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 .
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 11 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Burgert et al. (US 2017/0043497).
Regarding Claim 11, Burgert et al. (US’497) teach a fire retardant wood containing calcium chloride and treated by impregnation [0157,0169]. The specific preparation steps, including setting an atmospheric pressure condition between vacuum treatments, is not given significant weight, for the wood, impregnated with a solution, including calcium chloride and/ or calcium bromide.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-5 and 14-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Burgert et al. (US 2017/0043497).
Regarding Claim 1, US’497 teach a preparation method of fire retardant wood, comprising: impregnating a wood with a salt solution (calcium chloride, CaCl2; calcium bromide, CaBr2), during which a vacuum treatment is carried out for a plurality of times, wherein a salt in the salt solution is a fire retardant and is one or more selected from calcium chloride and calcium bromide[0169,0008,0099]. US’497 fails to teach an atmospheric pressure condition is set at a period between two adjacent vacuum treatments; however, the suggestion in US’497 to perform vacuum impregnation several times would have suggested a release of vacuum between each of multiple vacuum cycles. Thus, it would have been obvious to a person of ordinary skill in the art at the time of invention to modify the process of US’497 by releasing the vacuum in between cycles of vacuum impregnation (i.e. “an atmospheric pressure condition is set at a period between two adjacent vacuum treatment”).
Regarding Claim 2, US’497 suggests applications of fire retardant wood in construction and production of furniture and the process, includes liquid solvents, including water and an alcohol (Table 1; [0081]) and can include a semi-finished wood product or a component [0122]. US’497 fails to teach a drying process. However, it is obvious that US’497 expects that at least some fire retardant wood will be used in applications that require wood dried at least to some extent (with typical moisture content of dried wood used in construction applications). Thus, it would have been obvious to a person of ordinary skill in the art at the time of invention to modify the process of US’497 with a drying process at some point between the impregnation method and the use of wood as a construction material, including for furniture.
Regarding Claim 3, US’497 fails to teach drying wood. However, drying wood at atmospheric pressure (e.g. on racks off the ground and under tarpaulins outside or inside) is conventional in the art to achieve a wood product with a desirably low moisture content for a particular construction application. It would have been obvious to dry wood at atmospheric pressure, because such drying conditions are typical for wood products.
Regarding Claim 4, US’497 fails to teach drying wood at a temperature ranging from 20 C-30C. However, 20C-30C is typical outdoor temperatures and it is conventional to dry wood under such normal outdoor temperatures to achieve a desirable moisture content. It would have been obvious to dry wood at within 20-30C, because such drying conditions are typical for wood products. Additionally, temperature and drying time are related, and it would have been obvious to a person of ordinary skill in the art at the time of invention to modify drying temperature in order to achieve a desired drying time. Also, generally, differences in temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such temperature is critical.
Regarding Claim 5, US’497 teaches a concentration of CaCl2 of about 5.5% (0.5 M*110.98 g/mol÷1000 g/L). Generally, differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical.
Regarding Claim 14, US’497 teaches 1-4 cycles of vacuum impregnation and a time of impregnation cycles which last from 2 to 24 hours [0145,0152-0154,0161], including specifically cycles of 2 hours [0164]. US’497 fails to teach 10 cycles or specifically 5 hours. US’497 provides evidence that time is a result effective variable, known in the prior art to affect mass gain and degree of mineralization [0162,0164-0165] It would have been obvious to a person of ordinary skill in the art at the time of invention to modify the process of US’497 by adding additional cycles at a duration within the recited range to ensure adequate treatment and to optimize times to achieve a desirable extent of reaction and/ or of impregnation. Where US’497 teaches impregnation in cycles, additional cycles is prima facie obvious duplication of steps. MPEP 2144.04.
Regarding Claim 15, US’497 fails to teach a salt concentration of 20%. Generally, differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical. Moreover, it would have been obvious to modify solution concentration in order to ensure adequate treatment with an expectation of some loss of treatment salt during treatment.
Regarding Claim 16, the recited temperature range of 20-30C is a conventional range of temperature for drying wood and loss of water weight through evaporation is directly related to time of drying at typical temperatures.
Claim(s) 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Burgert et al. (US 2017/0043497) as applied to Claim 1 above, and further in view of Bailey et al. (US 7,640,664).
Regarding Claim 18, US’497 teaches treatment of beech, spruce, and ash, but does not particularly limit treatment to those species. US’497 fails to teach poplar or tung. Bailey et al. (US’664) is analogous art in the field of treating wood with fire retardants and is pertinent to Applicant’s problem of treating wood. US’664 teaches impregnating a wood panel with a fire retardant, including a metal salt (zinc chloride) (col. 9, lines 40-56; col. 10, lines 21-31) and suggests that the wood panel comprise woods from trees including a wide variety of broadleaf trees (e.g. ash, aspen, spruce, buckeye, butternut, beech, birch, black cherry, chestnut, cottonwood, elm, hack berry, hickory, honey locust, black locust, maple, oak, sycamore, walnut, and yellow poplar) (col. 16, lines 10-25). It would have been obvious to a person of ordinary skill in the art at the time of invention to modify the invention of US’497 by impregnating wood from a broadleaf tree, including a poplar, because US’664 suggests impregnating a wood panel made from trees, including those varieties of trees, with fire retardant to obtain a fire retardant panel.
