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 .
It is noted that the examiner assigned to this case has changed.
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1-7) in the reply filed on December 2, 2024 is acknowledged.
Claims 8-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim Objections
Claims 1 and 5 are objected to because of the following informalities:
In claim 1, line 5, “at the least one second” should read “at least one second.”
In claim 1, lines 8-9, “(poly-)condensate to the temperature- curable resin” should read “(poly-)condense to the temperature- curable resin” because condensate is a noun, but the phrasing requires a verb.
In claim 5, line 5, “the least one second” should read “the at least one second.”
Appropriate correction is required.
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.
Claims 1-7 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 1 recites processes or reaction steps using the phrase “preparable” rather than “prepared by”. In the present case, the phrase “preparable” is considered to be the same as “obtainable.” This renders the claim indefinite as to the scope required by using the phrase “obtainable” rather than “obtainable by”. The Federal Circuit has addressed this specific difference in claim wording as “ambiguous language” which is the epitome of indefiniteness. Abbott Laboratories v. Sandoz, Inc., 566 F. 3d 1282, 1295-1296 (Fed. Cir. 2009) (en banc). Claims 2-6 are rejected because they depend from claim 1 and do not correct the issue.
Claim 6 recites the limitation "the water content" in line 4. There is insufficient antecedent basis for this limitation in the claim. Claim 6 depends from claim 1, but claim 1 recites a resin and does not recite a composition with a water component.
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.
Claims 1-4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Xi (5-hydroxymethyl furfural modified melamine glyoxal resin, Journal of Adhesion, 2020, 96(13), 1167-1185; Cite No. A9 on 11/07/2023 IDS).
Xi discloses a hydroxymethyl furfural modified melamine-glyoxal resin (Abstract). The resin is derived from melamine, 5-hydroxymethyl furfural (5-HMF), and glyoxal in a two-step process (page 1169, paragraph 1). First, the pH of a mixture of melamine, 5-HMF, and water is adjusted to 8.0-8.5 and heated to 70 °C for 39 minutes. Then glyoxal is added, the pH is adjusted to 4-4.5, and the composition is held at 70 °C for 1 hour. The resin is later cured by heating at 120 °C for 1 h (page 1171, second paragraph).
The resin of Xi reads on a temperature-curable resin (cured at 120 °C) preparable by the poly-condensation of a first aminoplast-forming chemical (melamine), 5-HMF, and a second poly-condensable chemical (glyoxal), under reaction conditions under which said at least one aminoplast-forming chemical, 5-HMF, and at least one second poly-condensable chemical poly-condense to the temperature- curable resin (claim 1). Melamine reads on wherein the at least one aminoplast-forming chemical is melamine (claim 4). Glyoxal (claim 3) reads on a second poly-condensable chemical that is an aldehyde different from 5-HMF (claim 2).
Claims 1 and 4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Badoux (US 2018/0244825 A1).
Regarding claim 1, Badoux discloses a thermally curable resins produced by reaction of a polycondensation-capable phenolic compound and an aminoplastic forming agent with 5-HMF leading to the formation of polycondensation products (Abstract). This resin reads on a temperature-curable resin preparable by the polycondensation of: at least one aminoplast-forming chemical (aminoplastic forming agent), 5-HMF, and at least one second poly-condensable chemical (polycondensation-capable phenolic compound), under reaction conditions under which said at least one aminoplast-forming chemical, 5-HMF, and the at least one second poly-condensable chemical poly-condense to the temperature-curable resin.
Regarding claim 4, Badoux discloses the temperature-curable resin according to claim 1, wherein the at least one aminoplast-forming chemical is selected from the group of consisting of: urea, melamine, substituted melamine, substituted urea, acetylenediurea, guanidine, thiourea, thiourea derivatives, diaminoalkane, or diamidoalkane, or mixtures thereof ([0029]).
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.
Claims 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Badoux (US 2018/0244825 A1).
Regarding claim 6, Badoux teaches the temperature-curable resin according to claim 1.
Badoux does not teach a solids content within the claimed range.
