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 .
Claims 1 and 6-20 are pending and under examination.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 5/7/2026 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 6 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Regarding claim 6, the claim requires three smaller quantity ranges of “0.001 to 0.2 times the mass” which means that it does not include each and every limitation of claim 1, from which it depends, because claim 1 requires a minimum of 0.5.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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, 6-14, and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Vaders (US 2012/0227918) in view of Iwata et al. (US Patent No. 6,376,582), hereinafter Iwata.
Regarding claims 1 and 20, Vaders discloses a process for manufacturing fiberboards (par. 0003 which would be of any selected density, high or medium) comprising: (a) providing wood-containing wood chips (cellulosic fiber material – par. 0003, 0014); (b) thermally treating the wood chips in a thermal treatment device (refiner steam separation system – par. 0014-0016); (c) shredding the wood chips in a refiner (implied as the material is wood fiber);(d) gluing the wood chips (par. 0003, 0016-0018 “resin is added to the fiber downstream of the separator”); and (e) pressing the glued wood chips to form the fiberboard (par. 0003, 0041, implied).
Vaders further discloses that (f) vapor used or arising in the process is separated continuously from the process at at least one vapor emission location (par. 0014-0016), and the vapor would seem to necessarily inherently be at least partially based upon the selected wood chips since the wood and the resin would cause VOCs to be present and so it would depend upon the wood and the resin selected (par. 0014-0019). The newly-added limitations are read as inherent in the wood chips selected as it expresses the result of the process as claimed. It is also contingent upon the presence of terpenes in the wood chips being sampled. Please see the “response to arguments” section below for further on this limitation.
There is no requirement that the lower and upper limit be different, what is significant in the claim is the quantity range of the (total) separated vapor which is defined by the amount of wood chips/VOCs present in the wood chips, which is inherent.
Vaders does not explicitly disclose that the wood chips are shredded in a refiner or the specific pressing of the chips into a board, even if this may be implied above. However, Iwata describes a similar process where wood chips are digested and fiberized into wood fibers (see Iwata, Fig. 1) where the wood fibers are mixed, have binder applied, and are pressed (Fig. 1; 4:7-5:4), demonstrating that this is implied in producing a board in accordance with Vaders above.
Accordingly, as Vaders is related to a specific portion of the process of Iwata (processing of the wood chips), one of ordinary skill in the art before the effective filing date would have found it obvious to have specified that the chips are also glued and pressed together after specifically shredding such into fibers as is required in the claims as to fully process the fibers into a fiberboard in accordance with Vaders.
Regarding claim 6, Vaders/Iwata discloses the subject matter of claim 1, and these limitations are read as being dependent upon the specific type of wood chips selected as they would directly result from this selection.
Regarding claims 7-11, Vaders/Iwata discloses the subject matter of claim 1, but does not appear to describe the exact vapor emission positions as described in the claims.
However, one of ordinary skill in the art would have found any location position to have been obvious as to have resulted in a system that adequately reduces the VOCs present as to have avoided combustion risk thereof.
Regarding claims 12-14, Vaders/Iwata discloses the subject matter of claim 1, and further discloses that at least one vapor emission location is generated from a liquid stream (Vaders, par. 0040-0042 – steam would come from water) and the plug screw would seem to read upon the claimed compaction screw as described in this passage.
Regarding claims 18-19, Vaders/Iwata discloses the subject matter of claim 1, and further discloses that the heat is reused (Vaders, par. 0032, 0044).
Claim(s) 15-17 are rejected under 35 U.S.C. 103 as being unpatentable over Vaders (US 2012/0227918) in view of Iwata (US Patent No. 6,376,582) as applied to claim 14 above, and further in view of Safstrom et al. (US Patent No. 6,464,826), hereinafter Safstrom.
Regarding claims 15-17, Vaders/Iwata discloses the subject matter of claim 14, but does not appear to explicitly disclose isolating and processing the removed VOCs as now required in these claims.
