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 Group I, claims 1-9, in the reply filed on 05/19/2026 is acknowledged. The traversal is on the ground(s) that 1) the election appear improper under MPEP § 803 as there the inventions are not independent or distinct and there is no serious burden, and 2), the shared technical feature is special as Valkonen does not teach “consist essentially of” the polymerizable substances such as not including phenol or other class of phenols other than the lignin or lignin oligomer. The first argument regarding MPEP § 803 is considered moot and unpersuasive because it is under an incorrect independent and distinct restriction analysis. For a §371 national stage application, a unity of invention restriction analysis is used. (See MPEP § 823 and 1850). The second argument is also found unpersuasive because, as explained and cited by the rejection below, the shared technical feature is not special as it is already known in the prior art as explained below.
The requirement is still deemed proper and is therefore made FINAL.
Claims 10-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 05/19/2026.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-9 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites, “wherein the polymerizable substances in the aqueous composition consist essentially of lignin and lignin oligomers…” However, the Applicant’s specification only states the “polymerizable substances” as lignin and lignin oligomer…and biomass or biological origins in their specification. However, the term “consist essentially of,” is only used in context of the “aqueous composition,” for step (i) as cited in page 7, line 7-10, of their specification, and the “aqueous composition,” in step (ii) for consisting essentially of the aqueous composition of step (i) and the curing agent, as cited in page 7, line 27-30 of their specification. The specification does not mention where the “polymerizable substances” consist essentially of the lignin and lignin oligomers and thus, is considered new matter as it does not have support in the specification.
Claims 2-9 are dependent claims which fail to alleviate the issues above.
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 1-9 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.
In regard to Claim 1, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 recites the broad recitation “an aqueous composition comprising lignin…and lignin oligomer…,” and the claim also recites “the aqueous composition consist essentially of lignin and lignin oligomers…” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. For examination purposes, the claims will be interpreted as “comprising.”
Claim 1 also recites the limitation "the polymerizable substances…" in line 9-10. There is insufficient antecedent basis for this limitation in the claim.
Claims 2-9 are dependent claims which fail to alleviate the issues above.
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.
Claim(s) 1, 3, 5-9, is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2015/0087781 A1 to Valkonen et al. (hereinafter Valkonen) and in further view of JP 2014-024933 A to Koyama et al. (hereinafter Koyama).
Regarding claims 1, 3, 5-9, Valkonen teaches preparing a binder composition by mixing water, NaOH (i.e. catalyst), 492 g (61% concentration) of high molecular weight lignin with a Mw of 3000 g/mol, and 111 g (90% concentration) of low molecular weight lignin with a Mw of 1300 g/mol, (para 105), heating to 60-75 deg C for one hour then lowered to 50 deg C to form an aqueous dispersion (para 90 and 106), and then a phenol, and 941 g (40% concentration) of total formaldehyde (molar mass 30/g/mol), (i.e. crosslinker), are added to the aqueous dispersion and heated to 75-85 deg C to a viscosity of 430 cP (para 91-92 and 106-107). Valkonen teaches the HMW-lignin may originate from kraft lignin (para 28-29 and 33), and the above amounts further correlates to a weight ratio of 100 LMW-lignin/300 HMW-lignin, or 0.33, which meets claim 5. Valkonen further teaches that the lignin may be used to replace synthetic phenols (i.e. phenol, cresol, resorcinol), (para 62 and 68) such as replacing 80% of the synthetic phenol (See Example 4, para 115).
Valkonen does not explicitly teach wherein the molar ratio of crosslinking agent to lignin/lignin oligomers is 0.5-1.8.
However, Koyama teaches a curable resin made from lignin by reacting a lignin with formaldehyde in the presence of alkali (See abstract) used in the field of adhesives (para 5), which is in the same field of use of the Applicant’s invention of lignin based binder compositions. Koyama further teaches that the molar ratio of formaldehyde (F) to phenol group (P) in the lignin is 1.0 to 3.0, (para 20), and specifically uses 1.5 in their examples (para 29), which meets the claimed molar ratio. Koyama further teaches because the F/P molar ratio range gives a good curing rate without gelation occurring during reaction. (para 20).
It would have been obvious to one ordinarily skilled in the art before the effective date of the claimed invention to use the F/P molar ratio of Koyama for the composition of Valkonen because Koyama teaches the same field of use of the Applicant’s invention of lignin based binder compositions and Koyama further teaches because the F/P molar ratio range gives a good curing rate without gelation occurring during reaction. (para 20).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HA S NGUYEN whose telephone number is (571)270-7395. The examiner can normally be reached Mon-Fri, Flex schedule 7:30am-4:00pm.
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/HA S NGUYEN/Primary Examiner, Art Unit 1766
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