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 § 103
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 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Tumler et al (US 20130232884), cited in IDS.
Tumler teaches a method of making a modified water soluble phenolic resin composition, where 10.626 mol of phenol and 21.228 mol of formaldehyde (i.e. Molar Ratio F/P=2) react in an aqueous solution at the presence of sodium hydroxide (see 0050).
After reaction completion, 0.876 mol of glycine is added (see 0052).
Note that the procedure above covers all steps recited in instant claim 5.
Regarding claims 2-3 and 6-7, amount of free formaldehyde in the final composition is less than 0.1% mass and amount of free phenol is 1.5% mass (see Table 2, Example 3 at page 4).
In reference to claims 4 and 8, pH of the final composition is 8.3 (see Table 2, Example 3 at page 4).
Note that in Example 3 Tumler discloses higher amount of glycine added, compare to the claimed 0.001- 0.1 mol% range with respect to phenol.
However, the reference teaches that glycine amount used in the reaction above is between 0 and 5 weight percent (see 0039), which covers the claimed range.
A genus does not always anticipate a claim to a species within the genus. However, when the species is clearly named, the species claim is anticipated no matter how many other species are additionally named. Ex parte A, 17 USPQ2d 1716 (Bd. Pat. App. & Inter. 1990) See also MPEP 2131.02.
Therefore, it would have been obvious to a person of ordinary skills in the art before the effective filing date of the invention to expect claimed amount of glycine added to Tumler’s reaction mixture, since it clearly disclosed in the reference.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GREGORY LISTVOYB whose telephone number is (571)272-6105. The examiner can normally be reached 9am-5pm EST M-F.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Riviere Kelley can be reached at (571) 270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
GL
/GREGORY LISTVOYB/Primary Examiner, Art Unit 1765
Prosecution Insights