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 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.
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.
Claims 1, 3, and 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Sakurada et al. (US Pat. 3,931,088) in view of Shukla et al. (Construction and Building Materials 34 (2012) 593-601).
Considering Claims 1, 3, and 6: Sakurada et al. teaches a composite comprising wood/lignocellulose material in two or more discrete parts bonded together (Examples 1-4) with an binder composition comprising soy powder/fluor (6:48-56) and an adhesive formulation comprising an emulsion of a polymer and a isocyanate crosslinker (1:62-2:5). Sakurada et al. teaches the additive (soy powder) as being 15 to 50 weight percent of the binder (6:67-7:22).
Sakurada et al. does not teach that the lignocellulose is pre-treated with a copper based preservative. However, Shukla et al. teaches pretreated wood for a wood composite with copper azole prior to forming the composite (pg. 594). Sakurada et al. and Shukla et al. are analogous art as they are concerned with the same field of endeavor, namely wood composites. It would have been obvious to a person of ordinary skill in the art to have pre-treated the wood of Sakurada et al. as in Shukla et al., and the motivation to do so would have been, as Shukla et al. suggests, to reduce the microbial growth in the composite (pg. 593-94).
Considering Claim 7: Sakurada et al. teaches an example comprising clay/a filler and water (Example 1).
Considering Claim 8: Sakurada et al. teaches composite as being plywood (7:37-42).
Claims 9, 11, 14, 15, and 18-22 are rejected under 35 U.S.C. 103 as being unpatentable over Sakurada et al. (US Pat. 3,931,088) in view of Shukla et al. (Construction and Building Materials 34 (2012) 593-601).
Considering Claims 9, 11, and 14: Sakurada et al. teaches a method for making a composite comprising wood/lignocellulose material in two or more discrete parts bonded together (Examples 1-4) with an binder composition comprising soy powder/fluor (6:48-56) and an adhesive formulation comprising an emulsion of a polymer and a isocyanate crosslinker (1:62-2:5), where the adhesive and the additive are mixed together (4:21-24); applied to the wood material (Examples 1-4); and pressing the wood material together to form the composite (Examples 1-4). Sakurada et al. teaches the additive (soy powder) as being 15 to 50 weight percent of the binder (6:67-7:22).
Sakurada et al. does not teach that the lignocellulose is pre-treated with a copper based preservative. However, Shukla et al. teaches pretreated wood for a wood composite with copper azole prior to forming the composite (pg. 594). Sakurada et al. and Shukla et al. are analogous art as they are concerned with the same field of endeavor, namely wood composites. It would have been obvious to a person of ordinary skill in the art to have pre-treated the wood of Sakurada et al. as in Shukla et al., and the motivation to do so would have been, as Shukla et al. suggests, to reduce the microbial growth in the composite (pg. 593-94).
Considering Claim 15: Sakurada et al. teaches adding the additive in a dry form (Example 5).
Considering Claims 18 and 19: Sakurada et al. teaches pressing three layers of wood material (Examples 1-4).
Considering Claim 20: Sakurada et al. teaches cold pressing the composite material for 20 minutes (Examples 1-4).
Considering Claim 21: Sakurada et al. teaches an example comprising clay/a filler and water (Example 1).
Considering Claim 22: Sakurada et al. teaches composite as being plywood (7:37-42).
Claims 16 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Sakurada et al. (US Pat. 3,931,088) in view of Shukla et al. (Construction and Building Materials 34 (2012) 593-601) as applied to claim 9 above, and further in view of Via et al. (US 2017/0266930).
Considering Claims 16 and 17: Sakurada et al. teaches the process of claim 9 as shown above.
Sakurada et al. does not teach adding the soy material in a suspension. However, Via et al. teaches that the soy fluor can be in powder form/dry form or a slurry form/in a water suspension (¶0048). Via et al. teaches a moisture content of 1 to 80 weight percent (¶0032). Sakurada et al. and Via et al. are analogous art as they are concerned with the same field of endeavor, namely wood composites. It would have been obvious to a person of ordinary skill in the art to have added the soy flour of Sakurada et al. in the form of a suspension as in Via et al., and the motivation to do would have been, as Via et al. suggests, it is functionally equivalent to adding the additive in the dry form (¶0048).
Claims 1, 3, 7, and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Via et al. (US 2016/0264781) in view of Shukla et al. (Construction and Building Materials 34 (2012) 593-601).
Considering Claims 1 and 3: Via et al. teaches a composite comprising a lignocellulose material in two or more discrete parts and a binder composition comprising soy fluor and a synthetic resin (¶0016) that is preferably phenol formaldehyde, urea formaldehyde or methylene diisocyanate/adhesive formulation (¶0032). Via et al. teaches the soy fluor as being 1 to 50 weight percent of the binder composition (¶0032).
