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
Claims 10-15 17, and 18 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement filed 2/19/2026 has been fully considered. An initialed copy of said IDS is enclosed herein.
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, 3-9 and 16 (all pending claims) 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. Specifically, it is unclear how the limitation “to accelerate the curing of the isocyanate binder” is evaluated as the specification and the prior art fail to teach an objective method by which acceleration/deceleration of the curing of isocyanate is determined. As the cited Weng reference teaches, the curing rate of isocyanate reactions is dependent upon numerous variables; thus, it is impossible to determine if the phase change catalyst is accelerating the reaction unless the other reaction variables are defined/controlled.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1, 3, 4, and 7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hahn et al (US 4,223,070).
With regards to claim 1, Hahn teaches a binder composition comprising an organic phase having at least one isocyanate binder, an aqueous phase (abstract) and a phase transfer catalyst (col 7, lines 55+). The phase transfer catalyst is understood “to accelerate the curing of the isocyanate binder” for the reasons noted above in the 112(b) rejection. Furthermore, Hahn teaches the phase transfer catalyst promotes contact between reactants located in separate phases and enhances the reaction between polyisocyanate and water (col 7,lines 55+). Hahn teaches the binder composition wherein the aqueous phase is immiscible with the organic phase and is provided as reactant for curing the isocyanate binder(see all). With regards to the claimed limitation “for manufacturing of a board-shaped wood-based material by gluing a chip material and subsequently pressing the glued chip material to form the boar-shaped wood-based material” is understood to be an intended use limitation which does not does not further structurally or compositionally limit the claim and does not patentably distinguish the claimed invention from the teachings of Hahn.
With regards to claim 3, Hahn teaches the binder composition wherein the phase transfer
catalyst has an onium ion (col 7, lines 55+).
With regards to claim 4, Hahn teaches the binder composition wherein the phase transfer catalyst has an ammonium, phosphonium and/or sulfonium ion (col 7, lines 55+).
With regards to claim 7, Hahn is silent to the presence of formaldehyde and is thus understood to teach “the binder composition wherein the binder composition is formaldehyde-free and/or does not release formaldehyde.”
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.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hahn et al (US 4,223,070), as applied to claims above.
With regards to claim 9, Hahn is relied upon as above, but does not teach the claimed ratio. However, Hahn teaches the binder composition wherein a proportion of the phase transfer catalyst of is 0.1% to 0.5% based on the mass of the isocyanate binder. However, Hahn teaches that the amount of catalyst is a result effective variable wherein the rate of reaction is increased with increasing amounts of phase transfer catalyst (col 7, lines 40+). Thus, it would have been obvious to one of ordinary skill in the art the time the invention was filed to optimize the amount of phase transfer catalyst in order to optimize the blocking of the isocyanate in the organic phase.
Claim(s) 5, 6 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hahn et al (US 4,223,070), as applied to claims above, and further in view of Tani et al (US 2014/0163256).
Hahn is relied upon as above, but does not teach the phase transfer catalyst may be a crown ether, such as 12 crown 4, or triethylbenzyl ammonium chloride. However, Tani teaches known phase transfer catalyst in the art include crown ethers, such as 12 crown 4, and triethylbenzyl ammonium chloride (0065). Thus, it would have been obvious tone of ordinary skill in the art at the time the invention was filed to utilize a crown ether, such as 12 crown 4, or triethylbenzyl ammonium chloride as the phase transfer catalyst disclosed in Hahn. The motivation for doing so would have been that Tani teaches such compounds are known in the art to be useful as phase chain catalyst and are thus functionally equivalent to the phase change catalyst disclosed in Hahn.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hahn et al (US 4,223,070), as applied to claims above, and further in view of Nelson et al (US 2002/0071954).
Hahn is relied upon as above, but does not teach the isocyanate binder may be polymeric diphenylmethane diisocyanate. However, Nelson teaches diphenylmethane exhibits increased strength and water resistance (0001). Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to utilize diphenylmethane diisocyanate as the diisocyanate disclosed in Hahn. The motivation for doing so would have been said diphenylmethane diisocyanate are known to exhibit improved strength and water resistance properties.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1 and 3-9 have been considered but are moot because the new ground of rejection. In order to expedite prosecution of said application, the examiner will address some of applicant’s arguments which may be relevant to the new grounds of rejection above.
With regards to the previously relied upon Tani reference, applicant argues said reference is directed to a wholly different technical field and is not concerned with binder composition for wood based materials. Said argument is noted but is not persuasive as said reference is understood to be reasonably pertinent to the problem being solved; the reason of a two-phase system in the presence of a phase transfer catalyst. Applicant argues there is no creditable motivation for combining said teachings with the teachings of the claimed binder composition. The examiner respectfully disagrees as said reference demonstrates the claimed phase transfer catalyst are known equivalence of the phase change catalyst of the primary reference. While applicant argues the phase transfer catalyst is “in a different reaction context,” applicant has not provided any evidence or argument demonstrating the difference in the reaction context are material to the combinability of the reference.
With regard to Nelson, applicant argues said reference fails to teach a two phase binder composition in which the aqueous phase is intentionally provided as a curing reactant and the phase transfer catalyst transfers water into the organic phase where reaction with the isocyanate occurs. Said argument is noted but is not persuasive as Nelson was not relied upon for said teachings; rather, the primary reference is relied upon to tech the claimed features noted by applicant.
Thus, applicant’s arguments are not persuasive and the claims are rejected for the reasons set forth herein.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 KEVIN R KRUER whose telephone number is (571)272-1510. The examiner can normally be reached M-F 8am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached at (571) 272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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KEVIN R. KRUER
Examiner
Art Unit 1787
/KEVIN R KRUER/Primary Examiner, Art Unit 1787
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