Detailed Office Action
Notice of Pre-AIA or AIA Status
1. 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
2. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 22 December 2025 has been entered.
Prior Art Rejection
3. 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.
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.
4. Claims 1-6 and 8-11 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2012/018936 A1 in view of McLaughlin et al. (US 4,257,995) or WO 96/01293.
WO 2012/018936 A1 discloses adhesives for lignocellulosic composite articles comprising polyisocyanates, such as MDI and pMDI, including prepolymers thereof (see paragraphs [0025] and [0026]); tackifiers, such as homopolymers or copolymers of vinyl acetate having applicants’ claimed molecular weight (see paragraphs [0075] and [0081]); parting agents (see paragraph 0061]), and wax (see paragraph [0040]).
5. The primary reference further discloses within paragraph [0021] that the isocyanate component may be used in combination with other binder components, such as formaldehyde resins and protein-based adhesives. Furthermore, within paragraph [0088], it is disclosed that the combined amount of binder component (for example, isocyanate component or mixture of isocyanate component and the aforementioned other resins or adhesives) and tackifier is such that each of the binder component and tackifier is present in an amount greater than zero parts by weight relative to 100 parts by weight of lignocellulosic pieces. Therefore, in view of these disclosures, the primary reference allows for extensive latitude with respect to the amounts of the isocyanate component and tackifier component that may be employed in the adhesive of the reference.
6. Though the primary reference discloses parting agents, understood within the art as corresponding to release agents, the reference is silent regarding the specific use of phosphate esters; however, the use of phosphate esters, corresponding to those claimed, as components promoting release from surfaces that the composite articles contact during manufacture, was known at the time of invention. This position is supported by the teachings within column 1, lines 51+ and columns 2 and 3 within McLaughlin et al. and pages 2-7 within WO 96/01293. Accordingly, the position is taken that it would have been obvious to incorporate phosphate esters into the adhesive of the primary reference for their art recognized purpose of promoting release from the aforementioned surfaces. Furthermore, regarding the claimed amount of tackifier and the claimed weight ratio of tackifier to phosphate ester of claim 1, in view of the position taken above within paragraph 5 concerning the extensive latitude afforded by the primary reference with respect to the amounts of isocyanate component and tackifier and since the functions of the tackifier and phosphate ester within isocyanate-based binders were known, the position is taken that determining the optimal ratio of one component to the other would have been obvious, requiring only routine experimentation, well within the capabilities of the skilled artisan. Regarding claim 9, in accordance with MPEP 2144.04(IV)(C), the position is taken that any order of mixing the components would have been obvious. This position is supported by In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results) and In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) (selection of any order of mixing ingredients is prima facie obvious).
Examiner’s Position Regarding Applicants’ Response to the Prior Art Rejection
7. In view of applicants’ deletion of the weight percent range with respect to the isocyanate functional component (component (a)) of the binder composition, applicants’ response of 24 July 2025, which is based on the previously claimed (and now deleted) weight percent range of component (a), is no longer considered to be relevant with respect to overcoming the prior art rejection.
Conclusion
8. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Rabon A Sergent whose telephone number is (571)272-1079. The examiner can normally be reached on Monday through Friday from 9:00 AM until 5:00 PM, ET.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Riviere Kelley, can be reached at telephone number (571)270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RABON A SERGENT/ Primary Examiner, Art Unit 1765