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 .
Response to Amendment
This is a response to the amendment filed 11/24/2025. Claims 1 and 14 have been amended.
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive. Applicant argues again the references individually without arguing why the proposed combination is unsuitable or addressing the motivation in the prior action. The Examiner notes one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Applicant argues CN108659760 fails to teach melamine content, solids content of A, and the claimed ratio. However, this is present in Qureshi et al. (US 5,962,603), which teaches overlapping ranges as claimed for intumescent compositions as in CN108659760. Applicant argues Qureshi et al. doesn’t teach the claimed integrated system with kraft carrier pre-impregnation and orientation. However, the rejection is based on CN108659760 as a primary reference and Zheng (US 2007/0102108), which teaches Kraft paper. Applicant argues Zheng as a decorative layer, and not an intumescent layer, but does not address Examiner’s motivations for incorporating such a decorative layer with the system of CN108659760.
Applicant also appears to argue the instantly claimed invention produces an unexpected result or has other property distinctions from the prior art. Examiner notes the recited properties and coating masses do not appear to be claimed, so it is assumed Applicant is arguing the product formed by the claimed process demonstrates advantageous results that overcome the prima facie case of obviousness in the prior action. The Examiner notes the burden is on the Applicant to establish results are unexpected and significant and the Applicant also has the burden of explaining the proffered data. See MPEP 716.02(b).
Applicant argues the product manufactured in the instant Application produces superior properties distinct from the prior art and cites 12 pages of the instant specification. However, Applicant does not clearly explain their data or how the supposed advantages occur over the closest prior art reference in CN108659760. The burden is on the Applicant to make a comparison to the closest prior art reference. See 716.02(e). Thus, Applicant must demonstrate using Kraft paper instead of veneer produces distinct advantages. However, Examiner sees no data supporting this conclusion and Applicant has not pointed any such data out and explained why it supports this position.
Further, to support unexpected results for a claimed range, such as melamine content, etc., Applicant should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960); see also MPEP 716.02(d). Thus, Applicant should have data showing that at least one of the claimed melamine content, solids content, or ratio provide advantages relative to outside those ranges to distinguish over CN108659760. Again, the Examiner can find no evidence of such data, and Applicant has made no effort to help locate any such data and argue for range criticality, and simply cites 12 pages of the instant specification without further explanation of relevance. The fact the instant invention may have certain properties does not make it inventive unless Applicant can show the claimed invention has these properties and the cited prior art does not.
At the very least, some comparison must be made between the claimed invention and the closest art cited to show a purported advantage other than a mere allegation of an advantage without any direct supporting evidence. This is because it is well settled that counsel's arguments are no substitute for objective evidence. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Also, conclusory statements without supporting evidence are entitled to little probative value. In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); In re Wood, 582 F.2d 638, 642 (CCPA 1978); In re Greenfield, 571 F.2d 1185, 1188 (CCPA 1978); In re Lindner, 457 F.2d 506, 508 (CCPA 1972). Therefore, without any supporting evidence and explicit data showing advantages over CN108659760, Applicant's argument is not persuasive and the previous rejections are not overcome.
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 1-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of copending Application No. 18/265,965 in view of Kim et al. (US 2003/0022577). Application No. 18/265,965 teaches the exact process of forming the aqueous intumescent composition with the same additives at identical ratios and solids content, and both teach laminating, but teach a different carrier of kraft paper and fiber matte, respectively. However, in decorative laminates having fire resistant resins (See, for example Kim et al., page 2, paragraph [0028]), it is known both Kraft paper and glass nonwovens, i.e. matting, are suitable carriers for the resin (See Kim et al. page 8, Claim 23). Thus, it at least would have been obvious when using an intumescent composition to impart fire retardancy in decorative laminates via coating the intumescent composition on a layer thereof, that both Kraft paper and glass matting would have been viewed a known suitable layers and carrier alternatives in forming laminates.
This is a provisional nonstatutory double patenting rejection.
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) 1-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over CN108659760 in view of Qureshi et al. (US 5,962,603) and Zheng et al. (US 2007/0102108).
Regarding Claims 1, 6-8, 10, 12, and 13, CN108659760 teaches a flame-retardant adhesive (and note it is apparent this composition is intumescent) for bonding decorative wood laminates such as an exterior decorative veneer on a board (See page 1, paragraph [0002] and page 6, paragraph [0029]). CN108659760 teaches an aqueous resin solution referred to as “water soluble amino resin,” such as melamine-formaldehyde, and indicates the reactants are not fixed and may be adjusted as desired (See page 5, paragraphs [0019]-[0021]). CN108659760 teaches forming this aqueous solution first and then adding 45 g of acid donor polyphosphate and 15 g of carbon donor pentaerythritol, i.e. 3:1 mass ratio, and then coating on the veneer to laminate on the board (See page 8, paragraphs [0043]-[0045]).
