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 allowance or after an Office action under Ex Parte Quayle, 25 USPQ 74, 453 O.G. 213 (Comm'r Pat. 1935). 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, prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant's submission filed on 4/14/2026 has been entered.
The indicated allowability of claims 1-12 is withdrawn in view of the newly discovered reference(s) to Phanopoulos et al. (WO 95/21878 A1), hereinafter Phanopoulos (cited by Applicant’s IDS). Rejections based on the newly cited reference(s) follow.
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.
Claims 1-7 and 10-12 are rejected under 35 U.S.C. 103 as being unpatentable over Okamoto et al. (US 2018/0291201), hereinafter Okamoto, in view of Phanopoulos et al. (WO 95/21878 A1), hereinafter Phanopoulos, cited in Applicant’s IDS and the submitted copy of the reference is referred to herein.
Regarding claims 1 and 10-11, Okamoto discloses a method of forming an engineered wood product (par. 0003-0004) comprising (a) grinding an MDI binder together with water in a grinder to form a dispersion (par. 0125, 0127, 0129 – blocked isocyanate prepolymer composition of aqueous dispersion type, also specifically mentions MDI); and at least implies a step of (b) feeding the MDI production onto a mold or “wood production machine” (par. 0129, 0149, 0160) and curing. Okamoto further explains that there can be other agents added (par. 0139) which would be “fire extinguishing agents” as understood by one of ordinary skill in the art. Any specific teaching of a “fire extinguishing agent” such as the ammonium phosphates listed in par. 0139, would meet this limitation.
The step of “pre-grinding an MDI binder together with a fire extinguishing substance or with a biocide to form an MDI mixture” would appear to be met by “grinding said MDI mixture in a grinder to form a ground MDI dispersion,” since this would not require any additional manipulative steps. While Okamoto implies that the composition can be used with wood or wood particles, it does not appear to explicitly disclose the step of (b) feeding a dispersion into a wood production machine in which are lignocellulosic materials, binding to materials as to form a product, only broadly describing the molding above.
Phanopoulos discloses the use of a polymeric MDI binder that is emulsified (p. 2, 1st paragraph, end) in water. The use of a polymeric MDI that is “emulsified” in water is considered to be equivalent to the claimed “MDI droplets” (p. 2, 2nd paragraph – “[t]he polymeric MDI may be used as such . . . or it may be emulsified in water using an appropriate emulsifying agent”). The process of emulsifying requires a “grinding” or a blending of the materials and would have been understood by one of ordinary skill in the art to create “MDI droplets and water trapped in said droplets” as an emulsion thereof. Phanopoulos further discloses bringing lignocellulosic material into contact with the ground MDI dispersion (p. 1, and p. 3, 4th paragraph) as to form a particle board with the binder/lignocellulosic mixture (p. 3, 4th-5th paragraph).
As both Okamoto and Phanopoulos are concerned with the production of lignocellulosic composites with MDI resin binders, one of ordinary skill in the art would have found the techniques of Phanopoulos useful in the process of Okamoto above. Phanopoulos explains that the MDI and water can be emulsified together as to form “droplets” in the context of the claimed invention. Accordingly, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to have specified that the MDI dispersion is emulsified and fed into a wood production machine as to form a lignocellulosic material product, as is required in the claims.
Regarding claims 2-3, Okamoto/Phanopoulos discloses the subject matter of claim 1, and further discloses the water additives and binder additives (Okamoto, par. 0108, 0129 include compounds that are biocides which could be considered “water additives”).
Regarding claim 4, Okamoto/Phanopoulos discloses the subject matter of claim 1, but does not appear to explicitly disclose “pre-grinding” as required in claim 4.
However, this would be a repetition of the “grinding” performed in claim 1, and it has been held that a repetition of steps where there are no unexpected results therefrom would support a case of prima facie obviousness. In this case, one of ordinary skill in the art, from the teaching of “grinding” or “milling” as in Okamoto above, would have found it obvious to have ground, or milled the particles as needed, as is required in the claim.
Regarding claim 5, Okamoto/Phanopoulos discloses the subject matter of claim 1, and further discloses that the amount of resin/water can be at 10%.
Regarding claims 6-7, Okamoto/Phanopoulos discloses the subject matter of claim 1. Additionally, it has been held that the automation of a manual process would support a case of prima facie obviousness. In this case, the claims are broadly directed at a feedback (claim 7) control system (claim 6) but there is nothing controlled in the claim as “an operational parameter of the method” is interpreted broadly and can be considered to be any parameter.
One of ordinary skill in the art, before the effective filing date of the claimed invention, would have found it obvious to have incorporated a sensor and a controller as to have automated the process of Okamoto/Phanopoulos as outlined above in claim 1 as to have controlled any desired operational parameters of the method. It is noted that limitations from the specification are not imported into the claims.
Regarding claim 12, Okamoto/Phanopoulos discloses the subject matter of claim 1, and water does not typically react with water and so this is considered inherently met by the above as the water inside the emulsified droplets would be separate from the water outside therefrom.
Even if it were possible in some scenario for water to react with water, this would only occur when the two types of water are mixed together and so this would still be inherently met as water outside of a droplet would not be contacting with that droplet.
Claims 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Okamoto (US 2018/0291201) in view of Phanopoulos (WO 95/21878) as applied to claim 1 above, and further in view of Williamson et al. (US 2016/0137795), hereinafter Williamson.
Regarding claims 8-9, Okamoto/Phanopoulos discloses the subject matter of claim 1, but does not appear to disclose heating or cooling of the grinder (and resin) as required in claims 8-9.
However, Williamson explains that a similar type of resin (Williamson, par. 0154) can be heated as to allow for the reaction/curing thereof, and also that there is an exothermic reaction that can be cooled (Williamson, par. 0154). Accordingly, in order to control the rate of reaction as the references all use MDI as one of the resins, meaning the curing mechanisms are similar (as MDI reacts with water), one of ordinary skill in the art would have found it obvious to have likewise controlled the temperature by heating and/or cooling the grinder/resin as required in the claims to a temperature as to have controlled the environment to maintain the item prior to curing or prevent it from undergoing a reaction as described in Williamson, par. 0154.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW D GRAHAM whose telephone number is (469)295-9232. The examiner can normally be reached Monday - Friday 7:30AM-4:00PM (CST).
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, Christina Johnson can be reached at (571) 272-1176. 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.
/ANDREW D GRAHAM/Primary Examiner, Art Unit 1742
Prosecution Insights