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 .
Status of Claims
The examiner acknowledges the amendments to claims 1, 8 and 14. Claims 1-20 are pending.
Claim Interpretation
The term bio-based appears in the preamble, but is not defined either through the claim language nor in the specification. As the definition is unclear, it cannot be given weight in determining patentability. Further, the applicant has amended the claim language to include the term “plant-based material”. However, the applicant uses this term in reference to ortho-hydroxybenzyl alcohol, which is a small molecule. As chemical compounds, in particular small molecules, have defined characteristics on the basis of their structure, the origin of the compound cannot be considered to be limiting as the properties of the compound would be expected by the ordinarily skilled artisan to be identical regardless of its origin in the absence of data showing otherwise.
Claims 1, 8, and 14 are constructed as product-by-process claims and as such, only the product itself determines patentability (See MPEP 2113.I). This same requirement will also be applied to all of the dependent claims. This also includes the method of generation of the hydroxy benzyl alcohol species.
Claim Rejections - 35 USC § 112
The examiner has considered the applicant’s arguments related to the prior 112(b) rejection and found them persuasive. As a result, the previous 112(b) rejection is withdrawn.
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.
Claim 3 is 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 1 now requires that the molecular weight of the polymer composition be between 1160 and 1900, which is a narrower range than 900-1900 as stated in claim 3. As such, claim 3 now broadens the range of claim 1 and is therefore improperly dependent. 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.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Priebe (US 11,466,117).
Regarding Claims 1-3 and 8-10,
Priebe teaches a benzyl ether type phenolic resin (Abstract) in which hydroxybenzyl alcohol is formed in the initial reaction step with formaldehyde in both the ortho and para configurations (Column 4 Line 39 to Column 5 Line 3).
Claims 1, 8, and 14 are constructed as product-by-process claims and as such, only the product itself determines patentability (See MPEP 2113.I). This same requirement will also be applied to all of the dependent claims. This also includes the method of generation of the hydroxy benzyl alcohol species.
While Priebe is silent on the use of renewable materials, one of ordinary skill in the art would be motivated to use chemicals derived from natural sources to reduce reliance upon fossil fuels and as such, it would have been obvious prior to the effective filing date of the instant application to have utilized hydroxybenzyl alcohol from non-fossil fuel-based sources in any amount.
Priebe does not explicitly teach the range of 1160-1900 of the instant claims. However, while Priebe does teach a preferences for molecular weights of 500 to 1100 (Column 6, Lines 18-27), Priebe does not teach away from the use of molecular weights outside of this range. One of ordinary skill in the art would recognize that the molecular weight of the resole would have an effect on the viscosity of the composition prior to curing and as such, would be motivated to use a molecular weight that affords the desired characteristics required for the molding application the composition is to be used in. It would therefore have been obvious prior to the effective filing date of the instant application to have used any molecular weight of the resole that would give the desired characteristics such as viscosity to the composition prior to curing.
Regarding Claims 4 and 11,
Priebe teaches the polymer composition as described above in regard to claims 1 and 8 and the molecular weight of the resin in regard to claims 3 and 10, however Priebe is silent on the viscosity of the resin. Because Priebe teaches a composition that contains the required components in the required amounts at a molecular weight in the required range, it would necessarily follow that the composition would have a viscosity that meets the requirements of the instant claims. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP 2112.01.II.
Regarding Claims 5-6 and 12-13,
Priebe teaches that the resin has free o-hydroxybenzyl alcohol content of between 2 and 16% by weight and free hydroxybenzyl alcohol content of 2 to 26% by weight (Column 5, Lines 62-67) and additionally teaches that the amount of hydroxybenzyl alcohol can be controlled through addition of the alcohol before, during, or after polymerization (Column 6, Lines 1-8). Priebe further teaches that both ortho and para substitution patterns for the hydroxybenzyl alcohol are formed in the reaction (Column 4 Line 39 to Column 5 Line 3). Based upon this information, it would logically follow that both would be present following the polymerization reaction and additionally, that either, or both, could be added to the reaction or to form the final resin composition. Finally, the ranges disclosed by Priebe overlap with those of the instant claims. It would therefore have been obvious prior to the effective filing date of the instant application to have selected the overlapping portion of the ranges because the selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP 2144.05.I.
Regarding Claim 7,
Priebe teaches that the composition can be used to form molds (Abstract) and that this is accomplished through curing (Column 10, Lines 16-17). While Priebe does not teach an aerospace component, the instant claim does not describe any alterations to the composition other than curing. Therefore, any composition meeting the requirements of claim 1 read upon the component of the instant claim.
Regarding Claims 14-16 and 19-20,
Priebe teaches a composition that meets the requirements of the instant claims as described above in regard to claims 1-2 and 5-6. While Priebe does not teach an aerospace component, the instant claim does not describe any alterations to the composition. Therefore, any composition meeting the requirements of claim 1 read upon the component of the instant claim. Further, one of ordinary skill in the art would be motivated to use chemicals derived from natural sources to reduce reliance upon fossil fuels and as such, it would have been obvious prior to the effective filing date of the instant application to have utilized hydroxybenzyl alcohol from non-fossil fuel-based sources.
Regarding Claims 17-18,
Because claim 14 is a product-by-process claim, only the properties of the product are used to determine patentability. As such, the requirements of claims 17 and 18 represent limitations on an unselected alternative.
Response to Arguments
Applicant's arguments filed 2/19/2026 have been fully considered but they are not persuasive for the following reason. The applicant argues that the claims are in condition for allowance on the basis of the amendment to claim 1, specifically the molecular weight and the use of plant-based hydroxybenzyl alcohol, which has been addressed in the revised rejection above.
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 ADAM J BERRO whose telephone number is (703)756-1283. The examiner can normally be reached M-F 8:30-5.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi 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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/A.J.B./Examiner, Art Unit 1765
/JOHN M COONEY/Primary Examiner, Art Unit 1765
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