DETAILED ACTION
In Request for Continued Examination filed on 04/30/2026, claims 1-5, 8-9, 13-15, and 17 are pending. Claim 6-7 are cancel. Claim 1 is currently amended. Claims 1-5, 8-9, 13-15, and 17 are pending in the current Office 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 .
Status of Previous Objections/Rejections
Previous 35 USC 112(a) rejections have been withdrawn based on the Applicant’s amendment.
Previous 35 USC 112(b) rejections have been withdrawn based on the Applicant’s amendment.
35 USC 102 rejection is withdrawn based on the Applicant’s amendment.
35 USC 103 rejections are withdrawn in view of the Applicant’s amendment.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 04/30/2026 has been entered.
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 1-5, 8-9, 13-15, and 17 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.
The term “approximately” in claims 1, 3-5, 8, and 15 is a relative term which renders the claim indefinite. The term “approximately” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. In this case, it is unclear as to what is the standard deviation to the term “approximately”. For example, claim 1 recites “approximately 220°C”, it is unclear if 205°C would be considered as “approximately 220°C” which render the claim as indefinite.
Claims 2-5, 8-9, 13-15, and 17 are rejected by virtue of depended upon a rejected claim 1.
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 3-5 and 15 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 depends.
Claim 3 recites the limitation “wherein the fire-retardant comprises boric acid and the press temperature is equal to or no more than approximately 168°C” and fails to include all of the limitations of claim upon which it depends (claim 1). Claim 1 recites “wherein the fire-retardant comprises zinc borate and the press temperature is approximately 220°C” which already claimed a specific fire-retardant material and a specific temperature. Claim 3 now recites “the press temperature is equal to or no more than approximately 168°C” which excluded the press temperature claimed in claim 1 which fails to include all of the limitations of the claim upon which it depends upon.
Claim 4 recites the limitation “the press temperature is approximately 168°C” and fails to include all of the limitations of claim upon which it depends (claim 1). Claim 1 recites “the press temperature is approximately 220°C” which already claimed a specific temperature. Claim 3 now recites “the press temperature is approximately 168°C” which excluded the press temperature claimed in claim 1 which fails to include all of the limitations of the claim upon which it depends upon.
Claim 5 recites the limitation “the press temperature is approximately 150°C to approximately 170°C” and fails to include all of the limitations of claim upon which it depends (claim 1). Claim 1 recites “the press temperature is approximately 220°C” which already claimed a specific temperature. Claim 3 now recites “the press temperature is approximately 150°C to approximately 170°C” which excluded the press temperature claimed in claim 1 which fails to include all of the limitations of the claim upon which it depends upon.
Claim 15 recites the limitation “the press temperature is approximately 175°C” and fails to include all of the limitations of claim upon which it depends (claim 1). Claim 1 recites “the press temperature is approximately 220°C” which already claimed a specific temperature. Claim 3 now recites “the press temperature is approximately 175°C” which excluded the press temperature claimed in claim 1 which fails to include all of the limitations of the claim upon which it depends upon.
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.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-2, 8-9, 14 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over US2020/0392412 (“Jin et al” hereinafter Jin), US2015/0151449A1 (Birkeland) and US2018/0319037 (“Kalwa et al” hereinafter Kalwa).
Regarding Claim 1, Jin teaches a method for producing a fire-retardant treated wood composite panel without fire-retardant build-up (abstract), comprising the steps of:
treating a first portion of wood strands (Figure 2 and [0233], a second batch of surface furnish, which formed the outer layer/surface layer 114, may be placed into the blender) with a fire-retardant with a melting point ([0233], the surface layer furnish treated with both water-soluble flame-retardant and flame-retardant powder and all materials have a melting point), wherein the fire retardant is applied to the first portion of wood strands at a wet bin outfeed ([0233], the surface layer furnish may be sprayed or otherwise coated in an aqueous solution containing the water-soluble flame-retardant, which formed a wet bin. However, the slightly dampened surface furnish is then mixed with the flame-retardant powder at the outfeed);
treating a second portion of wood strands (Figure 2, core layer 116) with the fire-retardant with a melting point ([0232], a batch of core layer furnish is placed into the blender. The core layer furnish may then be sprayed or otherwise coated in an aqueous solution containing the water-soluble flame-retardant. All material has a melting point);
blending the second portion of wood strands with chemicals and additives separate from the first portion of wood strands ([0232], a batch of core layer furnish is placed into the blender and the slightly dampened furnish may be mixed with any desired adhesives, waxes, and additional additives);
forming a strand mat with at least a first layer (Figure 2, outer layer 114) with said first portion of wood strands ([0233], the second batch of surface furnish) treated with a first amount of the fire-retardant ([0256]-[0258], the formation of outer layer comprises of a two step processes where the strand is sprayed with a concentrated aqueous solution of a flame-retardant and the moistened strand is further blended with a flame-retardant powder), and a second layer (Figure 2, core layer 116) with said second portion of wood strands ([0232], the first batch of surface furnish) treated with a second amount of the fire-retardant ([0256]-[0258], the formation of core layer comprises of a one step processes of spraying a concentrated aqueous solution of a flame-retardant), wherein the first amount of the fire-retardant in the first layer is different from the second amount of the fire-retardant in the second layer ([0258], whereby strands treated with water-soluble flame-retardant (equipped with a lower level of fire-retardant) form the core layer, while strands treated with water-soluble flame-retardant and flame-retardant powder (higher overall fire-retardant concentration) form the outer layers);
applying pressure and heat by a press at a press temperature to the strand mat to form a wood composite board ([0258], the mat is conveyed to a press whereby the wood particles are compressed with sufficient pressure and temperature to cure the bonding resin to form a composite wood product); and
processing the wood composite board to form one or more fire-retardant treated composite wood panels ([0258], a composite wood product is formed with a core layer and a surface layer treated with different concentration of fire retardant);
wherein the fire-retardant comprises zinc borate ([0102], zinc borates is suitable flame-retardant powder).