Claim(s) 1-5 and 14-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Depew et al. (US 2,838,424) in view of Burgert et al. (US 2017/0043497).
Regarding Claims 1, 17, and 18, Depew et al. (US’424) teach a preparation method of fire retardant wood, comprising: impregnating a wood with a salt solution (zinc chloride) (col. 1, lines 55-64). US’424 additionally teaches that multiple cycles of impregnation can be used (col. 2, lines 61-66), including an initial vacuum treatment, followed by increased pressure at 125 psig (about 8.5 atm), followed by a vacuum (Figure), which requires “an atmospheric pressure condition set at a period between two adjacent vacuum treatments,” since as the pressure changes from 125 psig of positive pressure to 22 inches of vacuum or in reverse, it necessarily passes through a condition of atmospheric pressure.
US’424 fails to teach calcium chloride or calcium bromide as a metal halide for the treatment of wood. US’497 is analogous art in the field of wood treatment, including by impregnation with fire retardants. US’424 teaches a preparation method of fire retardant wood, comprising: impregnating a wood with a salt solution, not only such as ZnCl2 as in US’424, but also including calcium chloride (CaCl2) and calcium bromide (CaBr2), during which a vacuum treatment is carried out for a plurality of times, wherein a salt in the salt solution is a fire retardant and is one or more selected from calcium chloride and calcium bromide to achieve adequate mechanical and fire-retardant properties [0169,0008,0099,0161]. Thus, it would have been obvious to a person of ordinary skill in the art at the time of invention to modify the process of US’424 by impregnating with calcium chloride and/ or calcium bromide in addition to or as a substitute for zinc chloride to achieve desirable mechanical and flame-retardant properties.
Regarding Claim 2, US’424 teaches a drying process (col. 1, lines 55-64).
Regarding Claim 3, US’424 teaches atmospheric pressure (“air dried”) (col. 5, line 55 to col. 6, line 1; col. 6, lines 40-42).
Regarding Claim 4, US’424 teaches drying wood at a temperature of 35° C (col. 6, lines 23-43). US’424 fails to teach drying between 20 and 30 ° C. However, temperature is known in the prior art to affect drying time. It would have been obvious to a person of ordinary skill in the art at the time of invention to modify the process of the combination of US’424 in view of US’497 by adjusting drying temperature to within the recited range through routine optimization. Also, generally, differences in temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such temperature is critical.
Regarding Claim 5, US’424 teaches the salt solution comprises zinc chloride in a concentration of 20% (col. 7, lines 21-25). US’497 teaches a concentration of CaCl2 of about 5.5% (0.5 M*110.98 g/mol÷1000 g/L). It would have been obvious to a person of ordinary skill in the art at the time to include calcium chloride in the recited amounts, because US’497 suggests the concentration is sufficient to achieve desired properties (mechanical and fire retardancy). Generally, differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical.
Regarding Claim 14, US’424 teaches applying a vacuum a) initially to remove residual air from pores in the wood (col. 4, lines 2-4) for five to ten minutes (col. 5, lines 46-47) and b) to force excess liquid from pores in the wood (col. 3, lines 70-75; col. 4, lines 8-9). US’497 teaches 1-4 cycles of vacuum impregnation and a time of impregnation cycles which last from 2 to 24 hours [0145,0152-0154,0161], including specifically cycles of 2 hours [0164]. US’497 fails to teach 10 cycles or specifically 5 hours. US’497 provides evidence that time is a result effective variable, known in the prior art to affect mass gain and degree of mineralization [0162,0164-0165]. It would have been obvious to a person of ordinary skill in the art at the time of invention to modify the process of the combination of US’424 in view of US’497 by adding additional cycles at a duration within the recited range to ensure adequate treatment and to optimize times to achieve a desirable extent of reaction and/ or of impregnation. Where US’497 teaches impregnation in multiple cycles, additional cycles is a prima facie obvious duplication of steps. MPEP 2144.04.
Regarding Claim 15, US’424 teaches the salt solution comprises zinc chloride in a concentration of 20% (col. 7, lines 21-25). The combination of US’424 in view of US’497 fails to teach calcium chloride or calcium bromide in the recited concentration. Generally, differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical. Moreover, it would have been obvious to modify solution concentration in order to ensure adequate treatment with an expectation of some loss of treatment salt during treatment.
Regarding Claim 16, US’424 teaches drying wood at a temperature of 35° C (col. 6, lines 23-43). US’424 fails to teach drying between 20 and 30 ° C. However, temperature is known in the prior art to affect drying time. It would have been obvious to a person of ordinary skill in the art at the time of invention to modify the process of the combination of US’424 in view of US’497 by adjusting drying temperature and time (e.g. time as a function of temperature) to within the recited ranges through routine optimization. Also, generally, differences in temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such temperature is critical.
