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 § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1 – 3, 5 – 8, 12, 22, 23, 25, 61, 62, 97, and 108 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention because:
There is a lack of antecedent basis for “the” dry weight of the binder reaction mixture recited in Claim 1. The claim does not set forth the binder reaction mixture has a dry weight prior to this recitation. For the purposes of examination, Claim 1 will consequently be interpreted as setting forth a dry weight of the binder reaction mixture.
As Claims 2, 3, 5 – 8, 12, 22, 23, 25, 61, 62, 97, and 108 all ultimately depend on Claim 1, they inherit all above noted deficiencies of Claim 1 and are therefore also rejected under this statute.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 22, 62, and 108 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2016/0257815 to Varnell.
Regarding Claims 1, 22, and 62. In Example 1b, Varnell teaches a precursor mixture for a particle board ([0095] and [0098]), i.e. an engineered precursor mixture for the manufacture of a particle board. The precursor mixture comprises 636 grams wood furnish in the form of particles at 8% moisture content [0098], i.e. a plurality of wood components.
The precursor mixture also further comprises 73.6 grams of a mixture comprising 46.16 grams PAE resin with 55% solids, 21.25 grams urea, 21.68 grams glycerol, and 84.55 grams water, as well as 19.23 grams PROLIA® 200/80 soy flour having a moisture content of 6.2% [0098]. This corresponds to a binder reaction mixture comprising an aqueous portion comprised of water and glycerol and an least partially non-dissolved polypeptide-containing component comprising soy flour.
Using all of the aforementioned values, the binder reaction mixture can be calculated to be present in an amount of roughly 16 parts by weight per 100 parts of a dry weight of the plurality of wood components; the glycerol component can be calculated to be present in an amount of roughly 19 weight percent, based on a dry weight of the binder reaction mixture; and the soy flour can be calculated to be present in an amount of roughly 39 weight percent, based on the dry weight of the binder reaction mixture.
Regarding Claim 108. Varnell teaches a particle board formed by curing the engineered wood precursor mixture of Claim 1 in Example 1b ([0095] and [0098]).
Varnell teaches the engineered wood precursor mixture is cured by hot pressing [0098] but does not expressly teach the temperature provided during this step. However, that curing occurs at a temperature of at least 204°C is a product-by-process limitation that is not further limiting in as so far as the structure of the product is concerned. "[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 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) (MPEP 2113) Once a product appearing substantially identical is found, the burden shifts to the applicant to show an unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1993) (MPEP 2113)
Claim 61 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2016/0257815 to Varnell, as applied to Claim 1 above, and further as evidenced by US 2022/0002597 to Tisserat.
Regarding Claim 61. Varnell teaches the engineered wood precursor mixture of Claim 1 in Example 1b. The soy flour used in this example is PROLIA® 200/90. Tisserat provides evidence PROLIA® 200/90 has a protein content of 54 weight percent [0038].
Claim Rejections - 35 USC § 103
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.
Claims 2, 3, 5, 6, and 97 are rejected under 35 U.S.C. 103 as being unpatentable over US 2016/0257815 to Varnell, as applied to Claim 1 above, and further in view of US 2023/0312930 to Anderson et al. (hereinafter Anderson).
Regarding Claims 2, 3, 5, and 6. Varnell teaches the engineered wood precursor mixture of Claim 1 but does not expressly teach it further comprises a base. However, Anderson teach the concept of providing sodium hydroxide as a base in the aqueous portion of an engineered wood precursor mixture in an amount of 1 to 33 weight percent or 4 to 7 weight percent. The pH of the aqueous portion is thereby adjusted to a pH of from 10 to 14 or from 11 to 14 [0029]. Varnell and Anderson are analogous art as they are from the same field of endeavor, namely engineered wood adhesives. Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to provide a base in the aqueous portion of the engineered wood precursor mixture of Example 1b of Varnell in the amount taught by Anderson such that a pH of from 10 to 14 or 11 to 14 is achieved. The motivation would have been that Anderson observed this pH led to improvement in thickness swell percentage, modulus of rupture, and modulus of elasticity in the resulting engineered wood [0029].
