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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 5/3/2023 has been considered by the examiner.
Claim Objections
Applicant is advised that should claim1 be found allowable, claim 8 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Claim 8 is a product by process claim. It is directed to the same product as that of instant claim 1. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted)
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) 1-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Eyde, Tietz (US 2016/0258113)
Regarding Claims 1-11:
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 1, 8 and 7 for 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 1, 8 and 7 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 1, 8 and 7 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 1, 8, 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 such as by coating substrates[0058-0061](meeting claims 9-11)
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 10)
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)"
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.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 12163064 which requires an alkali (non-organic base)
Co pending 17757258 requires lignin from Kraft process which causes it to be alkaline (i.e. chemically modified)
Co pending 17995400 requires oxidized lignin (i.e. chemically modified)
JP 3936214 discloses a resin composition comprising lignin from wood (Abstract) a crosslinker component and a rosin derivative and terpene phenol resin [0006] The resin is a lignin material a water resistant component selected from rosin derivative a terpene phenol resin and is reacted with a crosslinking product [0007]
[0011]Examples of the (A) lignin-based material used in the present invention include lignin-based materials such as lignin derivatives, lignophenol derivatives, and lignocellulose degradation products, but are not particularly limited thereto.
[0012]Examples of lignin derivatives include “craft lignin” and “lignin sulfonic acid” by-produced in normal pulp production, “acetic acid digestion lignin”, “steamed pulverized lignin”, “organosolv lignin” and the like.
[0015] Examples of the lignocellulosic material containing lignin include woody materials such as wood flour, wood chips, sawdust, waste materials, mill ends, bark, and various plant materials such as straw, bagasse, rice husk and beet pulp
A catalyst is used including ammonia as well as decomposition reagents such as polyethylene glycol, polyhydric alcohols etc. [0017]
US 2012/0071049 discloses an adhesive comprising non functionalized lignin and a latex in an aqueous medium comprising an alkali such as ammonium. (Abstract) Solid lignin powder is added with rubber latex in aqueous medium with a pH of 9 or greater (i.e. basic) and stirred [032] The comprising is used as a glue in plywood and includes ply vinyl poly acetate and used to form wood artifacts, laminates, paper board (Example1 [0064]
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