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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 May 15, 2026 has been entered.
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.
Claims 2 – 16 and 18 – 21 are rejected under 35 U.S.C. 103 as being unpatentable over US 10,934,385 to Robinson et al. (hereinafter Robinson) in view of “Stability of cross-linked acetic acid lignin-containing polyurethane” to Wang et al. (hereinafter Wang).
Regarding Claims 20 and 2. Robinson teaches a polyurethane elastomer composition comprising: (a) an organic diisocyanate; (b) a polyester resin; (c) a chain extender; (d) a crosslinker; (e) a surfactant; (f) a foaming agent; (g) a plasticizer; and from 1 – 10 weight percent of a bio-additive (Column 3, Lines 43 – 48; and Claim 2).
Robinson does not expressly teach the bio-additive is an alkylated lignin. However, Wang teaches the concept of providing a modified lignin as an additive in a polyurethane composition (Page 294, second paragraph in first column). The lignin is specifically prepared by reacting spruce wood chips, i.e. milled wood lignin, with acetic acid in the presence of an acid catalyst (HCL) (Page 294, “Preparation of acetic acid lignin (AL)” in second column), thereby by providing acetic acid/acetylated lignin. Acetylated lignin is set forth as a species of esterified lignin in instant Claim 2. Robinson and Wang are analogous art as they are from the same field of endeavor, namely bio-based polyurethanes. Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to select acetylated lignin, as taught by Wang, as the bio-additive in Robinson. The motivation would have been that Wang teaches lignin derivatives at low loading levels can simultaneously enhance the strength and elongation of the polyurethanes in which they are included (Page 294, second paragraph in first column).
Wang does not expressly characterize the above described acetylated lignin is soluble in the polyurethane elastomer. However, "[p]roducts of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id. Wang and the instant claims both set forth products of identical chemical structure, namely acetylated lignin prepared by substantially the same process. The properties claimed by applicant, i.e. solubility in the claimed polyurethane elastomer, are thus also necessarily present in the acetylated lignin of Wang.
Regarding Claims 3 – 6. Robinson teaches the polyurethane elastomer of Claim 20. As detailed in the rejection of Claim 1, it is the Office’s position that it would have been obvious to a person of ordinary skill in the art to provide lignin obtained from milled wood and modified with acetic acid in the presence of an acid catalyst (HCL), as taught by Wang, as the bio-additive in Robinson.
The references do not expressly teach this alkylated lignin is further obtained with an organic anhydride and also does not expressly teach the catalyst corresponds to one of the instantly claimed species. However, such limitations appear to be product-by-process limitations that are not further limiting in as so far as the structure of the product is concerned. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695,698, 227 USPQ 964, 966 (Fed. Cir. 1985) (MPEP 2113) Though Wang uses acetic acid instead of acetic anhydride and a catalyst which does not correspond to the instantly claimed species, the product of the prior art is the same – namely a lignin in which the hydroxyl groups have been substituted with acetyl groups. Once a product appearing substantially identical is found, the burden shifts to the applicant to show an unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1993) (MPEP 2113)
Regarding Claim 7. Robinson teaches the polyurethane elastomer of Claim 20 wherein the elastomer has a hardness value of about 15 to about 60 Asker C, a tensile strength of about 1 to about 10 MPa, a resilience of about 25 to about 60%, an elongation at break of from about 150 to 700 percent, and a tear strength of about 2 to about 4 N/mm2 (Column 3, Lines 43 – 55; and Claims 1 – 2).
Regarding Claim 8. Robinson teaches the polyurethane elastomer of Claim 20 wherein the elastomer may have a bio-content of from about 60 to about 90% (Column 3, Lines 30 -32).
Regarding Claim 9. Robinson teaches the polyurethane elastomer of Claim 20 may further comprise a colorant (Column 3, Line 48).
Regarding Claim 10. Robinson teaches the polyurethane elastomer of Claim 9 wherein the colorant may be a die, pigment, or mixture thereof. The colorant is provided in an amount of about 0.5 to about 5 weight percent (Column 5, Lines 4 – 5).
The polyester resin may be a semi-crystalline polyester resin having a melting point of less of about 10 to 49°C, such as a copoly(1,3-propylenesuccinate)-copoly(1,2-propylenesuccinate) (Column 8, Lines 40 – 59).
The foaming agent may be carbon dioxide or water (Column 12, Lines 1 – 2).
Regarding Claim 11. Robinson teaches the polyurethane elastomer of Claim 20 wherein the polyester resin is a semi-crystalline resin obtained by a polycondensation reaction of an organic diacid and an organic diol (Column 6, Lines 20 – 24). Suitable organic diacids include succinic acid, adipic acid, 1,12-dodedacendioic acid, and dimer diacids (Column 6, Lines 43 – 59). Suitable organic diacids include 1,5-petanediol, 1,2-propanediol, 1,3-propanediol, 1,4-butanediol, 1,6-hexanediol, ethylene glycol, diethylene glycol, and dipropylene glycol (Column 6, Line 63 – Column 7, Line). Both the organic diol and organic diacid may be obtained by fermentation of natural/bio-based sources (Column 6, Lines 43 – 46 and 63 – 65).
Regarding Claim 12. Robinson teaches the polyurethane elastomer of Claim 20 wherein the organic diisocyanate may be diphenylmethane 4,4’-diisocyanate (Column 12, Lines 10 – 22).
Regarding Claim 13. Robinson teaches the polyurethane elastomer of Claim 20 wherein the organic diisocyanate may be diphenylmethane 4,4’-diisocyanate (Column 12, Lines 10 – 22), i.e. a methylenediphenyl diisocyanate.
