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
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claim(s) 1-9 and 16, drawn to a binder composition.
Group II, claim(s) 10-12 and 17, drawn to a method of manufacturing a wood-based material.
Group III, claim(s) 13-15 and 18, drawn to a wood-based material.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Groups I-III lack unity of invention because even though the inventions of these groups require the technical feature of “a binder comprising an organic phase having at least one isocyanate binder, an aqueous phase, and a phase transfer catalyst to accelerate the curing of the isocyanate binder,” this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of “Synthesis of Water-Soluble Highly Blocked (>98%) Isohphorone Diisocyanate Using NaHSO3 and its effects on paper properties” (herein referred to as “Wang”). Specifically, Wang teaches a binder comprising an organic phase having at least one isocyanate binder, an aqueous phase (p 9015 in “Selection of Phase Transfer Catalysts”), and a phase transfer catalyst to accelerate the curing of the isocyanate binder (p 9015 in “Selection of Phase Transfer Catalysts”).
During a telephone conversation with George Coury on 1/6/2026 a provisional election was made without traverse to prosecute the invention of Group I, claims 1-9 and 16. Affirmation of this election must be made by applicant in replying to this Office action. 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 1/12/2024 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 1-9 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. Said uncertainty is not clarified by the specification which teaches that the composition allows for “the curing temperature can be lowered on one hand and kept within a predetermined temperature interval on the other hand, so that a beginning of curing can be controlled.”
For examination purposes, any phase change catalyst is understood to “accelerate the curing of an isocyanate binder” in an organic phase in the presence of an aqueous phase. Specifically, the specification teaches “the phase transfer catalyst transfers water from the aqueous phase to the organic phase, where a reaction with the isocyanate can occur and subsequently the phase transfer catalyst is released again. Thus, the phase transfer catalyst accelerates the ration of curing the isocyanate binder.”
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) 1-4, and 7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Weng et al (2020) “Synthesis of Water-Soluble Highly Blocked (>98%) Isophorone Diisocyanate Using NaHSO3 and its Effects on Paper Properties” (BioResource 15(4), 9013-9027).
With regards to claim 1, Weng teaches a binder composition for manufacturing of paper (title-herein understood to read on the claimed “a wood-based material”. Alternatively, the examiner takes the position that the limitation “for manufacturing a wood-based material” is an intended use limitation which does not structurally or compositionally further limit the claim). The binder composition comprises: an organic phase having at least one isocyanate binder, an aqueous phase and a phase transfer catalyst (p 9015 in “Selection of Phase Transfer Catalysts”). The phase transfer catalyst is understood “to accelerate the curing of the isocyanate binder” for the reasons noted above in the 112(b) rejection.
With regards to claim 2, Weng teaches the binder composition wherein the aqueous phase is
immiscible with the organic phase and is provided as reactant for curing the isocyanate binder(p 9015 in “Selection of Phase Transfer Catalysts”.
With regards to claim 3, Weng teaches the binder composition wherein the phase transfer
catalyst has an onium ion (see “Materials” on p 9 015).
With regards to claim 4, Weng teaches the binder composition wherein the phase transfer catalyst has an ammonium, phosphonium and/or sulfonium ion (see “Materials” on p9 015).
With regards to claim 7, Weng 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 Weng et al (2020) “Synthesis of Water-Soluble Highly Blocked (>98%) Isohphorone Diisocyanate Using NaHSO3 and its Effects on Paper Properties” (BioResource 15(4), 9013-9027), as applied to claims above.
With regards to claim 9, Weng is relied upon as above, but does not teach the claimed ratio. However, Weng 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, Wang teaches that the amount of phase transfer catalyst is a result effective variable wherein the degree of blocking gradually increased with increasing amounts of phase transfer catalyst (p9022). 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 Weng et al (2020) “Synthesis of Water-Soluble Highly Blocked (>98%) Isohphorone Diisocyanate Using NaHSO3 and its Effects on Paper Properties” (BioResource 15(4), 9013-9027), as applied to claims above, and further in view of Tani et al (US 2014/0163256).
Weng 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 Weng. 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 Weng.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Weng et al (2020) “Synthesis of Water-Soluble Highly Blocked (>98%) Isohphorone Diisocyanate Using NaHSO3 and its effects on paper properties” (BioResource 15(4), 9013-9027), as applied to claims above, and further in view of Nelson et al (US 2002/0071954).
Weng 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 when used with cellulose gypsum panels (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 Weng. The motivation for doing so would have been said diphenylmethane diisocyanate are known to exhibit improved strength and water resistance properties.
Conclusion
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.
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, 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.
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.
KEVIN R. KRUER
Examiner
Art Unit 1787
/KEVIN R KRUER/Primary Examiner, Art Unit 1787