However, Badoux teaches a solids content of 50-70 wt % ([0054]). It would have been obvious to one of ordinary skill to practice the invention of Badoux such that the solids content was 50-70 wt % because Badoux teaches this solid content range. This range overlaps with the claimed range of 60-85 mass%. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. See MPEP § 2144.05.I. While the solids content is not explicitly determined by evaporating the water content of the reaction solution after its preparation under vacuum until a constant mass has been achieved, the solids content of Badoux would necessarily overlap with the claimed solids content because the ranges overlap substantially.
Regarding claim 7, Badoux teaches the temperature-curable resin according to claim 1.
Badoux further teaches that the reaction is carried out until the solution has reached a viscosity of over 200 mPa*s ([0038]), but it is unclear what temperature the viscosity in [0038] is measured at.
However, Badoux teaches that the resin is produced by a reaction that is first performed at 90 °C and then for several hours at 20 °C and that the change of the viscosity is observed in the process ([0068]). Because the final stages of the polymerization are performed at 20 °C and the reaction is carried out until preferred viscosity is reached, it would have been obvious to one of ordinary skill to have measured the viscosity at 20 °C. It would therefore have been obvious to one of ordinary skill to have prepared the temperature-curable resin of Badoux with a viscosity in the range of over 200 mPa*s measured at 20 °C. This range overlaps with the claimed range of 150 - 1,000 mPa*s at 20 °C. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. See MPEP § 2144.05.I. While not explicitly measured using a rotational viscosimeter according to ISO 3219:1994, the viscosity of Badoux would necessarily overlap with the claimed viscosity range because both ranges are large and Badoux teaches over 90% of the claimed viscosity range.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Badoux (US 2018/0244825 A1) in view of Mortato (US 2018/0244824 A1).
Badoux teaches the temperature-curable resin according to claim 1.
Badoux does not teach a molar ratio (a:b:c) of (a) the totality of the at least one aminoplast-forming chemical, to (b) the totality of 5-hydroxymethylfurfural (5-HMF), its oligomers and/or its isomers, to (c) the totality of the least one second poly-condensable chemical.
However, Badoux teaches that the mole ratio of the total HMF quantity to the total quantity of phenolic compound and/or amino-plastic forming agent is preferably 0.45-0.70 : 1 (Badoux, [0055]).
The ratio of Badoux corresponds to b:a+c is 0.45-0.70 : 1. Badoux teaches using a phenolic compound and/or an amino-plastic forming agent, corresponding to a 1:0 to 0:1 ratio of phenolic compound to amino-plastic forming agent. Badoux therefore teaches a:b:c is 0-1 : 0.45-0.70: 1-0. It would have been obvious to one of ordinary skill to select a ratio of a:b:c is 0-1 : 0.45-0.70: 1-0 because Badoux teaches this range. This range overlaps with the claimed a:b:c ratio range. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. See MPEP § 2144.05.I.
Badoux does not teach a preferred mole ratio between the phenolic compound and the amino-plastic forming agent.
However, Mortato teaches a mole ratio between the total HMF quantity and the phenolic compound. Mortato teaches a thermosetting resin used in the production of plywood, wood fiber composite, chipboard, or multilayer boards (Mortato, [0002]). The thermosetting resin is the product of a polycondensation of a phenolic compound and HMF (Mortato, [0002]) and can include aminoplast formers (Mortato, [0038]). The phenolic compounds and aminoplast formers are the same as those taught by Badoux (Mortato, col. 6, [0037-0038] and Badoux, [0028-0029]). Mortato teaches a preferred solids content of 40-70 wt.% (Mortato, [0060]) and a viscosity of more than 200 mPa*s (Mortato, [0026]). These ranges are within those taught by Badoux (Badoux, [0038] and [0054]). Mortato further teaches that the molar ratio of the total HMF to the total amount of phenolic compound is preferably 2-2.5:1 (Mortato, [0061]). This corresponds to b:c is 2-2.5 : 1 or 1 : 0.4-0.5 or 0.45-0.70 : 0.18-0.35.
