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 .
Applicant has amended the claims to add limitations not previously considered. Support for the amended limitations is found in the original filing. The examiner has considered the remarks filed 8/20/2026 and does not find them persuasive for the reasons more fully below set forth.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 8/20/2026 has been entered.
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) 7, 9, and 2-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Eyde, Tietz (US 2016/0258113)
Regarding Claims 7, 9, and 2-6
Eyde, Tietz (US 2016/0258113) teaches a composition method of making and method of using a coating composition.
Eyde discloses the composition comprises:
Lignin includes lignin from lignocellulosic and lignin containing biomass from any plant origin. [0016] [0065] In one embodiment the lignin is a natural, unmodified or non-derivatized lignin (meeting the limitations of claims 7 et seq. a lignin that has not been chemically modified)
Lignin solution is at least partially dissolved in a solvent (Abstract)[0011] lignin is substantially completely dissolved in solvent [0020-0021] The solvent is an ammonia solution which is particularly effective in dissolving lignin and an alkaline solution [0063][0071][0074] the lignin solution has undissolved solids less than 5% to less than 0.1 % by weight of the solution [0075]
Eyde teaches the lignin in the solution comprises lignin in ranges of:
[0075] In one embodiment, the lignin solution, prior to coating, has an undissolved solids content of less than 5% 4%, 3%, 2%, 1.0%, 0.5%. 0.25% or 0.1% by weight of the solution.
[0076] In an embodiment, the lignin solution may comprise, in a % by weight of the solution amount, lignin in between 10 to 40%, 10 to 35%, 10 to 30%, 10 to 25%, 15 to 40%, 15 to 35%, 15 to 30% or 15 to 25%, inclusive of about 16, 17 18, 19, 20 21, 22, 23 or 24%.
(overlapping the range of claim 2 and/or meeting said range when it is 2 %)
The solution may be an alkaline solution (i.e. basic) comprising ammonia, an alkali metal hydroxide etc. [0062] preferably an aqueous ammonia solution [0063] (meeting claims 7 et seq. for an aqueous solution comprising ammonia and lignin)
[0082] In one embodiment, the lignin solution substantially comprises lignin glycerol and a plasticizer as the only non-solvent components.
[0083] The plasticizer may be selected from the group consisting of a natural or synthetic latex, a polyether, a glycol, a dicarboxylic or tricarboxylic ester, a phthalate, an alkyl citrate and an acetylated monoglyceride. [0084] The plasticizer may be a non-glycerol plasticizer. (meeting claim 7 et seq. for plasticizer)
[0085] The plasticizer may be present in a % by weight amount of the lignin solution of between 0.1 to 10%, including 01, to 8%, 0.1 to 7%, 0.1 to 6%, 01. to 5%, 0.1 to 4%, 0.1 to 3%, preferably 1.0 to 5%, more preferably 2 to 4% and even more preferably about 2.5, 3.0 and 3.5%. The plasticizer assists in improving the physical properties of the coating and is not essential to achieve a water resistant and/or strengthening coating and is not an active waterproofing or strengthening component itself
The weight ratio of the plasticizer : lignin overlaps and encompasses the instantly claimed weight ratios of claims 3 and 7 – for example when both are 4% : 4% the ratio is 1:1
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(sugar alcohol meeting plasticizer) the ammonia is an aqueous ammonia solution [0121]
See Claim 23 of reference:. The composition of claim 22 wherein the composition comprises the following in % by weight amounts of the total composition: (a) between about 10% to about 40% lignin; (b) between about 35% to about 80% aqueous alkaline solution; and (c) between about 5% to about 30% of a sugar and/or sugar alcohol.
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5-30 % plasticizer: 10- 40 % lignin overlapping the claimed ratio of 0.1:10 to 10:1 and 0.1:10 to 5:1
The composition is formed by adding the components and stirring/mixing [0153-0154] (meeting claim 7)
The composition is used in forming products with wood, wood veneer, paperboard, molded wood and layered products and boards (wood veneer being layers of wood glued/adhered together and layered products being substrates affixed to other substrates) such as by coating substrates[0058-0061](rendering obvious applying to a first surface of a substrate and applying pressure to a second substrate to press the second against the first heating and curing where the composition is used to form layered products, veneers and boards and a wood product thereby meeting claims 7 and 9)
The composition may be cured without high pressure and also may be conducted under standard conditions and heating[0095-0096](while a high pressure is not required some pressure is used)(meeting claim 7 and 9 for pressure, curing and heating)
No formaldehyde is required (meeting claim 4)
No epoxy based cross linker is required. (meeting claim 5-6)
The reference teaches ranges which overlap and encompass the instantly claimed ranges and ratios which overlap and encompass the instantly claimed ratio. There does not appear to be an example with the exact point, as such this rejection is recited as being obvious due to overlapping ranges. See MPEP 2144.05(I): "In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976)"
The composition is used on substrates including wood, wood veneer, paper and paper products and molded materials as well as paperboard and other substrates well known to those in the art [0058] The coating is applied to the substrate which may then become internalized as part of a larger complex product. [0060] For example, a cardboard substrate may be coated on one side and the carboard then used as an outer wall of a corrugated cardboard product having at least two outer walls and an inner fluted layer. The coated side of the substrate may be positioned to face internally into the fluted layer. Thus, while the substrate itself has a coated layer facing internally into a larger product the coating of the present invention does not to any substantial extent become internalized within the substrate per se.[0061] (further meeting claims 7 and 9)
The composition is used in forming products with wood, wood veneer, paperboard, molded wood and layered products and boards such as by coating substrates[0058-0061](meeting claims 7 and 9)(where the coating is on layers)
The composition may be cured without high pressure (i.e. there may be lower pressure) and also may be conducted under standard conditions and heating[0095-0096](while a high pressure is not required some pressure is used)(meeting claim 7 and 9)
