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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 28 April 2026 has been entered.
The Examiner notes that any objection and/or rejection previously set forth in the final Office action filed 29 December 2025 and not repeated herein is overcome and hereby withdrawn.
Claim Objections
Claim 1 is objected to because of the following informalities: The claim recites the term “phempl” which appears to be a misspelling of the word “phenol”. Appropriate correction is required.
Claims 1 and 2 are rejected under 35 U.S.C. 103 as being unpatentable over Girgis, US 4,314,050 (“Girgis”) in view of Yokoyama et al., JP 2003/137948A (“Yokoyama”) and Kim, KR 101674969 (“Kim”)(all references previously cited).
Regarding claim 1, Girgis discloses a water-soluble phenolic formaldehyde resin which is formed by a two-step process (abstract, col. 3 lines 18-40). In the first step of the formation process a phenolic compound and formaldehyde are reacted to less than 100 percent completion (abstract, col. 3 lines 18-40, col. 6 lines 41-58). The phenolic compound may be, inter alia, resorcinol (col. 5 line 67-col. 6 line 8). The formaldehyde used in the first step corresponds to the claimed first formaldehyde. The resorcinol used in the first step corresponds to the claimed phenol. This interpretation is supported by the disclosure at paragraph 15 of the instant specification which recites, in part, the following:
“The phenols used as a raw material to produce the novolac-type phenol resin (A) are not particularly limited, and examples thereof include phenol; alkylphenols such as cresol, xylenol, ethylphenol, butylphenol, and octylphenol; polyhydric phenols such as resorcin and catechol;…” (emphasis added).
Girgis additionally teaches that the ratio of formaldehyde to resorcinol (i.e., formaldehyde:resorcinol) in the first step ranges from about 0.6 to about 2.0 (abstract) which is equivalent to a resorcinol:formaldehyde ratio range of about 0.5 to about 1.67. As such, Girgis teaches a formaldehyde:phenol ratio which overlaps, and therefore renders obvious, the instantly claimed range (see MPEP 2144.05).
The first step is conducted in the presence of an acid catalyst and produces a phenolic aldehyde resin (i.e., a novolac resin) (abstract, col. 6 lines 41-45). The first step of the disclosed two-step process corresponds to the claimed reacting phenols and first aldehyde in the presence of an acid catalyst to obtain a reaction mixture including a novolak-type phenol resin and unreacted phenols.
The second step of the two-step process disclosed by Girgis comprises continuing to react the unreacted phenol compound and aldehyde and resinous mixture formed by the first step (abstract, col. 3 lines 33-40, col. 4 line 38-col. 5 line 56). The second step is conducted in the presence of an alkali metal hydroxide catalyst (i.e., a basic catalyst) (col. 7 lines 18-29). The second step corresponds to the claimed reacting the novolac-type resin and second aldehyde in the presence of a basic catalyst. The aldehyde in the second step corresponds to the claimed second aldehyde.
Girgis teaches a ratio of basic catalyst to resin of about 0.01 to about 0.06 mole of catalyst per mole of resin (col. 7 lines 26-28). The disclosed ratio is equivalent to a molar ratio range of resin to basic catalyst of from about 16.67 to about 100 (resin:basic catalyst) which is reasonably interpreted as overlapping, and therefore rendering obvious, the claimed ratio.
Alternatively, it is noted that the claimed ratio of catalyst to product resin is a product-by-process limitation as it pertains to a feature of the process by which the resin is made and not a particular feature of the resin itself. As is set forth in MPEP 2113 even 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 as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. Further, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product.
Therefore, absent objective evidence of a nonobvious difference between the presently claimed resin and given that Girgis meets the requirements of the claimed resin, Girgis is reasonably interpreted as meeting the requirements of present claim 1.
Girgis is silent regarding the resin having an unreacted aldehyde and unreacted phenol content of 0.1% by mass or less.
Yokoyama discloses a water soluble resole-type phenol resin and its method of making wherein the resin is substantially free or contains extremely low amounts of unreacted monomer [abstract, 0001, 0004, 0005, 0010]. Yokoyama teaches that unreacted phenols cause pollution [0002]. Yokoyama teaches removing unreacted phenols from the resole-type phenol resin by subjecting the resin to atmospheric dehydration and reduced pressure dehydration steps which results in an environmentally friendly resin [0009, 0046]. In doing so, it is possible to reduce the unreacted phenol content to 0% [0009].