It would have been obvious to one of ordinary skill in the art prior to the effective filing date to have substituted the unspecified b:c ratio of Badoux for the ratio of 0.45-0.70 : 0.18-0.35 taught by Mortato in order to utilize a molar ratio known to be suitable for producing thermosetting resins based on 5-HMF, aminoplast formers, and phenolic compounds and useful in the production of plywood, wood fiber composite, chipboard, or multilayer boards. This substitution narrows the b:c ratio of Badoux from 0.45-0.70: 0-1 to 0.45-0.70 : 0.18-0.35. For simplicity, the center point of the b and c ranges (b:c is 0.58 : 0.26 for Mortato and b:a+c is 0.58 : 1 for Badoux) are used for estimating the a:b:c ratio taught by Badoux in view of Mortato. Because Badoux teaches that b:a+c is 0.58 : 1 and a+c is 1, a is therefore 0.74 (1-0.26 =0.74). This leads to an a : b : c ratio of 0.74 : 0.58 : 0.26. Normalizing to a is 1 gives a ratio of 1 : 0.78 : 0.35. This falls within the claimed range of 1 : 0.1 to 1.0 : 0.05 to 0.5.
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 1-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 4-9 of copending Application No. 18/703,114 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-7 are anticipated by reference claims 1 and 4-9.
Regarding claim 1, reference claim 1 teaches a temperature-curable resin preparable by the (poly)- condensation of: at least one aminoplast-forming chemical, with 5-hydroxymethylfurfural (5-HMF), its oligomers and/or its isomers, and at least one second (poly-)condensable chemical (ref claim 1, lines 1-5), under reaction conditions under which said at least one aminoplast-forming chemical, 5-hydroxymethylfurfural (5-HMF), its oligomers and/or its isomers, and the at least one second (poly-)condensable chemical (poly-)condense to the temperature-curable resin (ref claim 1, lines 7-10).
Claim 1 and reference claim 1 differ in that reference claim 1 teaches that the resin is preparable by a (poly)-condensation in the presence of at least one organic sulfonic acid (ref claim 1, line 6). However, claim 1 does not exclude resins prepared in the presence of an organic sulfonic acid and does not differentiate the structure of the resin from that of reference claim 1. The resin of reference claim 1 therefore reads on claim 1.
Regarding claim 2, reference claim 4 depends from reference claim 1 and further teaches wherein the at least one second (poly-)condensable chemical is at least one aldehyde different from 5-hydroxymethylfurfural, its oligomers or its isomers (ref claim 4, lines 1-4).
Regarding claim 3, reference claim 5 depends from reference claim 1 and further teaches wherein the at least one second (poly-)condensable chemical is glyoxal (ref claim 5, lines 1-3).
Regarding claim 4, reference claim 6 depends from reference claim 1 and further teaches wherein the at least one aminoplast- forming chemical is selected from the group of consisting of; urea, melamine, substituted melamine, substituted urea, acetylenediurea, guanidine, thiourea, thiourea derivatives, diaminoalkane, or diamidoalkane, or mixtures thereof (ref claim 6, lines 1-5).
Regarding claim 5, reference claim 7 depends from reference claim 1 and further teaches wherein in the (poly)-condensation, a molar ratio (a:b:c) of (a) the totality of the at least one aminoplast-forming chemical, to (b) the totality of 5-hydroxymethylfurfural (5-HMF), its oligomers and/or its isomers, to (c) the totality of the least one second (poly-)condensable chemical, is adapted to 1 : 0.1 to 1.0 : 0.05 to 0.5 (ref claim 7, lines 1-6).
Regarding claim 6, reference claim 8 depends from reference claim 1 and further teaches a solid content of 60 - 85 mass%, all solid contents determined by evaporating the water content of the reaction solution after its preparation under vacuum until a constant mass has been achieved (ref claim 8, lines 1-5).
Regarding claim 7, reference claim 9 depends from reference claim 1 and further teaches a viscosity of 150 - 1,000 mPa*s, all viscosities measured using a rotational viscosimeter at 20°C according to ISO 3219:1994 (ref claim 9, lines 1-4).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/AUDRA J DESTEFANO/Examiner, Art Unit 1766
/Christopher M Rodd/Primary Examiner, Art Unit 1766