Regarding Claim 97. Varnell teaches the engineered wood precursor mixture of Claim 1 but does not expressly teach it further comprises sodium trimetaphosphate. However, Anderson teach the concept of providing sodium trimetaphosphate in the aqueous portion of an engineered wood precursor mixture [0028]. Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to provide sodium trimetaphosphate in the aqueous portion of the engineered wood precursor mixture of Example 1b of Varnell as taught by Anderson. The motivation would have been that Anderson teaches sodium trimetaphosphate can help to increase the internal bond strength and thickness swell percentage values of the adhesive in which it is included [0029].
Claims 7, 8, 12, and 23 are rejected under 35 U.S.C. 103 as being unpatentable over US 2016/0257815 to Varnell, as applied to Claim 1 above.
Regarding Claims 7 and 8. Varnell teaches the engineered wood precursor mixture of Claim 1. As detailed in the rejection of Claim 1, the glycerol component can be calculated to be present in an amount of roughly 16 weight percent in Example 1b.
The Office recognizes this amount of glycerol component is outside the claimed ranges of 20 to 55 and 25 to 40 weight perecent, based on the dry weight of the binder reaction mixture. However, Varnell does teach adjusting this component to an amount between 0.01 to about 75 weight percent based on the total wet weight of the adhesive composition [0082]. The experimental modification, then, of this prior art in order to ascertain optimum operating conditions fails to render applicants' claims patentable in the absence of unexpected results. In re Aller, 220 F.2d 454, 105, 105 USPQ 233 (CCPA 1955) (MPEP 2144.05) Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to optimize the amount of glycerol component used. Glycerol functions as a diluent in the composition [0085] and it would be desirable to a person of ordinary skill in the art to enhance the sprayability of the composition without sacrificing the adhesive properties thereof. A prima facie case of obviousness may be rebutted, however, where the results of the optimizing variable, which is known to be result-effective, are unexpectedly good. In re Boesch and Slaney, 617 F.2d 272, 205, 205 USPQ 215 (CCPA 1980) (MPEP 2144.05)
Regarding Claim 12. Varnell teaches the engineered wood precursor mixture of Claim 1. Varnell indicates there is no “need” to add sodium meta bisulfite to lower the viscosity of the mixture [0098]. However, a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). See also Upsher-Smith Labs. v. Pamlab, LLC, 412 F.3d 1319, 1323, 75 USPQ2d 1213, 1215 (Fed. Cir. 2005) (MPEP 2123) Consequently, it is the Office’s position that it would have been obvious to a person of ordinary skill in the art to add sodium meta bisulfite to the engineered wood precursor mixture in Example 1b of Varnell. The motivation would have been that Varnell teaches this compound functions to lower the viscosity of the mixture [0098] and a further reduction in viscosity may be desirable in certain adhesive applications to enhance their sprayability.
Regarding Claim 23. Varnell teaches the engineered wood precursor mixture of Claim 1. Using the values detailed in the rejection of Claim 1, the moisture content of the binder reaction mixture can be calculated to be roughly 50 weight percent.
The Office recognizes this moisture content is outside the claimed ranges of 7 to 25 weight percent. However, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to optimize the moisture content of the binder reaction mixture. The motivation would have been that Varnell strives to provide an adhesive with a low moisture content to avoid the negative effects associated with excess moisture, including blistering and delamination ([0035] and [0073]).
Claim 25 is rejected under 35 U.S.C. 103 as being unpatentable over US 2016/0257815 to Varnell, as applied to Claim 1 above, and further in view of US 2015/0044483 to Parker et al. (hereinafter Parker).
Regarding Claim 25. Varnell teaches the engineered wood precursor mixture of Claim 1 but does not expressly teach it further comprises borax. However, Parker teaches the concept of including borax in a protein-containing adhesive [0225]. Varnell and Parker are analogous art as they are from the same field of endeavor, namely protein-containing adhesives for engineered wood composites. Before the effective filing date of the instantly claimed invention, it would have been obvious to further include borax in the engineer wood precursor mixture of Example 1b of Varnell. The motivation would have been that Parker teaches borax functions as a flame retardant in protein-containing adhesive compositions [0225].
