DETAILED ACTION
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 5/19/26, claims 1, 4-6, 12-14, 24-29 are currently pending in the application.
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, 25-29 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, 26, 28, 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 including (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 water, a carbohydrate component, and an amine component, such as ammonium salt of a polycarboxylic acid, that could meet 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, or alternatively, consisting of the method steps recited in claim 28. 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).
Regarding claim 26, the transitional phrase “consisting essentially of” in the claim limits the scope of a claim to the specified materials or steps “and those that do not materially affect the basic and novel characteristic(s)” of the claimed invention. In re Herz, 537 F.2d 549, 551-52, 190 USPQ 461, 463 (CCPA 1976). For the purposes of searching for and applying prior art under 35 U.S.C. 102 and 103, absent a clear indication in the specification or claims of what the basic and novel characteristics actually are, “consisting essentially of” will be construed as equivalent to “comprising.”
Regarding claims 27 and 29, although Jackson fails to teach a method explicitly comprising/consisting of a binder composition consisting of a carbohydrate component and a crosslinker in a dry weight ratio of 85:15, nevertheless, it is the examiner' s position that the amount of crosslinker in a binder composition is a result effective variable because changing it will clearly affect the type of product obtained. See MPEP § 2144.05 (B). Case law holds that “discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.” See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Thus, it would have been obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention, to utilize appropriately effective amount of crosslinker, such as ammonium salt of a polycarboxylic acid, including in an amount within the scope of the present claims so as to produce desired end results, absent evidence to criticality for the claimed ratio.
Response to arguments
In view of the amendment dated 5/19/26, the objection to claim 1 set forth in the office action dated 2/20/26 has been withdrawn. Applicant’s arguments dated 5/19/26 have been duly considered.
Applicant submits that a prima facie case of obviousness has not been established over Jackson and/or Mandal on the grounds that the Office (1) has not identified any prior art suggestion or motivation for combining Jackson and Mandal, maintaining arguments previously presented in the prosecution of this application, and (2) even if the references would have been combined, the combination of Jackson and Mandal would not have resulted in a method that meets all of the claim limitations.
Specifically, the arguments are as follows:
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In response, for reasons presented throughout prosecution and in the rejections herein above, Jackson’s aqueous binder compositions may include (1) water, (2) a carbohydrate, including those have having C5 sugars within the claimed range, and a pentose sugar within the claimed amount, and (3) a crosslinker, such as an organic diamine or an ammonium salt of a polycarboxylic acid. Additionally, disclosed examples 1 and 3 in Jackson include water, carbohydrate and an organic diamine (HMDA) or ammonium sulfate as a crosslinking agent, the wt.% of the crosslinking agent falling within the claimed range of a cross-linker. Given the teaching in Jackson on an organic diamine and an ammonium salt of a polycarboxylic acid as being equally suitable as crosslinking agents, it would have been obvious to a skilled artisan to substitute organic diamine (HMDA) with an ammonium salt of a polycarboxylic acid, based on their art recognized equivalence, to provide for binder compositions.
Additionally, for reasons stated in the rejections of record and herein above, Mandal provides a motivation to add urea (reads on claimed amine compound) in an amount of 2 to 90 wt.% of binder solids, to carbohydrate-based binder compositions. Thus, a skilled artisan would have found it obvious to add Mandal’s urea to Jackson’s binder which may consist of water, carbohydrate and a crosslinker (i.e., ammonium salt of a polycarboxylic acid), including those within the scope of claims 1 and 12, thereby obviating claimed method steps (i) and (ii). In addition, Jackson teaches use of aqueous binder compositions 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, thereby obviating claimed method steps (iii) and (iv) of claims 1 and 12. As stated in the rejections in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists, and selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results.
Applicant argues that the Examples of Jackson do not teach the claimed range for the amine component, and that Examples of Jackson teach an amine compound (HMDA) at a concentration that is at least twice the upper limit of 10 wt. % as instantly claimed. To clarify, in the rejections of record and those presented herein above, Examiner relies on Jackson for its teaching on ammonium salt of a polycarboxylic acid to read on the claimed crosslinker, which may be a substitute for crosslinkers in Examiner 1 and 3 of based on the Jackson’s teaching on the disclosed crosslinkers as being equally suitable (page 3, lines 26-31). Examiner further relies on Mandal’s teaching on urea to read on claimed amine compound.
Applicant further argues as follows:
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In response, Mandal teaches curable carbohydrate-based binders comprising a sugar (monosaccharide, disaccharide or polysaccharide) in an amount of at least 5 wt.% to 90 wt.% of the binder solids, and prescribes urea in an amount of at least 2 wt.% to 90 wt.% of the wt. of curable aqueous binder composition, an amount which overlaps in scope with the claimed urea content. As for arguments on hindsight, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). To that end, the Examiner has only used knowledge which was within the level of ordinary skill at the time the claimed invention was made has been used.
Examiner disagrees with the argument that in combining Jackson and Mandal, the natural result would be the substitution of the HMDA of Jackson's Table 1 with the urea of Mandal in order to have any reasonable expectation of success, which replacement would result in binder compositions/products with at least 20 wt. % by dry weight of the amine compound, which is outside of the scope of the claims. Jackson and Mandal do not teach the equivalence of organic (di)amines and urea. For instance, Jackson specifically teaches amine component as including diethylenetriamine, 1,4-butanediamine, 1,5- pentanediamine, hexamethylenediamine (HMDA), 1,7-heptanediamine, 1,8-octanediamine, 1,9-nonanediamine, 1,10-decanediamine, 1,11 -undecanediamine, 1,12- dodecanediamine, 1,5-diamino-2-methylpentane, a Jeffamine, a polyamine, a polyamine comprising two or more primary amine groups etc. (pages 3-4, bridging paragraph), without any reference to urea. Likewise, Mandal explicitly teaches urea as being advantageous in curable binder compositions, without any reference to it being equal to other amine components, such as a diamine-HMDA. Therefore, Examiner maintains that urea is not taught by either Jackson or Mandal to be a crosslinker or as being functionally equivalent to the disclosed crosslinkers, and therefore, POSITA would not have found it obvious to substitute Jackson’s HMDA with urea as proposed by the Applicant. Instead, a skilled artisan would have found it obvious to include urea as an additional composition in Jackson’s binder compositions to provide for the advantages taught by Mandal.
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 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 are unsuccessful, the examiner's supervisor, Mr. Robert Jones can be reached at (571)-270-7733. The fax phone number for the organization where this application or proceeding is assigned is (571) 273 8300.
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/Satya B Sastri/
Primary Examiner, Art Unit 1762
Prosecution Insights