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, 3-5, 7 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Tumler
et al (US 20130232884), cited in IDS in view of Tetart (US 20060128888), necessitated by Amendment.
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 (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.
Amendment to claim 1 is noted.
Tumler teaches that the modifying compound is glycine and is present in an amount between 0.1 and 5.0 wt. % relative to the total weight of the aqueous resin composition (see claim 5) and generally glycine the amount used is between 0 and 5 weight percent (see 0039).
However, Tumler fails to teach the claimed content of unreacted phenol.
Tetart teaches an aqueous formaldehyde/phenolic composition, used in fiber products (see Abstract, the same application as disclosed by Tumler, see claim 10), having a level of free formaldehyde of less than 0.4% (see claim 6) and free phenolic compound of less than 0.02% (see claim 7).
Tetart teaches that the aim of the process above is to obtain compositions satisfying environmental and toxicological requirements by minimizing a content of undesirable gases or of products which can affect human health (see 0008).
Therefore, it would have been obvious to a person of ordinary skills in the art before the effective filing date of the invention to produce a formaldehyde/phenolic composition with a minimal amount of residual phenol and formaldehyde in order to satisfy environmental and toxicological requirements.
Response to Arguments
Applicant’s arguments with respect to claims 1, 3-5, 7 and 8 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 GREGORY LISTVOYB whose telephone number is (571)272-6105. The examiner can normally be reached 9am-5pm EST M-F.
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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.
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GL
/GREGORY LISTVOYB/Primary Examiner, Art Unit 1765
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