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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 7/21/2026 has been entered.
Status of Claims
The examiner acknowledges the amendments to claims 1, 3, 8, 10, 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 applicant has amended the language of claim 3. As a result, the previous 112 rejection for claim 3 is withdrawn.
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, this is merely a difference in the source from which the material is obtained. Because the required component is defined as an amount of a small molecule (hydroxybenzyl alcohol) that must be present, this requirement can be met regardless of the source of the material. Additionally, even if difference were to be made evidence based on the manner in which reactant material is formed, while Priebe may be 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.
With regard to the amount of Ar-CH2-Ar and CH2-O- content, Priebe teaches the following structure in Column 3:
PNG
media_image1.png
128
330
media_image1.png
Greyscale
and further teaches that the ratio of m:n is at least 1 (Column 3, Line 17-18). This would indicate that the amount of Ar-CH2-Ar would be greater than the amount of CH2-O- content. While Priebe does not teach how this is determined, the method by which it is determined would not impact whether or not there is higher Ar-CH2-Ar content. As such, it would have been obvious prior to the effective filing date to have had a greater proportion of Ar-CH2-Ar content in the resole.
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 7/21/2026 have been fully considered but they are not persuasive for the following reasons.
On pages 7 and 8, the applicant argues that Priebe teaches “benzyl ether type phenolic resins” and therefore does not teach the resin of the instant claims. However, the examiner notes that this addressed in the above rejection, where Priebe teaches the ratio of Ar-CH2-Ar vs. ether linkages to be at least 1, which would meet the requirements of the instant claims. Further, while the applicant argues that this ratio is a result of the use of plant-based monomer, the examiner notes that as Priebe teaches a ratio that meets the limitations set forth by the applicant without the use of plant-based monomer, this would appear to be a function of the monomer used and not of its source.
Also on page 8, the applicant argues that there would be no reason to modify Priebe to increase the molecular weight of the resin. The examiner points out as previously noted that Priebe does not limit the molecular weight range, noting only that the molecular weights listed are typical. Furthermore, as the difference between a molecular weight of 1100 as noted to be typical by Priebe and the 1160 of the instant claims is less than the weight of a single monomer unit. The ordinarily skilled artisan would not expect the curing of these two weights of resin to proceed differently, not would the cured product be expected to possess different properties on the basis of this difference. Further, the applicant has not presented evidence that this molecular weight is critical to the function of the invention. See MPEP 2144.05.III.A.
Ultimately, while the applicant’s goal with the invention appears to be the use of renewable sources to generate resins to replace those from non-renewable sources, the applicant has not yet set forth a resin that differs from those taught in the art. As a result, the rejection is maintained.
Conclusion
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/A.J.B./Examiner, Art Unit 1765
/JOHN M COONEY/Primary Examiner, Art Unit 1765
Prosecution Insights