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 .
Claims 23, 32, 39, 43, 45-74, are pending and being examined.
Response to Amendment
The previous rejection of Claims 38-42 and 44, under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite is/are withdrawn in light of the Applicant’s amendments.
The previous rejection of Claim(s) 23-44 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).
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 55-60 and 68-72, are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depend.
Claims 55-60, recite “wherein the composition comprises a constituent-C…” However, claim 23 recites the composition comprises a constituent-A…and wherein the composition optionally comprises a constituent-C…” The claims appear to be replacing constituent-A of claim 23 with constituent-C and thus, fail to further limit the claim. It is suggested the claims be rewritten to recite “wherein the composition further comprises the constituent-C…”
Claims 68-72, are dependent claims which fail to alleviate the issues above.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Allowable Subject Matter
Claims 55-60 and 68-72, would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Claims 23, 32, 39, 43, 45-54, 61-67, 73, and 74, are allowed.
The following is an examiner’s statement of reasons for allowance:
The closest prior art is WO 2008/068180 A1 to Schonfelder et al. (hereinafter Schonfelder). 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 Mn of 2330 g/mol and 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). 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). 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).
Schonfelder does not teach the apparent viscosity of at least 450 and at most 8000 mPa.s. because, as shown by PLL-2 of the Applicant’s examples, an apparent viscosity of 450 mPa.s results in a polylysine having a Mn of 2678 g/mol, and a Mw of 12,599 g/mol, and when compared to the hyperbranched poly(lysine) example of Schonfelder, which has a lower Mn of 2330 g/mol, and a lower Mw of 11,050 g/mol, one skilled in the art would have a reasonable expectation for the hyperbranched poly(lysine) of Schonfelder to be inherently be lower than 450 mPa.s. since the molecular weights are lower than PLL-2 of the Applicant’s examples, and it also appears from the Applicant’s examples that the polylysine properties are directly related to the Mn, Mw, and polydispersity (Mw/Mn of 4.71 to 5.84) properties.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
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 HA S NGUYEN whose telephone number is (571)270-7395. The examiner can normally be reached Mon-Fri, Flex schedule 7:30am-4:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached at (571)272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HA S NGUYEN/Primary Examiner, Art Unit 1766
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