Via et al. does not teach that the lignocellulose is pre-treated with a copper based preservative. However, Shukla et al. teaches pretreated wood for a wood composite with copper azole prior to forming the composite (pg. 594). Via et al. and Shukla et al. are analogous art as they are concerned with the same field of endeavor, namely wood composites. It would have been obvious to a person of ordinary skill in the art to have pre-treated the wood of Via et al. as in Shukla et al., and the motivation to do so would have been, as Shukla et al. suggests, to reduce the microbial growth in the composite (pg. 593-94).
Considering Claim 7: Via et al. teaches adding a viscosity modifying additive to the binder (¶0033).
Considering Claim 8: Via et al. teaches preparing oriented strand board/strand laminated timber (¶0034).
Claims 9, 11, 15-19, 21, and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Via et al. (US 2016/0264781) in view of Shukla et al. (Construction and Building Materials 34 (2012) 593-601).
Considering Claims 9 and 11: Via et al. teaches a method making composite comprising a lignocellulose material in two or more discrete parts and a binder composition comprising soy fluor and a synthetic resin (¶0016) that is preferably phenol formaldehyde, urea formaldehyde or methylene diisocyanate/adhesive formulation (¶0032), the method comprising mixing the soy product and the adhesive (¶0037), applying the binder to the lignocellulose material (¶0037), and pressing the mixture under pressure to form the pressed wood composite (¶0037; 0044). Via et al. teaches the soy fluor as being 1 to 50 weight percent of the binder composition (¶0032).
Via et al. does not teach that the lignocellulose is pre-treated with a copper based preservative. However, Shukla et al. teaches pretreated wood for a wood composite with copper azole prior to forming the composite (pg. 594). Via et al. and Shukla et al. are analogous art as they are concerned with the same field of endeavor, namely wood composites. It would have been obvious to a person of ordinary skill in the art to have pre-treated the wood of Via et al. as in Shukla et al., and the motivation to do so would have been, as Shukla et al. suggests, to reduce the microbial growth in the composite (pg. 593-94).
Considering Claims 15 and 16: Via et al. teaches that the soy fluor can be in powder form/dry form or a slurry form/in a water suspension (¶0031).
Considering Claim 17: Via et al. teaches a moisture content of 1 to 80 weight percent (¶0032).
Considering Claims 18 and 19: Via et al. teaches bonding a plurality of strands (¶0044).
Considering Claim 21: Via et al. teaches adding a viscosity modifying additive to the binder (¶0033).
Considering Claim 22: Via et al. teaches preparing oriented strand board/strand laminated timber (¶0034).
Claims 1, 3, 7, and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Via et al. (US 20170266930) in view of Shukla et al. (Construction and Building Materials 34 (2012) 593-601).
Considering Claims 1 and 3: Via et al. teaches composite comprising a lignocellulose material in two or more discrete parts and a binder composition comprising soy fluor and a synthetic resin (¶0030) that is preferably phenol formaldehyde, urea formaldehyde or methylene diisocyanate/adhesive formulation (¶0050). Via et al. teaches the soy fluor as being 1 to 50 weight percent of the binder composition (¶0049).
Via et al. does not teach that the lignocellulose is pre-treated with a copper based preservative. However, Shukla et al. teaches pretreated wood for a wood composite with copper azole prior to forming the composite (pg. 594). Via et al. and Shukla et al. are analogous art as they are concerned with the same field of endeavor, namely wood composites. It would have been obvious to a person of ordinary skill in the art to have pre-treated the wood of Via et al. as in Shukla et al., and the motivation to do so would have been, as Shukla et al. suggests, to reduce the microbial growth in the composite (pg. 593-94).
Considering Claim 7: Via et al. teaches adding a viscosity modifying additive or wax to the binder (¶0051-52).
Considering Claim 8: Via et al. teaches preparing oriented strand board/strand laminated timber (¶0062).
Claims 9, 11, 15-19, 21, and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Via et al. (US 2017/0266930) in view of Shukla et al. (Construction and Building Materials 34 (2012) 593-601).
Considering Claims 9 and 11: Via et al. teaches a method making composite comprising a lignocellulose material in two or more discrete parts and a binder composition comprising soy fluor and a synthetic resin (¶0030) that is preferably phenol formaldehyde, urea formaldehyde or methylene diisocyanate/adhesive formulation (¶0050), the method comprising mixing the soy product and the adhesive (¶0064), applying the binder to the lignocellulose material (¶0064), and pressing the mixture under pressure to form the pressed wood composite (¶0064; 0076). Via et al. teaches the soy fluor as being 1 to 50 weight percent of the binder composition (¶0049).
Via et al. does not teach that the lignocellulose is pre-treated with a copper based preservative. However, Shukla et al. teaches pretreated wood for a wood composite with copper azole prior to forming the composite (pg. 594). Via et al. and Shukla et al. are analogous art as they are concerned with the same field of endeavor, namely wood composites. It would have been obvious to a person of ordinary skill in the art to have pre-treated the wood of Via et al. as in Shukla et al., and the motivation to do so would have been, as Shukla et al. suggests, to reduce the microbial growth in the composite (pg. 593-94).
