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 .
Election/Restrictions
Applicant's election with traverse of claims 32-40 & 47-51 in the reply filed on 8/18/25 is acknowledged. The traversal is on the ground(s) that there is unity of invention because of Rule 475(b) precludes a lack of unity determination and the internation phase did not determine there was a lack of unity of invention. This is not found persuasive because (1) the internation phase of examination is not binding on the Office and (2) the Rules do not preclude a finding of a lack of unity of invention for a combination of a product and method of producing said product if there is no special technical feature shared between the two groups that make a contribution over the prior art and given that claim 32 is obvious in view of ‘319 as discussed below it is apparent that there is no unity of invention.
The requirement is still deemed proper and is therefore made FINAL.
Claims 41-46 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected product, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 8/18/25.
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 32-40 & 47-51 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.
Claim 32: Claim 32 recites limitation “similar density ligno-cellulosic material” in line 2 which renders the claim indefinite because one of ordinary skill in the art would not be able to determine the metes and bounds of the claim because there is no definition/disclosure of the scope of “similar density ligno-cellulosic material”.
Claim 32: Claim 32 recites the limitation "the chemically treated material" in line 11. There is insufficient antecedent basis for this limitation in the claim.
For the purpose of examination, “the chemically treated material” is being interpreted to mean the lignocellulosic material treated with the mix.
Claim 32: The term “enhanced” in claim 32 is a relative term which renders the claim indefinite. The term “enhanced” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Thus, one of ordinary skill in the art would not be able to determine the durability claimed.
Claims 33-40 & 47-51: Claims 33-40 & 47-51 are rejected as being indefinite because they depend from claim 32 and do not remedy the issues of claim 32.
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 32-39, 47, & 49-51 are rejected under 35 U.S.C. 103 as being unpatentable over van Tol (NL2015319; hereafter ‘319). As evidenced by PubChem, Linseed Oil, found at https://pubchem.ncbi.nlm.nih.gov/compound/Linseed-Oil; hereafter PubChem)
Claim 32: ‘319 discloses a method of stabilization (the material is molded into a final product, abstract), hydrophobation (treated with linseed oil to improve watertightness, pg 9), and enhanced durability (the treatment is cured, pg 9) of a solid ligno-cellulosic material (abstract), wherein:
a crosslinking formulation comprising at least one carboxylic acid having at least two carboxyl groups as cross-linking acid and at least one polyol is prepared in a base of water (lines 18-30, pg 2),
a hydrophobation emulsion comprising at least one hydrophobic agent and a non-ionic surfactant is prepared separately from the cross-linking formulation (pgs 1 & 9; as evidenced by PubChem, linseed oil comprises a mixture of glycerides of linoleic, linoleic, oleic, and palmitic acid wherein the palmtic acid reads on the nonionic surfactant and the rest of the mixture reads on the hydrophobation agent),
the crosslinking formulation is applied to the lignocellulosic material (pg 2) and the material is pressed into a shape (pg 2),
the chemically treated material is subjected to a curing step at a temperature initiating an esterification reaction (see pg 6), and
treating the lignocellulosic material with the hydrophobation compound (pg 9).
The treated product maintains watertightness for a long period of time (i.e. the hydrophobation agent is fixed (¶ 9).
‘319 does not expressly teach that
‘319 teaches the claimed invention but fails to explicitly teach the hydroxyl groups of the lignocellulosic material are reacted during the process. Since the same reactants are used with the same heat curing; it is reasonable to presume the same reaction will occur. Support for said presumption is found in the use of like materials and like processes which would result in the claimed property.
The burden is upon the Applicant to prove otherwise. In re Fitzgerald 205 USPQ 594. In addition, the presently claimed properties would obviously have been present once the product is provided. Note In re Best, 195 USPQ at 433, footnote 4 (CCPA 1977).
‘319 does not teach mixing the linseed oil mixture with the crosslinking formulation prior to applying the mixture to the lignocellulosic material.
However, it would have been obvious to one of ordinary skill in the art at the time of filing to mix the linseed oil with the crosslinking formulation prior to application because any order of steps is prima facie obvious absent a showing of unexpected results. See MPEP §2144.
‘319 does not teach the claimed temperature.
