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 Status
Claims 1-28 are currently pending. Claims 12-28 are withdrawn after election made in an interview with Alexander Gabanic on 08/14/2025 in response to a restriction requirement.
Election/Restriction
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-11, drawn to a lignocellulosic composite, classified in C08L 97/02.
II. Claims 12-25, drawn to a method of making a lignocellulosic composite, classified in B27N 3/00.
III. Claims 26-28, drawn to a lignocellulosic article, classified in C08L 2203/00
The inventions are independent or distinct, each from the other because:
Inventions I and II are related as process of making and product made. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another and materially different product or (2) that the product as claimed can be made by another and materially different process (MPEP § 806.05(f)). In the instant case the product as claimed can be made by another materially different process, such as a process wherein the materials are added stepwise.
Inventions II and III are related as mutually exclusive species in an intermediate-final product relationship. Distinctness is proven for claims in this relationship if the intermediate product is useful to make other than the final product, and the species are patentably distinct (MPEP § 806.05(j)). In the instant case, the intermediate product is deemed to be useful as a composite board and the inventions are deemed patentably distinct because there is nothing of record to show them to be obvious variants.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply: the inventions have acquired a separate status in the art in view of their different classification.
During a telephone conversation with Alexander Gabanic on 08/14/2025 a provisional election was made to prosecute the invention of Group I, a lignocellulosic composite, claims 1-11. Affirmation of this election must be made by applicant in replying to this Office action. Claims 12-28 withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
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 2 and 4 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.
Claims 2 and 4 are rejected on the basis that they contain an improper Markush grouping of alternatives. A list of specified alternatives is defined as a Markush group. A Markush group is a closed group of alternatives, i.e., the selection is made from a group “consisting of” (rather than “comprising” or “including”) the alternative members. If a Markush grouping requires a material selected from an open list of alternatives (e.g., selected from the group comprising” or the recited alternatives), the claim is indefinite because it is unclear what other alternatives are intended to be encompassed by the claim. If a claim is intended to encompass combinations or mixtures of the alternatives set forth in the Markush grouping, the claim may include qualifying language preceding the recited alternatives (such as “at least one member” selected from the group), or within the list of alternatives (such as “or mixtures thereof”). See MPEP 2173.05(h).
Claim Rejections - 35 USC § 102
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.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(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.
Claims 1-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Trout et al (US 4772442 A).
Trout et al discloses a binder system for the production of molded articles, especially synthetic boards, such as particle board, waferboard, and oriented strand board [c.2, ll. 1-25].
Trout et al exemplifies a binder system comprising 25% epoxidized soybean oil (co-additive) and 75% polymethylene polyphenyl isocyanate (pMDI), wherein the binder system is blended with lignocellulose at an amount of 2.75% by weight [table III; c. 10, ll. 20-35; c. 11, ll. 34-50].
The binder system is blended with lignocellulose at an amount of 2.75% by weight, wherein the binder system comprises 25% co-additive and 75% polyisocyanate [c. 10, ll. 25-30]. The lignocellulosic composition exemplified by trout comprises 0.7% epoxidized soybean oil and 2.1% pMDI, wherein the weight ratio of the isocyanate resin to the epoxidized soybean oil is 3:1.
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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 8 is rejected under 35 U.S.C. 103 as being unpatentable over Trout et al (US 4772442 A).
The disclosure of Trout et al is described above and is applied here as such.
Trout et al teaches that, if desired, other conventional binding agents such as formaldehyde condensate adhesive resins, may be used in conjunction with the binder system [c. 2, ll. 25-27]. Trout et al further teaches phenol/formaldehyde resins as a type of conventional binding agent [c. 1, ll. 15-21]. In light of this, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to prepare the binder system of Trout et al with a phenol/formaldehyde resin.
Claims 9 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Trout et al (US 4772442 A) in further view of Liles et al (US 7553549 B2).
The disclosure of Trout et al is described above and is applied here as such.