However, Safstrom discloses a process of treating wood fibers that includes a further treatment of the separated gas (Safstrom, 2:63-3:5, 4:64-5:2). Safstrom teaches that the gas resulting from the process is separated or isolated and combusted (3:60-3:63). One of ordinary skill in the art would have recognized that the teachings of Safstrom would be applicable here as both Vaders and Safstrom are processing wood material in a similar manner to one another. Thus, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to have specified that the gas is further treated as provided in Safstrom, in the process of Vaders/Iwata as is required in the claims.
Response to Arguments
Applicant's arguments filed 5/7/2026 have been fully considered but they are not persuasive. Applicant’s arguments will be addressed to below and referred to when needed.
First, it is noted that the amended claim limitation now reads “wherein the quantity of VOCs or terpenes, contained in the wood chips used in process step a) is determined by examining the wood chips used or is estimated based on the type of wood chips used . . . ” This limitation merely describes what is already previously claimed. The
The claim concludes with: “. . . and wherein the lower limit and the upper limit of the quantity range of the separated vapor in process step f) is within a quantity range of 0.5 to 100 times the mass, or from 0.5 to 50 times the mass, or from 0.5 to 10 times the mass, based on the VOC quantity of the wood chips provided.”
Applicant argues (see p. 7) that the prior art does not teach various points. However, these are not claimed or required to necessarily be met in the prior art. As discussed in MPEP 2112, the discovery of a previously unappreciated property of what is known in the prior art would not make the claim patentable. Furthermore, there is no “(b) using such a measurement or estimation as the basis for setting vapor separation amounts” because the claim does not require providing only certain types of wood chips. It broadly requires “providing wood-containing wood chips.” Point (c) of “targeting a quantitative vapor separation range expressed as a ratio to the terpene/VOC mass of the incoming chips” is not claimed, and point (d) of “deliberately limiting vapor separation to a predetermined minimum and maximum correlated to the wood chip VOC specification” is also not claimed.
However, as noted in MPEP 2112, discovery of a previously unappreciated property does not differentiate over the prior art, and would not support patentability. Applicant argues (see p. 8) that “determined by examining” is limiting to the process, but it is not directly limiting, since the VOCs are a result of the wood chips themselves, not an examination of the wood chips. Whether or not they were examined in the prior art would not differentiate over the prior art, as is discussed in this section of the MPEP.
Applicant also argues (see p. 9) that the ranges are significant. However, all of these ranges include the value of “1 time the mass, based on the VOC quantity of the wood chips provided” for the “total separated quantity of vapor” which is not always a range of values, it can be a single value that falls within said range, and thus not be required to be different values when applied to the prior art. Applicant’s argument points out that the prior art separates 75-90% of “all process steam” which would seem to be 0.75-0.9 times the VOC mass.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Applicant argues that they are nonanalogous art.
In response to applicant's argument that the references cited are nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, all three references are in the same field of endeavor, and relate to different ways of dealing with VOCs that arise during similar processes.
Additionally, with respect to the Vaders argument presented on p. 10-11, the claim does not distinctly point out that “less separation is needed than the prior art teaches” – as the separation can seemingly include a separation of vapors that are far higher than was present in the wood alone (up to 100 times the mass of the VOC quantity of the wood chips provided). There is also no claimed requirement to “express the vapor separation target as a ratio to terpene content.”
Regarding the argument provided on p. 11, there is nothing in the claimed invention that requires an operator to do anything, nonetheless, perform the two steps as argued here. A computer could presumably perform all of the steps as recited in the claim, automatically. The use of passive voice also suggests that these steps were performed before the process as claimed was actually performed. Accordingly, the rejections are maintained as updated above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW D GRAHAM whose telephone number is (469)295-9232. The examiner can normally be reached Monday - Friday 7:30AM-4:00PM (CST).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christina Johnson can be reached at (571) 272-1176. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREW D GRAHAM/Primary Examiner, Art Unit 1742
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