DETAILED ACTION
A request for continued examination under 37 CFR 1.114 was filed in this application after a decision by the Patent Trial and Appeal Board, but before the filing of a Notice of Appeal to the Court of Appeals for the Federal Circuit or the commencement of a civil action. 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examination under 37 CFR 1.114 and the fee set forth in 37 CFR 1.17(e) has been timely paid, the appeal has been withdrawn pursuant to 37 CFR 1.114 and prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant’s submission filed on 11/28/25 has been entered.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . Per amendment dated 11/28/25, claims 1, 4-6, 12-14, and 25 are currently pending in the application.
Claim Objections
Claim 1 is objected to because of the following:
Step (iv) is claim 1 recites the phrase “the product obtained under (iii)”. Although the claim does not rise to the level of indefiniteness under 112(b), step (iii) should be amended to provide for proper antecedent basis for the phrase.
Appropriate correction and/or clarification is required.
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, 4, 5, 6, 12-14, 25 are rejected under 35 U.S.C. 103 as being unpatentable over Jackson et al. (WO 2013/030390 A1), in view of Mandal et al. (US 2019/0169474 A1) (references of record).
Regarding claims 1, 4, 5, 12, 13, 25, Jackson teaches aqueous binder compositions comprising, as essential components, a carbohydrate component (a) and an amine component (b) and water, wherein the carbohydrate component (a) comprises one or more pentose(s), in an amount of 3 to 70 wt.% of the carbohydrate component, wherein the pentose(s) may be obtained by hydrolysis of the cellulose source (reads on cellulose hydrolysate of claim 5) (Ab., page 4, line 25-27, Table 1, Example 3, ref. claims 7 and 8), wherein said amine component (b) may be organic amines or an ammonium salts of a polycarboxylic acid, i.e. equivalence thereof (the latter species reads on claimed cross-linker) (page 3, lines 26-30), and wherein said component (b) may be included in an amount within the claimed range (Examples). It is noted that according to the instant specification, the term “carboxylic acid” includes monocarboxylic acids and polycarboxylic acids [0022].
Jackson teaches a binder composition having solids content at 5 to 95 wt.% (page 2, line 30-page 3, lines 9), and working examples are directed to binder compositions comprising a carbohydrate component comprising xylose, i.e., a C5 sugar/monosaccharide, and an amine component (b) (hexamethylene diamine-HMDA) in amounts within the presently claimed range of the cross-linker. Thus, Jackson’s binder compositions include only water, a carbohydrate component, and an amine component as essential components therein (Ab., Table 1). Additionally, Jackson teaches that the aqueous binder composition may be a suspension, use thereof for bonding mineral wool, particles, fibers etc., curing of the binder by heat treatment, and an embodiment wherein the binder formulation is dropped on filter pads and heated to 140oC (page 2, lines 28-29, page 12, lines 25-page 13, line 10, page 6, lines 29-32, Example 2).
Jackson is silent with regard to a method comprising (1) obtaining a binder composition consisting of water, a carbohydrate component, and a crosslinker as claimed, and (2) adding an amine component selected from urea or urea-based compounds for preparing a composite product as in the claimed invention.
At the outset, it is noted that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP § 2144.05.
With regard to (1), it is noted that Jackson’s binder compositions may be formulated from only water, a carbohydrate component, and an amine component, such as ammonium salt of a polycarboxylic acid, and meets the compositional limitations of the claimed method step (i).
With regard to (2), in a related field of endeavor, the secondary reference to Mandal teaches aqueous curable carbohydrate-based binders for bonding ligncellulosic products [0056], comprising a monosaccharide, disaccharide or polysaccharide as the carbohydrate, in an amount of at least 5 wt.% to 90 wt.% of the binder solids. The reference further teaches that the presence of urea (reads on urea-based compound) in an amount of at least 2 wt.% to 90 wt.% of the wt. of curable aqueous binder composition [0006], provides for additional stability to the final aqueous dispersion, and may impart additional resistance to microbial attack and flame retardant properties on the resulting engineered composite products [0038]-[0039].