Trout et al teaches the binder system may have a polyisocyanate to co additive ratio of 20:1 to 2:1, wherein the quantity of the binder system needed in a particular board-forming process can be determined by simple experimentation [c. 7, ll. 55-65]. Trout et al further teaches the application amount of the binder system is preferably 1.5 to 9% by weight of the overall composition [c. 7, ll. 55-65]. One having ordinary skill in the art at the time the invention was filed would appreciate that the broader teachings of Trout et al obviously embrace the ranges of pMDI and epoxidized soybean oil (ESO) of claims 9 and 10 (ex. pMDI:ESO of 2:1, comprising 4.6% of the composition corresponds to 3.1% pMDI and 1.5% ESO). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Furthermore, Trout et al teaches that, if desired, other conventional binding agents such as formaldehyde condensate adhesive resins, may be used in conjunction with the binder system [c. 2, ll. 25-27]. Trout et al further teaches phenol/formaldehyde resins as a type of conventional binding agent [c. 1, ll. 15-21]. Trout et al also teaches that other standard materials such as addition internal and external release agents and water-repellents may also be included in the lignocellulosic composition [c. 7, ll. 65-70; c. 8 ll. 1-2]. However, Trout is silent with respect to the amount of wax and phenol-formaldehyde resin that may be included in the composition.
Liles et al teaches a process for preparing an engineered wood panel [c. 2, ll. 16-21]. Liles et al teaches various polymeric resins, preferably thermosetting resins, may be employed as binders for the wood flakes or strands, wherein suitable polymeric binders include isocyanate resin and phenol formaldehyde [c. 3, ll. 40-45]. Liles et al teaches the binder resin comprises an isocyanate (preferably pMDI) adhesive at a concentration of about of 1 to about 6 wt % [c. 4, ll. 4-20]. Liles et al further teaches a wax additive is commonly employed to enhance the resistance of the OSB panels to moisture penetration, wherein the wax solids loading level is preferably in the range of about 0.5 wt % to about 3.0 wt % (based on the weight of the wood) [c. 4, ll. 4-20]. Liles et al teaches the binder resin may also comprise powdered phenol-formaldehyde resin, present in a concentration of about 0.2 wt % to about 4 wt %, although the desired amount will depend on the wood species and desired properties; determining such desired amount in view of these factors is well within the level of a person of ordinary skill in the art [c. 4, ll. 4-20]. Liles et al further teaches the powdered phenol-formaldehyde resin is added primarily to reduce strand pops in the finished surface due to curled stands in the mat [c. 4, ll. 4-20].
Trout et al is open to additional materials such as phenol/formaldehyde resins and water-repellents in the lignocellulosic composition for the preparation of synthetic boards, such as OSB. Liles et al teaches that wax is a conventional additive that is commonly employed to enhance the moisture resistance of OSB panels. Furthermore, Liles et al teaches that powdered phenol-formaldehyde resins are added to compositions for the preparation of synthetic boards in order to reduce strand pops in the finished surface, which improves the surface appearance of the finished product. In light of this, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to prepare the composition of Trout et al with a wax solid loading level of about 0.5 wt % to about 3.0 wt % and a powdered phenol-formaldehyde resin loading level of about 0.2 wt % to about 4 wt %. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Allowable Subject Matter
Claim 11 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
The closest prior art of record is Trout et al (US 4772442 A). Trout et al teaches the binder system may have a polyisocyanate to co additive (ESO) ratio of 20:1 to 2:1 [c. 7, ll. 55-65]. In order to satisfy the ranges for pMDI and ESO of instant claim 11, the ratio of pMDI to ESO must be >2:1, which lies outside the range of ratios taught by Trout et al.
The examiner has identified no prior art, alone or in combination wherein a pMDI:ESO ratio of >2:1 is taught or suggested.
Conclusion
Additional relevant prior art has been cited on the PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HOLLEY GRACE HESTER whose telephone number is (703)756-5435. The examiner can normally be reached Monday - Friday 9:00AM -5:00PM.
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/Holly Hester/
Examiner Art Unit 1766
/RANDY P GULAKOWSKI/ Supervisory Patent Examiner, Art Unit 1766