The polyester resin may be semi-crystalline polyester resin, such as a copoly(1,3-propylenesuccinate)-copoly(1,2-propylenesuccinate) (Column 8, Lines 40 – 59).
Regarding Claim 14. Robinson teaches the polyurethane elastomer of Claim 20 wherein the plasticizer may be tributyl citrate (Column 9, Lines 32 – 33).
Regarding Claim 15. Robinson teaches the polyurethane elastomer of Claim 20 wherein the surfactant may be a silicone surfactant (Column 10, Lines 44 – 46).
Regarding Claim 16. Robinson teaches the polyurethane elastomer of Claim 20 wherein the chain extender may be an alkylene glycol (Column 10, Lines 24 – 33).
The polyester resin may be a semi-crystalline polyester resin, such as a copoly(1,3-propylenesuccinate)-copoly(1,2-propylenesuccinate) (Column 8, Lines 40 – 59).
The plasticizer may be tributyl citrate (Column 9, Lines 32 – 33).
The crosslinker may be an amine compound (Column 10, Lines 1 – 7).
The foaming agent may be carbon dioxide or water (Column 12, Lines 1 – 2).
The polyurethane elastomer may also further comprise a colorant which is a dye (Column 5, Lines 4 – 5).
Regarding Claim 18. Robinson teaches the polyurethane elastomer of Claim 20 wherein the crosslinker may be diethanolamine (Column 10, Lines 1 – 3).
Regarding Claim 19. Robinson teaches the polyurethane elastomer of Claim 20 wherein the plasticizer may be present in an amount of about 0.1 to about 30% by weight (Column 9, Lines 32 – 64).
Regarding Claim 21. Robinson teaches a polyurethane elastomer foam comprising the polyurethane elastomer of Claim 20 (Column 5, Lines 22 – 32).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 2 – 16 and 18 – 21 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1 – 19 of U.S. Patent No. 12,124,675 in view of “Stability of cross-linked acetic acid lignin-containing polyurethane” to Wang et al. (hereinafter Wang).
The claims of U.S. Patent No. 12,124,675 do not expressly set forth the lignin included in the composition is esterified. However, Wang teaches the concept of providing lignin or a modified lignin as an additive in a polyurethane composition (Page 294, second paragraph in first column). The modified lignin is specifically prepared by reacting spruce wood chips, i.e. milled wood lignin, with acetic acid in the presence of an acid catalyst (HCL) (Page 294, “Preparation of acetic acid lignin (AL)” in Column 2), thereby by providing acetic acid/acetylated lignin. Acetylated lignin is set forth as a species of esterified lignin in instant Claim 2. Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to substitute the acetylated lignin taught by Wang for the lignin in the composition set forth in the claims of U.S. Patent No. 12,124,675. The motivation would have been that it is obvious to substitute equivalents known for the same purpose. (MPEP 2144.06) Wang teaches both lignin and lignin derivatives can enhance the mechanical strength and abrasion resistance of the polyurethane in which it is included (Column 1, Lines 60 – 67), thus providing obviousness of substituting one for the other in such compositions.
Wang does not expressly characterize the above described acetylated lignin is soluble in the polyurethane elastomer. However, "[p]roducts of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id. Wang and the instant claims both set forth products of identical chemical structure, namely acetylated lignin. The properties claimed by applicant, i.e. solubility in the claimed polyurethane elastomer, are thus also necessarily present in the acetylated lignin of Wang.
Response to Arguments
Applicant's arguments filed October 3, 2025 have been fully considered. The Office responds as follows:
A) The Office agrees that the present amendments to the claims are sufficient to overcome all outstanding rejections under 35 U.S.C. 112(a). Accordingly, all rejections under 35 U.S.C. 112(a) have been withdrawn.
B) Applicant argues that the references applied in the outstanding 103 and obviousness-type double patenting rejections do not teach the alkylated lignin now claimed, which is prepared by esterification of lignin with an organic anhydride or acid and which is soluble within the polyurethane elastomer. In response, the Office respectfully submits that newly applied “Stability of cross-linked acetic acid lignin-containing polyurethane” to Wang et al. is relied upon to teach these limitations. This reference teaches the concept of providing a modified lignin as an additive in a polyurethane composition (Page 294, second paragraph in first column). The modified lignin is specifically prepared by reacting spruce wood chips, i.e. milled wood lignin, with acetic acid in the presence of an acid catalyst (HCL) (Page 294, “Preparation of acetic acid lignin (AL)” in second column), thereby by providing acetic acid/acetylated lignin. Acetylated lignin is set forth as a species of esterified lignin in instant Claim 2.
Further, while Wang does not expressly characterize the above described acetylated lignin is soluble in the polyurethane elastomer,"[p]roducts of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id. Wang and the instant claims both set forth products of identical chemical structure, namely acetylated lignin. The properties claimed by applicant, i.e. solubility in the claimed polyurethane elastomer, are thus also necessarily present in the acetylated lignin of Wang.
C) Applicant’s arguments that the other applied references do not teach the claimed alkylated lignin are not persuasive, as the alleged deficiencies are addressed by Wang as detailed in the new grounds of rejection and in item B) of the present section.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MELISSA RIOJA whose telephone number is (571)270-3305. The examiner can normally be reached Monday - Friday 10:00 am - 6:30 pm EST.
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/MELISSA A RIOJA/ Primary Examiner, Art Unit 1764
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