Given the teaching in Mandal of advantages of urea in aqueous curable carbohydrate-based binders, and the teaching in Jackson on aqueous binder compositions and essential components therefor, it would have been obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention, to (i) prepare a binder composition from water, a carbohydrate component comprising a C5 sugar, and an ammonium salt of a polycarboxylic acid, (ii) add Mandal’s urea (directly or as an aqueous solution of urea) to the prepared binder composition, so as to provide for the disclosed advantages of urea, (iii) apply the resultant composition onto mineral wool, particles and/or fibers, to provide for a treated product, and (iv) cure the treated product by applying heat, thereby obviating the method steps as recited in claims 1 and 12. Selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results; In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930). MPEP 2144.04.
Additionally, with regard to the preamble “A method for reducing the level of furfural and/or hydroxymethylfurfural in a previously prepared carbohydrate-based binder composition and/or escaping from the previously prepared carbohydrate-based binder composition in the course of cross-linking and/or curing thereof” (cf. independent claim 12), one of ordinary skill in the art would reasonably expect the addition of Mandal’s urea in any amount within the disclosed range, including in amounts within the scope of the claimed invention, to Jackson’s binder comprising water, pentose and ammonium salt of a carboxylic acid as essential components, to provide for all advantages of the combination, including that of reducing the level of furfural and/or hydroxymethylfurfural in a previously prepared binder composition as claimed, absent evidence to the contrary.
Furthermore, noting that Jackson teaches that the pentose(s) may be obtained by hydrolysis of the cellulose source, the limitation “the carbohydrate component derived from higher molecular weight carbohydrate” recited in claims 1 and 12 is a product-by-process limitation nested in a process claim. When a product recited in product-by-process format reasonably appears to be the same as or obvious from a product of the prior art, the burden is on applicant to show that the prior art product is in fact different from the claimed product, even though the products may be made by different processes. In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985), MPEP 2113.
With regard to claims 6 and 14, the calculated amount of carbohydrate component, based on the dry weight of the composition, in Table 1 falls within the claimed range (e.g., row 6 after the header).
Response to Arguments
In view of the amendment dated 11/28/25, the rejections of record are withdrawn and rewritten herein above, relying on the art of record. Applicant’s arguments have been duly considered.
Referring to Mandal at FIG. 1 and paragraphs [0054] and [0064], Applicant argues that Mandal clearly teaches dissolving urea first, then adding other binder components to the solution (i.e., a different order/sequence of steps than claims 1 and 12 as amended), that neither Jackson nor Mandal teaches or suggests the claimed step of adding urea or a urea-based compound to a previously prepared carbohydrate-based binder composition, the proposed combination fails to arrive at the inventions of the amended claims.
In response, for reasons stated previously and in the rejections herein above, Jackson teaches a binder composition that may include only water, a carbohydrate component based on C-5 sugars, and ammonium salt of a polycarboxylic acid as components therein, including a composition that meets the limitations of claimed step (i). In addition, Mandal teaches that urea may be added to the aqueous binder composition, for providing additional stability to the final aqueous dispersion, imparting additional resistance to microbial attack and flame-retardant properties on the resulting engineered composite products, thereby obviating claimed method step (ii).
Furthermore, according to paragraph [0054] in Mandal, the composition may be obtained by the method as set out in flowchart 10 of Fig. 1, i.e., not mandatory, wherein urea is first dissolved in water and then added to the carbohydrate binder. Noting that Mandal does not teach way from adding urea directly, the transitional phrase “comprising” in claims 1 and 12 is also open ended to other unrecited method steps therein, and does not necessarily exclude the step of dissolving urea in water prior to adding it to the binder composition. Thus, adding urea (as a solution) to an aqueous carbohydrate binder, as taught by Mandal, does not amount to a different order/sequence of steps than that of claims 1 and 12 as argued by Applicant. Even so, as stated in the rejection above, selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results; In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930). MPEP 2144.04. Alternatively, a skilled artisan would have also found it obvious to add urea directly to an aqueous carbohydrate binder, such as that of Jackson’s, given the teaching in Mandal on advantages of urea, absent objective evidence to the contrary.
Conclusion
Any inquiry concerning this communication or earlier communications from the
examiner should be directed to Satya Sastri at (571) 272 1112. The examiner can be reached Monday-Friday, 9AM-5.30PM (EST). If attempts to reach the examiner by telephone
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assigned is (571) 273 8300.
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/Satya B Sastri/
Primary Examiner, Art Unit 1762