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 .
Claim Rejections - 35 USC § 112
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 38-42 and 44, 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 38, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claims 39-42 are dependent claims which fail to alleviate the issues above.
Claim 44 recites a “method of producing…, the method comprising providing the composition as claimed in claim 23. It is unclear how the step of “providing” as the only step would produce any of the recited articles in the claim. It appears that the claim is missing the “subjecting the composition to heat/pressure” step to form the article as similarly cited in claim 38.
Claim Rejections - 35 USC § 102/103
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.
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.
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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.
Claim(s) 23-44 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over WO 2008/068180 A1 to Schonfelder et al. (hereinafter Schonfelder).
Regarding claims 23-44, Schonfelder teaches a binder mixture comprising hyperbranched polymers with optional amino resins and optional solvent (See abstract). Specifically, in Example Poly5, a hyperbranched poly(L-lysine) is obtained with a Mw of 11,050 g/mol (page 6 of pdf translation) that is further mixed with a water solvent (Table 1), to form a binder mixture. (page 7 of pdf translation). A wood based material is made by applying 3% of the above binder to dry fibers and pressing at a temperature of 200 deg C with a pressing time of 120 seconds. (page 6-7), which meets the wt% cited in claim 32. Schonfelder further teaches the hyperbranched polymers have a degree of branching of preferably from 0.35 to 0.75 (page 3), and the solvent can be 0% (page 3). Schonfelder further teaches that the above hyperbranched poly(lysine) is dissolved in water (See page 6), which demonstrates that the gel content is 0% because the Applicant’s specification has defined the “gel content” as the fraction of polylysine that is insoluble in water. Schonfelder also teaches the hyperbranched polylysine has an acid number of 1-500 mg KOH/g and an amine number of 1-500 mg KOH/g (page 3), the wood-based material may be wood strips, wood chips, or wood fibers (page 3), such as cellulose-containing wood fibers/chips (page 5). Schonfelder teaches the wood fiber board has a thickness of 8 mm (page 6), which meets claim 37.
In regard to the claimed apparent viscosity, one skilled in the art would have a reasonable expectation for the hyperbranched polylysine to have the claimed properties of the claimed invention because Schonfelder teaches a substantially identical hyperbranched polylysine composition dissolved in water to the claimed invention such as the hyperbranched polylysine having the same Mw within the claimed Mw range with the degree of branching and Applicant further cites in their specification that the apparent viscosity is measured by the hyperbranched polylysine with the claimed Mw dissolved in water. See MPEP 2112.01. (Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977)).
In the alternative, if it is found that the reference does not anticipated the claims, the claimed invention would have been obvious to one ordinarily skilled in the art before the effective filing date of the claimed invention because, as cited above and incorporated herein, Schonfelder teaches a hyperbranched polylysine with a Mw of 11,050 g/mol, the hyperbranched polymers has a degree of branching of preferably from 0.35 to 0.75 (page 3), the solvent can be 0% (page 3), the above hyperbranched poly(lysine) is dissolved in water (See page 6), which demonstrates that the gel content is 0% because the Applicant’s specification has defined the “gel content” as the fraction of polylysine that is insoluble in water and also teaches the hyperbranched polylysine has an acid number of 1-500 mg KOH/g and an amine number of 1-500 mg KOH/g (page 3), and the wood-based material may be wood strips, wood chips, or wood fibers (page 3), such as cellulose-containing wood fibers/chips (page 5).
Thus, one skilled in the art would envisage the composition of the hyperbranched polylysine with the degree of branching, gel content and apparent viscosity, within the claimed ranges. (See MPEP 2144.08), and/or overlapping ranges. (See MPEP 2144.05, “where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists”).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HA S NGUYEN whose telephone number is (571)270-7395. The examiner can normally be reached Mon-Fri, Flex schedule 7:30am-3:45pm.
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/HA S NGUYEN/Primary Examiner, Art Unit 1766