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 – 3, 5 – 8, 12, 22, 23, 25, 61, 62, 97, and 108 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1, 2, 5, 6, 8, 13, 18, 23, 61, 62, 65, 67, 75, and 79 of copending Application No. 18/564,964 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they are obvious variations upon each other. The instant claims differ from the claims of Application No. 18/564,964 in that the former set forth an engineered wood precursor mixture, while the latter set forth a multi-layer engineered wood product comprising the engineered wood precursor mixture. However, it is the Office’s position that it would have been obvious, before the effective filing date of the instantly claimed invention, to use the engineered wood precursor mixture set forth in the claims of Application No. 18/564,964 apart from the particularly claimed multi-layer engineered wood product. The motivation would have been that the recited engineered wood precursor mixture would find utility in the preparation of a variety of other articles, thus diversifying its potential applications and commercial marketability.
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 April 8, 2026 have been fully considered. The Office responds as follows:
Claim Objections
The Office agrees that the amendments to the claims are sufficient to overcome the outstanding objections to the claims. Accordingly, all outstanding claim objections have been withdrawn.
Rejections under 35 U.S.C. 112
The Office agrees that the amendments to the claims are sufficient to overcome the outstanding rejections of the claims under 35 U.S.C. 112, except the rejection of regarding the lack of antecedent basis for “the” dry weight of the binder reaction mixture recited in Claim 1. No argument or amendment has been made to address this particular rejection. Accordingly, all outstanding rejections under 35 U.S.C. 112 have been withdrawn. As Claims 2, 3, 5 – 8, 12, 22, 23, 25, 61, 62, 97, and 108 all ultimately depend on Claim 1, they incorporate the subject matter thereof and consequently remain rejected under this statute.
Rejections under 35 U.S.C. 102
Applicant argues that Varnell does not appear to disclose a single binder reaction mixture but instead describes the sequential addition of a liquid mixture comprising glycerol and afterward soy flour. The Office respectfully submits that the instant claims are directed to an engineered precursor mixture comprising a plurality of wood components, aqueous portion comprising glycerol, and an least partially non-dissolved polypeptide-containing component comprising soy flour. The instant claims do not limit the order in which the various components are combined to form the engineered precursor mixture. As such, the Office maintains the position that Varnell is properly relied upon teach the claimed engineered wood precursor mixture.
Specifically, the reference teaches treating the wood with the liquid mixture comprising glycerol and subsequently states “the treated wood and soy flour were then mixed” [emphasis added] [0098]. The acting of mixing in Varnell necessarily provides a mixture, specifically a mixture comprising all of the instantly claimed ingredients: wood components, a liquid/aqueous mixture comprising glycerol, and an least partially non-dissolved polypeptide-containing component comprising soy flour.
Claim 1 characterizes the combination of an aqueous portion comprising glycerol and an least partially non-dissolved polypeptide-containing component comprising soy flour as “a binder reaction mixture”. Per above, the mixture of Varnell comprises the instantly claimed combination of a liquid/aqueous mixture comprising glycerol and an least partially non-dissolved polypeptide-containing component comprising soy flour in the instantly claimed amounts. This combination of ingredients in the mixture of Varnell must also then necessarily correspond to a binder reaction mixture.
With respect to Claim 61, applicant argues that Tisserat cannot be relied upon in a rejection under 35 U.S.C. 102 because anticipation must be based upon a single reference. "To serve as an anticipation when the reference is silent about the asserted inherent characteristic, such gap in the reference may be filled with recourse to extrinsic evidence. Such evidence must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill." Continental Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1268, 20 USPQ2d 1746, 1749-50 (Fed. Cir. 1991) Note that as long as there is evidence of record establishing inherency, failure of those skilled in the art to contemporaneously recognize an inherent property, function or ingredient of a prior art reference does not preclude a finding of anticipation. Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342, 1349, 51 USPQ2d 1943, 1948 (Fed. Cir. 1999) (MPEP 2131.01(III))
The Office respectfully submits that Tisserat is applied only as an evidentiary reference to show the commercially available soy flour used by Varnell (PROLIA® 200/90) inherently has a protein content which falls within the instantly claimed range.