Claim(s) 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Depew et al. (US 2,838,424) in view of Burgert et al. (US 2017/0043497) as applied to Claim 1 above, and further in view of Bailey et al. (US 7,640,664).
Regarding Claim 18, US’424 teaches impregnating generic wood. US’424 fails to teach a species of wood. US’497 teach treating beech, spruce, and ash in particular [0152], but does not particularly limit wood species. US’664 is analogous art in the field of treating wood with fire retardants and is pertinent to Applicant’s problem of treating wood. US’664 teaches impregnating a wood panel with a fire retardant (col. 9, lines 40-56; col. 10, lines 21-31) and suggests that the wood panel comprise woods from trees including a wide variety of broadleaf trees (e.g. ash, aspen, spruce, buckeye, butternut, beech, birch, black cherry, chestnut, cottonwood, elm, hack berry, hickory, honey locust, black locust, maple, oak, sycamore, walnut, and yellow poplar) (col. 16, lines 10-25). It would have been obvious to a person of ordinary skill in the art at the time of invention to modify the invention of the combination of US’424 in view of US’497 by impregnating wood from a broadleaf tree, including a poplar, because US’664 suggests impregnating a wood panel made from trees, including those varieties of trees, with fire retardant to obtain a fire retardant panel.
Response to Arguments
Applicant's arguments filed 09 June 2026 have been fully considered but they are not persuasive.
In response to Applicant’s argument that calcium chloride and calcium bromide provide (Remarks, p. 5-7),
In response to Applicant’s argument that Burgert et al. (US’497) does not teach or suggest using calcium chloride, lithium chloride, or calcium bromide as a fire retardant (Remarks, p. 4), the argument is not persuasive, because US’497 expressly teaches an impregnation cycle with a salt solution, including MX (e.g. calcium chloride, CaCl2), wherein the salt solution is a fire retardant. Applicant’s attempt to distinguish the properties of the salt solution as a fire retardant solution from a fire-retardant property of a salt which is a component of the fire retardant solution is not credible. The fire-retardant impregnating solution of US’497 contains the recited salts, such that in the context of a fire-retardant solution, the recited salt within the salt solution for fire-retardancy is a fire retardant.
In response to Applicant’s argument that the fire-retardant component is the precipitated metal salt MA (not the soluble precursor salt MX) is US’497’s fire-retardant component (Remarks, p. 4, bottom), the argument confuses a metal salt solution including metal salt MX, introduced as an impregnant into the wood, with a product MA, which precipitates out of the salt solution impregnant. See, for example, US’497 at [0019-0023]. Applicant is arguing about mechanisms of fire-retardancy, rather than about whether MX can be considered a fire-retardant in the context of a metal salt solution, impregnated into wood to make the wood fire retardant. Applicant has not provided persuasive reasoning to think that somehow when US’497 impregnates wood with a salt solution, containing, for example, calcium chloride and/ or calcium bromide under vacuum, calcium chloride or calcium bromide is NOT a fire retardant, but that when Applicant’s claim impregnates wood with a salt solution, containing for example, calcium chloride and/ or calcium bromide under vacuum, calcium bromide or calcium chloride IS a fire retardant.
Regarding Applicant’s argument that US’497 does not teach using calcium chloride or calcium bromide itself as a fire retardant (Remarks, p. 6), the argument is not persuasive. See above. Applicant’s argument relies on labeling calcium chloride or calcium bromide as a fire-retardant in one instance, but not in the other, even though both US’497 and Applicant’s claimed invention require impregnating wood with a metal salt solution MX, which can include calcium chloride or calcium bromide, under vacuum to increase fire retardancy of wood. Applicant has not provided a sound reason how Applicant considers the salt to be fire-retardant for wood in the one instance but not in the other; the taught salts -- the chemical formulas -- are identical. CaCl2 and CaBr2 in the impregnant solution of US’497 is the identical CaCl2 and CaBr2 in Applicant’s impregnant solution. Even if Applicant thinks he has recognized some distinction in fire-retardant properties of CaCl2 and CaBr2- , he has not shown that whatever distinction he thinks he has made is significant, where US’497 includes these very species in a solution for impregnating wood to increase the wood’s fire-retardancy.
Regarding Applicant’s argument about impermissible hindsight (Remarks, p. 6), the argument is not persuasive, since Depew, Burgert are analogous art in the same field, including fire retardant solutions, including metal salts, and including under vacuum. Both are precisely references a person in the field of increasing fire retardancy in wood would look to for impregnating wood with solutions to increase the wood’s fire retardancy. Not only that, but both US’497 and US’424 consider that a metal salt with Zn2+, the cation in ZnCl2-, can be used as the cation of MX [0008].
Regarding Applicant’s arguments, including heat release data and smoke suppression (Remarks, p. 7), see previous Office Action (p. 12), which did not find this argument persuasive. Additionally, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Conclusion
No claim is allowed.
THIS ACTION IS MADE FINAL. 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 ALEXANDER M WEDDLE whose telephone number is (571)270-5346. The examiner can normally be reached 9:30-6:30.
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ALEXANDER M WEDDLE
Examiner
Art Unit 1712
/ALEXANDER M WEDDLE/Primary Examiner, Art Unit 1712
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