Jin further teaches the second batch of surface furnish, which formed the surface layer, may further be mixed with any desired adhesives, waxes, and additional additives. Jin fails to teach blending the first portion of wood strands with a fast-curing adhesive system comprising a 1-component adhesive with a latent catalyst or accelerator.
However, Birkeland teaches blending the wood strands with a fast-curing adhesive system comprising a 1-compoennt adhesive with a lateen catalyst or accelerator ([0031], adding adhesives materials including additives such as borax, which is an accelerator).
Jin and Birkeland are considered to be analogous to the claimed invention because both are in the same field of manufacturing improved wood product. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modified the method of Jin such that the it teaches the above discussed limitation as taught by Birkeland to improve reactivity, water resistance, and strength and enhanced cure of the adhesive ([0031]).
The modified Jin fails to teach the press temperature is approximately 220°C.
However, in the same field of making oriented strand board with zinc borate as flame protection agent ([0051]), Kalwa teaches the press temperature is approximately 220°C ([0053], the pressing of the glued wood strands takes place at temperatures between 200 and 250° C., preferably 220 and 230° C. to give an OSB-wood-composite board).
Jin and Kalwa are considered to be analogous to the claimed invention because both are in the same field of manufacturing, improved wood product with zinc borate as flame protection agent. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modified the method of Jin such that the it teaches the above discussed limitation as taught by Kalwa so that the wood strands are torrefied by heating in a low-oxygen-content or oxygen-free atmosphere ([0038]) so the material does not combust, instead of which there is a loss of mass on account of the decomposition of wood components ([0020]). Since the claimed range overlaps or lies inside ranges disclosed by the prior art, a prima facie case of obviousness exists. Please see MPEP 2144.05(I) and In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976) for further details.
Regarding Claim 2, the modified Jin teaches the method of claim 1, wherein the fire-retardant and press temperature are selected so that the melting point of the fire-retardant is above the press temperature (Jin, [0102], zinc borates is used as a flame-retardant powder and Jin discloses the pressing temperature is 204°C [0259], which is below the melting point of the fire-retardant zinc borate which has a melting point of 1150°C according to the instant specification (Pages 3, line 25-page 4, line 1)).
Regarding Claim 8, the modified Jin teaches the method of claim 1, wherein the fire-retardant is applied in an amount of approximately 10% to approximately 20% of the weight of the wood strands (Jin, [0256], The amount of FR solution sprayed onto the strands is between 4 and 15%).
Since the claimed range overlaps or lies inside ranges disclosed by the prior art, a prima facie case of obviousness exists. Please see MPEP 2144.05(I).
Regarding Claim 9, the modified Jin teaches the method of claim 1, wherein the wood strands are treated with fire-retardant by applying fire-retardant at multiple points in the strand treatment process (Jin, [0171], the water-soluble flame retardant may be dispersed in clumps, more localized to the exterior of the layer, or formed as a gradient increasing in concentration towards the exterior of the layer, depending upon the desired end product and use ).
Regarding Claim 14, the modified Jin teaches the method of claim 1, further comprising the step of applying a release agent to a top surface of a bottom screen prior to the step of applying pressure and heat (Jin, [0258], optional 1-2% emulsion wax release agent are sprayed onto the strands and uniformly blended prior to the step of pressing and heating),
Regarding Claim 17, the modified Jin teaches a fire-resistant treated composite wood product produced by method 1 (Jin, [0007]. The patentability of product by process claims is determined by the patentability of the product. The product of Jin appears to be identical to that which is claimed. The burden is upon applicants to provide evidence that the prior at product of Jin does not possess the characteristics of the claimed product. MPEP 2113 (II)).
Claim(s) 3-5 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over US2020/0392412 (“Jin et al” hereinafter Jin), US2015/0151449A1 (Birkeland), and US2018/0319037 (“Kalwa et al” hereinafter Kalwa) as applied to claim 1 above, and further in view of Preston (US2004/0028934A1).
Regarding Claim 3, the modified Jin teaches the method of claim 1, wherein the fire-retardant comprises boric acid (Jin, [0012], the flame-retardant powder includes a boric acid), Jin further teaches the press temperature is selected so that sufficient temperature to cure the bonding resin is obtained [0258] but fails to explicitly teach the press temperature is equal to or no more than approximately 168°C.
