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 .
Claim Objections
Claim 1 is objected to because of the following informalities: “the separated vapor” should read “the total separated vapor”. Appropriate correction is required.
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, 4-14, 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).
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. For more on this limitation, see the response to arguments section below.
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 4, Vaders/Iwata discloses the subject matter of claim 1, and these 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.
Regarding claims 5-6, 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 1/19/2026 have been fully considered but they are not persuasive. Applicant’s arguments will be addressed below and referred to in the response as needed.
In response, Examiner points out that the claim limitation reads “wherein the lower limit and the upper limit of the quantity range of the separated vapor depend on the quantity of wood chips provided in process step a)” – this would be inherent in that the wood chips are what provide the VOCs, and so when there are more wood chips, there would necessarily be more VOCs (and less VOCs when there are fewer wood chips). There is no requirement in the claims that the upper and lower limits be different from one another and so these limits would be defined by the amount of chips and/or VOCs present in said chips. Additionally, the lower and upper limits of vapor would at least be partially dependent upon the amount of chips present as would be the total vapor separated.
The alternative limitation “or wherein the lower limit and the upper limit of the quantity range of the separated vapor depend on the quantity of VOCs or terpenes contained in the wood chips provided in process step a)” which would also always inherently be the case, since the wood chips inherently include the VOCs and/or terpenes, and are provided in step a). The same logic applies as above, where the lower and upper limits of vapor would at least be partially dependent upon the amounts of vapor present in the provided chips.
Examiner points out that the BRI of these limitations do not require “deliberately limiting steam removal” – see p. 7, remarks. The “predetermined quantity range” comes from the amount of these compounds present in the ingredients and is not limited in the claim to any specific quantity – it would always be predetermined from the components introduced in step a) as a part of performing the claimed process. Thus, Applicant’s argument that the claim requires purposeful selection and control is not found persuasive. The BRI of the claim does not require purposeful selection and control, as it would always result from the use of the of wood chips, and the upper and lower limits are not defined, and thus any prior art process that provides wood chips would seem to read upon this limitation.
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, one of ordinary skill in the art would have been led to fill in any gaps in knowledge from Iwata or any other suitable reference, as to the precise steps of molding as Vaders only briefly describes these steps.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., controlled, limited vapor separation) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). The claim requires “vapor used or arising in the process” which is broad and does not define where or when the vapor is separated.
Accordingly, the rejections are maintained as updated above.
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 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