Rejections under 35 U.S.C. 103
With respect to the rejections in view of secondary reference Anderson, applicant argues that the Office action does not explain why Anderson’s high-pH/sodium trimetaphosphate (STMP) teachings would have been expected to transfer predictably to Varnell’s materially different polyamidoamine-epichlorohydrin (PAE) system. Applicant additionally argues that the instant application underscores the asserted benefits of the base are chemistry dependent.
However, both references are directed to engineered wood adhesives based on lignocellulosic materials as their primary material. Both references are also focused on incorporating a protein source therein, e.g. soy flour (see [0003] of Anderson and [0057] of Varnell). Additionally, both references also seek to increase the pH of the composite material formed in some embodiments (see [0029] of Anderson and [0037] – [0038] of Varnell). Anderson teaches the concept of providing sodium hydroxide as a base in the aqueous portion of an engineered wood precursor mixture to adjust its pH to 10 to 14. Anderson further details a number of advantages associated with this increase in pH [0029]. The Office consequently maintains the position that there is sufficient nexus between the disclosures and chemistry of Varnell and Anderson to combine these references with a reasonable expectation of success.
Additionally, applicant argues that sulfuric acid is provided to lower the pH, e.g. in Example 1a described in [0096]. However, the outstanding rejection relies on a different embodiment of Varnell, Example 1b. It is expressly taught in the last sentence of the paragraph describing this embodiment, [0096], that there is no need to acid treat the soy, i.e. no acid is provided in this embodiment.
With respect to the rejections under 35 U.S.C. 103 in view of only Varnell as a reference, applicant argues that Varnell fails to disclose the claimed amounts relative to the binder reaction mixture. While the Office recognizes that the amounts of the components disclosed by Varnell are not relative to binder reaction mixture specifically, it is the Office’s position that the optimizing the amounts of the components as proposed in the rejections of Claims 7, 8, and 23 would be reasonably expected to provide amounts of the components relative the binder reaction mixture falling within the claimed ranges. Moreover, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
In response to the rejection of Claim 12, applicant argues that the rejection does not provide adequate basis for reintroducing a component identified in Varnell as unnecessary for that process. However, the Office action does provide support for this position. Namely, it is indicated that Varnell teaches sodium meta bisulfite functions to lower the viscosity of the mixture [0098] and a further reduction in viscosity may be desirable in certain adhesive applications to enhance their sprayability (see Page 10 of the Office action mailed January 9, 2026). Additionally, the Office respectfully submits that there is no assertion of routine optimization in the rejection of Claim 12, as alleged in applicant’s remarks.
With respect to the rejections in view of secondary reference Parker, applicant argues that Parker only discloses borax as one example within a broad list of optional flame retardants. Applicant additionally argues that the teaching of Varnell does not provide a sufficient basis for selecting borax for incorporation into Varnell’s specific system or for concluding that such a modification would have been compatible with Varnell’s processing and performance objectives.
In response, the Office notes that both Varnell and Parker are directed to protein-containing adhesives for engineered wood composites. Varnell further teaches flame retardants are suitably included in its composite materials [0091] and does not limit the types of flame retardants that may be used. Thus, inclusion of a known flame retardant in its composite materials would indeed be compatible with Varnell’s processing and performance objectives. Parker teaches borax as a known flame retardant specifically in protein-containing adhesives for engineered wood composites. The comprehensiveness of the list of suitable flame retardants does not negate the fact that borax is specifically taught by Parker as a suitable flame retardant. Thus, the Office maintains the position that, before the effective filing date of the instantly claimed invention, it would have been obvious to further include borax in the engineered wood precursor mixture of Example 1b of Varnell.
Double Patenting
Applicant has provided no specific argument with respect to the outstanding obviousness-type double patenting rejection over U.S. Application No. 18/564,964 nor filed a terminal disclaimer to obviate this rejection. The obviousness-type double patenting rejection over U.S. Application No. 18/564,964 has consequently been maintained.
Conclusion
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MELISSA RIOJA whose telephone number is (571)270-3305. The examiner can normally be reached Monday - Friday 10:00 am - 6:30 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie Lanee Reuther can be reached at (571)270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MELISSA A RIOJA/Primary Examiner, Art Unit 1764
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