However, it would have been obvious to one of ordinary skill in the art at the time of filing to use temperature in the claimed range because it is prima facie obvious to optimize the temperature of the process. Generally, 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). MPEP 2144.05(II)(A).
Claim 33: The cross-linking acid is a tricarboxylic acid (see pg 2).
Claim 34: The at least one polyol is sorbitol (¶ 3, jpg 7).
Claim 35: The hydrophobic agent is a fatty acid ester (glycerides of linoleic).
Claim 36: The hydrophobation emulsion comprises a natural oil (linseed oil).
Claim 37: The mix of crosslinking formulation and hydrophobation emulsion is applied in liquid form (pg 2).
Claim 38: The application process includes pressurized environment through impregnation (see ¶s 1-2, pg 4).
Claim 39: ‘319 does not teach the claimed temperature.
However, it would have been obvious to one of ordinary skill in the art at the time of filing to use temperature in the claimed range because it is prima facie obvious to optimize the temperature of the process. Generally, 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). MPEP 2144.05(II)(A).
Claim 47: The crosslinking acid can be citric acid (i.e. 2-Hydroxypropane-1,2,3-tricarboxylic acid, ¶ 2, pg 8).
Claim 49: The treating composition is applied by submersion (¶s 1-3, pg 3).
Claim 50: ‘319 does not teach the claimed temperature.
However, it would have been obvious to one of ordinary skill in the art at the time of filing to use temperature in the claimed range because it is prima facie obvious to optimize the temperature of the process. Generally, 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). MPEP 2144.05(II)(A).
Claim 51: ‘319 does not teach the claimed temperature.
However, it would have been obvious to one of ordinary skill in the art at the time of filing to use temperature in the claimed range because it is prima facie obvious to optimize the temperature of the process. Generally, 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). MPEP 2144.05(II)(A).
Claim 40 is rejected under 35 U.S.C. 103 as being unpatentable over ‘319, as applied above, and further in view of Thorsrud (US Patent 4,256,850; hereafter ‘850). As evidenced by PubChem.
Claim 40: ‘319 teaches heating the mixture to cure during the shaping process (abstract).
‘319 does not teach using microwave during the process.
However, ’850, which is directed towards a molding process involving paper and resin (abstract) teaches using microwave to heat the system (see col. 8, lines 1-10).
It would have been obvious to one of ordinary skill in the art at the time of filing to incorporate the teachings of ‘850 into the process of ‘319 and use microwave during the process to heat the system because it is an art recognized means of heating in the field and this would have predictably provided the heat as desired.
The combination does not teach that the microwave heating enhances the uptake of the crosslinking and hydrophobation composition.
The combination teaches the claimed process but fails to explicitly the microwave heating enhances the uptake of the crosslinking and hydrophobation composition. Since the same reactants are used with the same heat curing; it is reasonable to presume the same results will occur. Support for said presumption is found in the use of like materials and like processes which would result in the claimed property.
The burden is upon the Applicant to prove otherwise. In re Fitzgerald 205 USPQ 594. In addition, the presently claimed properties would obviously have been present once the product is provided. Note In re Best, 195 USPQ at 433, footnote 4 (CCPA 1977).
Claim 48 is rejected under 35 U.S.C. 103 as being unpatentable over ‘319, as applied above, and further in view of Dutkiewicz et al. (US PG Pub 2006/0292951; hereafter ‘951). As evidenced by PubChem.
Claim 48: As discussed above, ‘319 teaches using linseed oil to control the wettability of the lignocellulosic material.
‘319 does not teach using carnuba wax in place of linseed oil.
However, ‘951, which is directed towards controlling the wettability of lignocellulosic material (see title, abstract, & ¶ 52) teaches that linseed oil and carnuba are art recognized alternatives for controlling the wettability of lignocellulosic materials (see abstract, Table 1, and ¶s 91-94).
It would have been obvious to one of ordinary skill in the art at the time of filing to incorporate the teachings of ‘951 into the process of ‘319 and substitute carnuba wax for linseed oil during the process because they are art recognized alternative fatty acid compounds for controlling the wettability of lignocellulosic materials and the use of carnuba wax would have predictably produced the desired results.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES M MELLOTT whose telephone number is (571)270-3593. The examiner can normally be reached 8:30AM-4:30PM CST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Curtis Mayes can be reached at 571-272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/James M Mellott/ Primary Examiner, Art Unit 1759
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