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 and indicates that the newly added limitations were in previously rejected claims (See Remarks filed 4/20/2026 at p 4-5) The examiner has considered the remarks filed 4/20/2026 and does not find them persuasive for the reasons more fully below set forth.
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)
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)
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)
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 4/20/2026 have been fully considered but they are not persuasive.
The copending application claims the use of the composition to form wood products, wool insulations, laminates etc. with the claimed composition with curing and pressure and heating (see claims 16-18 of co-pending) The remarks are not persuasive and the amendments to not over come the rejections for obviousness double patenting.
Applicant argues the reference teaching a coating and attempts to distinguish the prior art by the recited function/intended use of the instant claims for bonding. This is not persuasive. The prior art discloses the claimed composition as such it will possess the same properties of binding/adhesion. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir.1990) “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)
The applicant attempts to distinguish the claimed invention from the prior art asserting the prior art does not teach a binder and refers to par [0060] of the prior art. This is not persuasive. The prior art does not teach the use of the composition to form the substrate from particles (i.e. forming from particles a solid substrate) but does teach the composition is applied to a substrate which is formed and then may be internalized as part of a larger complex product (i.e. layered wood veneer as taught by the prior art as more fully above set forth). The prior art goes on to teach the composition may become an internal part of a larger product and may be position to face internally into a layer/larger product [0061] and is used with wood veneer [0058][0089] The examiner maintains the teaching of the prior art are sufficient to establish by a preponderance of the evidence a prima facie showing obviousness.
As above set forth the prior art teaching forming layered/veneer products such as from wood by applying the composition and using pressure and heat and curing. As more fully above set forth the prior art renders obvious the claim limitations.
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. For example:
Kelly Crescimanno (US 2011/0159768) Kelly et al discloses a similar composition of an aqueous binder with lignin (Claim 1 of reference) used to form wood based materials and veers [0068-0070] by applying to layers and pressing with heat [0067-0072] (rendering obvious applying to a first substrate and pressing to a second substrate with heat and curing forming a laminate or wood product)
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 PAMELA HL WEISS whose telephone number is (571)270-7057. The examiner can normally be reached M-Thur 830 am-700 pm.
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, 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
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