & 7, maintaining the modification of Bode in view of Lintinen previously detailed, Bode’s composition may comprise water, an organic solvent or a mixture thereof in amounts ranging from 1 - 95 wt.% (p. 2, [0019]). 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 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).
Regarding claims 15, 16 & 59, 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]). These disclosures from Lintinen taken in tandem with the modification of Bode in view of Lintinen read on all limitations established by claim 59. 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 obvious over Bode et al. (US 2015/0344737 A1) and Lintinen et al. (US 2020/0255466 A1) in view of Briggs (US 3,935,101). Carl ROTH (Article No. 23PE, Safety Data Sheet: 1,4-Butanediol diglycidyl ether) is provided as an evidentiary reference where applicable.
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 modify Bode in view of Briggs by using 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 obvious over Bode et al. (US 2015/0344737 A1) and Lintinen et al. (US 2020/0255466 A1) in 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
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.
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/CHRISTIAAN ROELOFSE/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762