Regarding the new limitation for:
Mixing an aqueous solution of lignin with ammonia or an organic base or both to provide a second solution;
Mixing the second solution with a plasticizer…
Lignin is added to ammonia solution to form a homogenous formulation [0158][0154] ammonia solution results in complete dissolution of lignin with a mixed solvent to completely dissolve the lignin [0074]
The lignin solution may further comprise a polyol preferably glycerol as it reduces annealing temperature to achieve a water barrier and strength efficacy [0078-0079]
Glycerol may be used as a plasticizer [0079]
Plasticizers may include non-glycerol plasticizers such as natural or synthetic latex, polyether, glycol, di or tricarboxylic ester, phthalate, alkyl citrate and acetylated monoglyceride [0083-0095]
The plasticizer assists in improving the physical properties of the coating and is not essential to achieve a water resistant and/or strengthening coating and is not an active waterproofing or strengthening component itself. [0085]
Where the lignin solution comprises deodorizing agent is desirable to add plasticizer to the solution prior to coating [0114] [0120](i.e. after the lignin is in the ammonia solution with deodorizing a plasticizer is added)
An alkaline lignin coating solution is prepared by 6 steps including adding water, aqueous ammonia, blending in lignin etc. [0187] After step six (i.e. the lignin is in the ammonia solution) a plasticizer is added [0194]
MPEP 2144.04 C. Changes in Sequence of Adding Ingredients
Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959) (Prior art reference disclosing a process of making a laminated sheet wherein a base sheet is first coated with a metallic film and thereafter impregnated with a thermosetting material was held to render prima facie obvious claims directed to a process of making a laminated sheet by reversing the order of the prior art process steps.). See also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (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) (Selection of any order of mixing ingredients is prima facie obvious.).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of co pending Application No. 18717644(reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both claim a composition, a process of making by mixing, and product of a composition comprising lignin (no chemical modification required in co pending) an aqueous solution with ammonia, or organic base in overlapping ranges and one or more additives which include plasticizer (see claim 9 co pending) manufacturing a product with the recited bonding resin of a wood product insulation etc. as in the instant application (see co-pending claims 16 et seq)
The co-pending application claims the aqueous solution of ammonia and lignin and optionally glycerol thereby indicating the optional glycerol (i.e. plasticizer) is added to the solution last. (claims 1-2 of co-pending for example) The co-pending also claims additives are mixed with the aqueous solution of lignin of claim 1 thereby claiming the plasticizer is mixed after the lignin solution is formed (see claim 1 and 9 of co-pending) Further, the claim does not require the plasticizer to be added contemporaneously or prior to the lignin. The examiner also notes MPEP 2144.04 teaching mixing order is obvious:
MPEP 2144.04 C. Changes in Sequence of Adding Ingredients
Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959) (Prior art reference disclosing a process of making a laminated sheet wherein a base sheet is first coated with a metallic film and thereafter impregnated with a thermosetting material was held to render prima facie obvious claims directed to a process of making a laminated sheet by reversing the order of the prior art process steps.). See also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (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) (Selection of any order of mixing ingredients is prima facie obvious.).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed 8/20/2026 have been fully considered but they are not persuasive.
The copending application claims addition of additives to the aqueous solution of lignin where the additive is a plasticizer as above set forth. MPEP 2144.04 C. Changes in Sequence of Adding Ingredients
Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959) (Prior art reference disclosing a process of making a laminated sheet wherein a base sheet is first coated with a metallic film and thereafter impregnated with a thermosetting material was held to render prima facie obvious claims directed to a process of making a laminated sheet by reversing the order of the prior art process steps.). See also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (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) (Selection of any order of mixing ingredients is prima facie obvious.).
The remarks are not persuasive and the amendments to not overcome the rejections for obviousness double patenting.
While Applicant recognized the reference teaches dissolving the lignin with solvent of ammonia applicant asserts the reference while teaching the same compositional components does not teach the method of the claims with the mixing order therein. As above set forth the prior art teaches the claimed mixing order. The prior art teaches dissolving the lignin in the aqueous ammonia solution to thoroughly dissolve the lignin and form a homogeneous solution prior to addition of plasticizer. Further: MPEP 2144.04 C. Changes in Sequence of Adding Ingredients Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959) (Prior art reference disclosing a process of making a laminated sheet wherein a base sheet is first coated with a metallic film and thereafter impregnated with a thermosetting material was held to render prima facie obvious claims directed to a process of making a laminated sheet by reversing the order of the prior art process steps.). See also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (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) (Selection of any order of mixing ingredients is prima facie obvious.).
The above rejections are maintained.
Conclusion
The prior art previously made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO 892 accompanying the previous office actions as well as that accompanying this office action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PAMELA HL WEISS whose telephone number is (571)270-7057. The examiner can normally be reached M-Thur 830 am-700 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Coris Fung can be reached at (571) 270-5713. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PAMELA H WEISS/ Primary Patent Examiner, Art Unit 1732