Preston discloses an analogous method of forming a fire-retardant wood-based composite (Abstract) wherein the pressing temperature used is based on the desired thickness and density of the product, size and type of the wood particles, moisture content of the particles, and type of binder ([0059]). Preston further teaches the pressing temperature is selected so that sufficient temperature to cure the bonding resin is obtained [0059], wherein typical press temperatures vary from 93°C to 290°C [0065]; however, pressing temperatures greater than 230°C are undesirable since they can cause charring of the wood particles ([0059]).
As the desired thickness and density of the product, size and type of the wood particles, moisture content of the particles, and type of binder used are variables that can be modified by adjusting said pressing temperature, as evidenced by Preston ([0059]), the precise pressing temperature would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed pressing temperature cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the pressing temperature in the method disclosed by the modified Jin to obtain desired balance between thickness and density of the product, size and type of the wood particles, moisture content of the particles, and type of binder (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Regarding Claims 4, 5, and 15, the modified Jin teaches the method of claim 1, Jin further teaches the press temperature is selected so that sufficient temperature to cure the bonding resin is obtained [0258] but fails to explicitly teach wherein the press temperature is approximately 168°C/150°C/175°C, as recited in claims 4, 5, and 15 respectively.
Preston discloses an analogous method of forming a fire-retardant wood-based composite (Abstract) wherein the pressing temperature used is based on the desired thickness and density of the product, size and type of the wood particles, moisture content of the particles, and type of binder [0059]. Preston further teaches the pressing temperature is selected so that sufficient temperature to cure the bonding resin is obtained [0059], wherein typical press temperatures vary from 93°C to 290°C [0065]; however, pressing temperatures greater than 230°C are undesirable since they can cause charring of the wood particles [0059].
As the desired thickness and density of the product, size and type of the wood particles, moisture content of the particles, and type of binder used are variables that can be modified by adjusting said pressing temperature, as evidenced by Preston ([0059]), the precise pressing temperature would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed pressing temperature cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the pressing temperature in the method disclosed by the modified Jin to obtain desired balance between thickness and density of the product, size and type of the wood particles, moisture content of the particles, and type of binder (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over US2020/0392412 (“Jin et al” hereinafter Jin), US2015/0151449A1 (Birkeland), and US2018/0319037 (“Kalwa et al” hereinafter Kalwa) as applied to claim 1 above, and further in view of US2020/0247002 (“Merrick et al” hereinafter Merrick).
Regarding Claim 13, the modified Jin discloses the method of claim 1, but fails to explicitly discloses the method comprising the step of applying an overlay to a top surface of the strand mat and/or a bottom surface of the strand mat prior to the step of applying pressure and heat.
However, Merrick teaches the method comprising the step of applying an overlay to a top surface of the strand mat and/or a bottom surface of the strand mat prior to the step of applying pressure and heat (Figure 5 and [0005], one or more layers of an engineered, cellulose or non-cellulose (e.g. paper) based overlay (applied to the surface over, under, or between the fines layer) may also be added).
Jin and Merrick are considered to be analogous to the claimed invention because both are in the same field of manufacturing improved wood product. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modified the method of the modified Jin such that the it teaches the above discussed limitation as taught by Merrick to improved surface appearance ([0005]).
Response to Arguments
Applicant’s arguments with respect to claim(s) have been considered but are moot because they pertain to new limitations and have been rejected as stated above.
The Applicant argues the amount to the concentrated aqueous solution of flame-retardant is the same for the furnish in both steps. The moistened strands in both steps have the same amount of FR solution sprayed onto them, with the only difference being the addition of a different kind of flame retardant (the flame- retardant powder) to the strands moistened by the concentrated aqueous solution. In contrast, claim 1, as amended, provides that the same flame retardant is present in both the first and second portions of wood strands, but in different amounts. Jin teaches that the same flame retardant (the concentrated aqueous solution) is present in the same amount in both steps; the addition of a separate type of flame retardant in the second step is not relevant.
The Examiner respectfully disagreed. Claim 1 uses the transitional phrase “comprising” which is inclusive or opened ended and does not exclude additional, unrecited elements or method steps (See MPEP 2111.03(I)). Thus, Jin teaches the additional step of adding flame retardant powder into the first portion of the wood strands to form the surface layer is not excluded by the claimed limitation of claim 1. Jin discloses the outer layer formed by the second batch of surface furnish were sprayed with a concentrated aqueous solution of a flame-retardant and the moistened strand is further blended with a flame-retardant powder ([0256]-[0258]) while the core layer formed by the first batch of core furnish were sprayed with a concentrated aqueous solution of a flame-retardant only ([0232]). Thus, strands treated with water-soluble flame-retardant (equipped with a lower level of fire-retardant) form the core layer, while strands treated with water-soluble flame-retardant and flame-retardant powder (higher overall fire-retardant concentration) form the outer layers ([0258]) does read upon the claimed limitation as the overall amount of fire-retardant used to treat the first portion and the second portion is different.
Conclusion
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XINWEN (CINDY) YE
Examiner
Art Unit 1754
/FARAH TAUFIQ/Primary Examiner, Art Unit 1754
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