As described above, CN108659760 teaches melamine formaldehyde and indicates various formulations of such a resin are suitable, but fails to teach a melamine content within he claimed range and is generally silent as to solids content. However, it would have been apparent known melamine-formaldehyde formulations known for similar applications would have predictably been suitable since the aqueous amino resin is not limited and it specifically taught as being adjustable. Qureshi et al. teaches when formulating aqueous melamine-formaldehyde for intumescent compositions, the melamine to formaldehyde mole ratio may be in the range of 1:1 to 1:6, which implies equal mass amounts of melamine and formaldehyde, i.e. 1:1 mass ratio, are suitable (See Abstract, col. 3, lines 14-19, and col. 4, lines 44-55, and note the molecular weight of melamine is 126.12 and formaldehyde is 30.03, thus making melamine about 4.2 times more heavy, thus making a 1:4 melamine to formaldehyde mol ratio close about 1:1 mass ratio, thus making such a ratio well within the taught ranges). Qureshi et al. further teaches applying solid melamine into 37% aqueous formaldehyde, which suggests a 27% melamine content when forming a 1:1 mass ratio solution (See col 4, line 56 to col. 5, line 5, teaching applying melamine to formaldehyde, such a 37% by weight, aqueous solution, thus making 37 parts melamine in 137 parts aqueous solution when using a 1:1 mass ration, or 27%; note 37/137=0.27). Thus, it would have been obvious to a person having ordinary skill in the art at the time of invention to utilize melamine within the claimed range, such as 27% by weight. Such melamine content is known in similar aqueous amino resins utilize in intumescent compositions such as are desired in CN108659760, and thus such melamine contents would have predictably been a suitable adjustment of the aqueous amino resin such as is taught in CN108659760. Note when using such a solution, it has approximately 54% solids content prior to adding the acid and carbon donor, i.e. 37+37/137=0.54. Note when using such as melamine-formaldehyde as the aqueous amino solution in CN108659760, such as in Example 1, the final solution has a solids content of approximately 73% by weight, within the claimed range (note 54 g melamine-formaldehyde, 46 g water, 10 g polyvinyl acetate, 45 g ammonium polyphosphate, 15 pentaerythritol = 170 grams with 124 grams solid or 73%; note the citric acid solution and ammonium chloride solution will actually lower solids content but have a negligible overall effect and possibly pull the solids content down to around 70% at most, but certainly not move it out of the claimed range; note 54 g : 60 g carbon and acid donor produces a ratio slightly below 1:1 and well within the claimed range). As such, a solids content in the range of 70-73% with a close to 1:1 (aA:(a+c)) would have been obvious to a person having ordinary skill in the art based on known prior art teachings for intumescent compositions.
CN108659760 teaches coating the veneer to form decorative wood laminates (See page 8, paragraph [0045]), it being apparent the veneer is the decorative layer, but failing to teach Kraft paper. However, it would have been apparent known alternatives to veneers for forming the decorative layer in wood laminates would have predictably been suitable. It is well-known in the prior art in forming such laminates that a wood-pattern printed papers impregnated with resins such as melamine are a known suitable alternative to real wood veneer to provided more cost reduction, and that such paper may utilize Kraft paper (See, for example, Zheng et al., page 5, paragraph [0038], teaching impregnated Kraft paper as an alternative surface adhesive laminated decorative layer to wood veneer). Thus, it at least would have been obvious to a person having ordinary skill in the art at the time of invention to utilize other known decorative layers used as alternatives to veneer in forming the flame retardant wooden reconstituted decorative material in CN108659760. Doing so would have predictably provided broadened the applicability of CN108659760 to include known alternative methods for forming decorative wood, including more cost-effective methods that utilize Kraft paper with a printed wood pattern as is well-known in the decorative laminate art as an alternative to real wood veneer.
Regarding Claims 2, 3, and 9, as described above, the solids content is in the claimed range. Examiner submits any addition of water that, after said addition, allows the solids content to be in the claimed range, reads on Claim 2. CN108659760 teaches adding a 20% ammonium chloride solution, which can be inferred to include a water solvent (See page 8, paragraph [0043]). This addition adjusts the solids content within the claimed range. It is also noted adding water is also a well-known method to achieve desired viscosity and is not considered inventive. Note for the same reasons, pre-dispersing the additives of paragraph [0043] in CN108659760 would have been obvious. Specifically, pre-dispersing the solids in water would have predictably been suitable way to control viscosity in melamine formaldehyde as desired for mixing, and 50% solids dispersions are standard in implementing such processes.
Regarding Claim 4, CN108659760 teaches coating the adhesive as 200 g/m2 (See page 8, paragraph [0045]).
Regarding Claim 5, Qureshi et al. teaches some phenol formaldehyde, such as 20% by weight, may be added to the MF resins, or 5:1 MF to PF, as a known additive (See col. 5, lines 51-61). Thus, such an addition at least would have been obvious to a person having ordinary skill in the art at the time of invention to formulate a known aqueous amino resin for an intumescent composition. Examiner submits due the wide range of melamine that can added, the claimed ratios are still obvious when adding PF.
Regarding Claim 11, Zheng et al. teaches the core of decorative wood laminates is known to be oriented strand board, plywood, particleboard, medium fiber board (See page 5, paragraph [0038]). Such core would have predicably been suitable in forming the decorative wood laminates of CN108659760 as common supports for a decorative layer.
Regarding Claim 14, these materials are known common filler used in known amounts for flame retardant compositions and thus would have been obviously included in such amounts to increase flame retardancy and/or reduce formulations costs (See, for example, Qureshi et al., col. 10, line 62 to col. 11, lines 5, teaching silicates and metal hydroxides that surely render obvious the claimed materials as common fillers for similar applications).
Regarding Claim 15, CN108659760 teaches a curing agent added at less than 5% by weight (See page 5, paragraph [0019]).
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SCOTT W DODDS whose telephone number is (571)270-7653. The examiner can normally be reached M-F 10am-6pm.
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, Michael Orlando can be reached at 5712705038. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SCOTT W DODDS/Primary Examiner, Art Unit 1746