Kim discloses a method of producing aqueous resins formed from formaldehyde [0001, 0010, 0011, 0020-0023]. The aqueous resin may be a resole-type resin [0036]. In the disclosed method, sodium sulfite is added to the aqueous resin after polymerization to completely remove any formaldehyde including unreacted formaldehyde released from the resin [0010, 0011, 0016, 0021, 0023, 0035, 0036, 0041, 0047]. Kim teaches that formaldehyde gas is harmful to the human body [0001-0006].
Girgis and Yokoyama are both directed towards water soluble resole-type resins. In light of the teachings of Yokoyama, it would have been obvious to one of ordinary skill in the art at the time the instant invention was effectively filed to have subjected the resole-type resin disclosed by Girgis to an atmospheric dehydration step and a reduced pressure dehydration step in order to produce a resin having 0% unreacted phenol thereby producing an environmentally friendly resin. The resulting resin having 0% unreacted phenol would have met the phenol content limitation recited in claim 1.
Girgis and Kim are both directed towards water soluble resins formed from a phenol and formaldehyde. It would have been obvious to one of ordinary skill in the art at the time the instant invention was effectively filed to have modified the method of producing a water soluble resole-type phenol resin of Girgis by incorporating the sodium sulfite-based formaldehyde removal step of the method taught by Kim with the expectation of completely removing unreacted formaldehyde from the resin. Since there are no other aldehyde monomers required to produce the resin of modified Girgis, the complete removal of formaldehyde would have produced a resole-type phenol resin comprising less than 0.1 mass % of aldehyde. As such, the resin that would have been formed by the obvious modification of Girgis with Kim would have met the aldehyde content limitation recited in claim 1.
Modified Girgis is silent regarding azeotropically distilling the mixture to remove unreacted phenols and the claimed ratio of alkali metal hydroxide to novolac-type resin. However, these are product by process limitations. It is noted that 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 as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process (see MPEP 2113).
Therefore, in the absence of objective evidence of a nonobvious difference between the instantly claimed resin and the water soluble resol-type resin disclosed by modified Girgis, the resin taught by modified Girgis is reasonably interpreted as being the same as the claimed resin.
Regarding claim 2, Girgis does not teach or suggest that an organic solvent is utilized or required to form the disclosed resin. Additionally, Girgis teaches at least one examples wherein the only solvent is water (col. 11 line 25-col. 11 line 53).
Response to Arguments
Applicant's arguments filed 30 March 2026 regarding the rejection of claims 1 and 2 under 35 U.S.C. 103 as being unpatentable over US 3,956,205 to Higginbottom is persuasive. For this reason, this grounds of rejection has been withdrawn.
Applicant’s argument regarding the rejection of claims 1 and 2 under 35 U.S.C. 103 as being unpatentable over US 4,314,050 to Girgis in view of JP 2003/137948 to Yokohama et al. and KR 101674969 to Kim is not found persuasive for the following reasons. On page 6 of the arguments, Applicant asserts that Girgis is fundamentally directed and limited to a resorcinol based resin as explicitly recited in claim 1. However, the teachings of Girgis are, in fact, not limited to what is recited in Girgis’ claim 1. It is noted that MPEP 2123 establishes that a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. In the instant case, while Girgis appears to prefer the use of resorcinol as the phenolic compound in the disclosed resin, Girgis explicitly teaches that the phenolic compounds useful in the process and composition of the invention include phenol, resorcinol, and mixture thereof (col 5 line 67-col. 6 line 3). As such, it is clear that the phenolic compound of the disclosed resin may be phenol.
The above point notwithstanding, it is noted that paragraph 15 of Applicant’s specification indicates that the term “phenol” is intended to encompass a number of phenolic compounds include resorcin (i.e., resorcinol). In light of the Applicant’s specification, the term “a phenol” as used in the instant claims is understood as encompassing the resorcinol taught by Girgis. For these reasons, Applicant’s argument cannot be found persuasive.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LEE E SANDERSON whose telephone number is (571)270-1079. The examiner can normally be reached M-F: 9:30AM to 7:00PM.
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/LEE E SANDERSON/
Primary Examiner, Art Unit 3991
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