Considering Claims 15 and 16: Via et al. teaches that the soy fluor can be in powder form/dry form or a slurry form/in a water suspension (¶0048).
Considering Claim 17: Via et al. teaches a moisture content of 1 to 80 weight percent (¶0032).
Considering Claims 18 and 19: Via et al. teaches bonding a plurality of strands (¶0076).
Considering Claim 21: Via et al. teaches adding a viscosity modifying additive or wax to the binder (¶0051-52).
Considering Claim 22: Via et al. teaches preparing oriented strand board/strand laminated timber (¶0062).
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 9, 11, 18, 19, 21, and 22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 5, and 6 of U.S. Patent No. 10,899,039 in view of Shukla et al. (Construction and Building Materials 34 (2012) 593-601). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Considering Claims 9 and 11: Claim 1 of Patent ‘039 teaches a method of preparing a pressed wood composite comprising mixing a soy product and a synthetic resin that is MDI/an adhesive formulation to form a binder; applying the binder to a lignocellulose material; and pressing the mat with heating to form the composite. Claim 5 of Patent ‘039 teaches the soy product as being soy flour. Claim 6 of Patent ‘039 teaches the soy product as being 10 to 50 weight percent of the binder.
Patent ‘039 does not teach that the lignocellulose is pre-treated with a copper based preservative. However, Shukla et al. teaches pretreated wood for a wood composite with copper azole prior to forming the composite (pg. 594). Patent ‘039 and Shukla et al. are analogous art as they are concerned with the same field of endeavor, namely wood composites. It would have been obvious to a person of ordinary skill in the art to have pre-treated the wood of Patent ‘039 as in Shukla et al., and the motivation to do so would have been, as Shukla et al. suggests, to reduce the microbial growth in the composite (pg. 593-94).
Considering Claims 18 and 19: Claim 4 of Patent ‘039 teaches three layers of wood material.
Considering Claim 21: Claim 3 of Patent ‘039 teaches adding a wax to the binder.
Considering Claim 22: Claim 1 of Patent ‘039 teaches the composite as being a laminated strand lumber.
Claims 9, 11, 18, 19, and 22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 7 of U.S. Patent No. 10,266,694 in view of Shukla et al. (Construction and Building Materials 34 (2012) 593-601). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Considering Claims 9 and 11: Claim 1 of Patent ‘694 teaches a method of preparing a pressed wood composite comprising mixing a soy product and a synthetic resin that is MDI/an adhesive formulation to form a binder; applying the binder to a lignocellulose material; and pressing the mat with heating to form the composite. Claim 1 of Patent ‘694 teaches the soy product as being soy flour. Claim 7 of Patent ‘694 teaches the soy product as being 10 to 50 weight percent of the binder.
Patent ‘039 does not teach that the lignocellulose is pre-treated with a copper based preservative. However, Shukla et al. teaches pretreated wood for a wood composite with copper azole prior to forming the composite (pg. 594). Patent ‘039 and Shukla et al. are analogous art as they are concerned with the same field of endeavor, namely wood composites. It would have been obvious to a person of ordinary skill in the art to have pre-treated the wood of Patent ‘039 as in Shukla et al., and the motivation to do so would have been, as Shukla et al. suggests, to reduce the microbial growth in the composite (pg. 593-94).
Considering Claims 18 and 19: Claim 2 of Patent ‘694 teaches three layers of wood material.
Considering Claim 22: Claim 1 of Patent ‘694 teaches the composite as being a laminated strand lumber.
Claims 10 and 11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 of U.S. Patent No. 10,266,694 as applied to claim 9 above, and further in view of Shukla et al. (Construction and Building Materials 34 (2012) 593-601).
Considering Claims 10 and 11: Patent ‘694 teaches the process of claim 9 as shown above.
Patent ‘694 does not teach that the lignocellulose is pre-treated with a copper based preservative. However, Shukla et al. teaches pretreated wood for a wood composite with copper azole prior to forming the composite (pg. 594). Patent ‘694 and Shukla et al. are analogous art as they are concerned with the same field of endeavor, namely wood composites. It would have been obvious to a person of ordinary skill in the art to have pre-treated the wood of Patent ‘694 as in Shukla et al., and the motivation to do so would have been, as Shukla et al. suggests, to reduce the microbial growth in the composite (pg. 593-94).
Response to Arguments
Applicant's arguments filed January 23, 2026 have been fully considered but they are not persuasive, because:
Applicant's arguments do not comply with 37 CFR 1.111(c) because they do not clearly point out the patentable novelty which he or she thinks the claims present in view of the state of the art disclosed by the references cited or the objections made. Further, they do not show how the amendments avoid such references or objections.
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LIAM J HEINCER whose telephone number is (571)270-3297. The examiner can normally be reached M-F 7:30-5:00.
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, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LIAM J HEINCER/Primary Examiner, Art Unit 1767
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