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 .
DETAILED ACTION
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1 and 3-15 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 1, lines 16-18 recite,” wherein the method is free of mixing the second fraction with the third fraction prior to the using of the second fraction as feedstock in the method to produce a building panel or part of a building panel,”. There is no disclosure of the second and third fractions being ‘free of mixing’ prior to the use of the second fraction. The paragraph referenced as support (paragraph 0155 from US Pub 2024/0293954) recites,” The particles passing through the second screen 4, or the second set of screens 4a, 4b, in step 102 form the third section of particles, which are illustrated by 130 in FIG. 7. In a subsequent step 300, the third fraction of particles may be compacted to pellets. Such pellets may be used as pellet fuel. As alternative or complement, the third fraction of particles may be combusted,”. This paragraph does not discuss or disclose any ‘free of mixing” step of the second and third fraction.
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 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 of this title, 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 20 is rejected under 35 U.S.C. 103 as being unpatentable over Eriksson (USP 4,035,120) in view of Design Choice.
Regarding claim 20, Eriksson discloses a method to refine waste wood-based material, comprising: collecting a waste wood-based material resulting from sawing and/or machining in a wood-based material (col. 2, lines 51-60); separating the waste wood-based material by particle size, without prior grinding, by screening the waste wood-based material through at least one first screen to separate a first fraction of particles from the waste wood-based material, wherein the at least one first screen has apertures having an aperture width of 3000 µm or less (col. 5, lines 33-45 screened to size mesh 14); subsequently screening a remainder of the waste wood-based material through at least one second screen to separate a second fraction of particles from the waste wood- based material, wherein the at least one second screen has apertures having an aperture width exceeding 50 µm (col. 5, lines 33-45 screened to size mesh 18); and wherein a third fraction of particles is formed by particles from the waste wood-based material passing through the at least one second screen (col. 5, lines 33-45 further screened materials dependent on desired mesh size).
Eriksson does not explicitly disclose the at least one first screen comprises a set of first screens, wherein each first screen has apertures having an aperture width in a range of 450 to 3000 µm and the at least one second screen comprises a set of second screens, wherein each second screen has apertures having an aperture width in a range of 50 to 400 µm. However, before the time the invention was effectively filed, it would have been an obvious matter of design choice to a person of ordinary skill in the art before the effective filing date of the claimed invention with a reasonable expectation of success to obtain a desired particle size because Applicant has not disclosed that a specific size of particles in a desired range provides an advantage, is used for a particular purpose, or solves a stated problem. One of ordinary skill in the art, furthermore, would have expected Eriksson, and applicant’s invention, to perform equally well with either screening mesh because both meshes would perform the same function of separating particles to a desired size for the purpose of obtaining a desired fraction size for use in building chipboards.
Response to Arguments
Applicant's arguments filed 3/25/2026 have been fully considered but they are not persuasive.
Rejection under USC 103
Regarding Applicant’s argument,” The recited first and second screening ranges are not arbitrary numerical selections, but instead define a particle-size window in which waste wood-based particles undergo a transition in mechanical and processing behavior that is synergistic and meaningful,” and,” Together, these boundaries carve out an intermediate fraction in which the particles behave as reinforcing fibers capable of forming a homogeneous, flowable, and pressable structure without prior grinding. This fraction exhibits materially different packing density, permeability, binder distribution, and consolidation behavior compared to populations dominated either by coarse chips or by dust,” the Examiner disagrees. The Examiner asserts that obtaining the desired range of material is an obvious modification as a matter of routine optimization in the pertinent art to obtained the desired sized material from the wood-based material. The carrying out of a method of separation by screening with apertures, but only changing the sizing that that separation while doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions (see MPEP 2144.05(II)(A).
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 Kalyanavenkateshware Kumar whose telephone number is (571)272-8102. The examiner can normally be reached on M-F 08:00-16:30.
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, Michael McCullough can be reached on 571-272-7805. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/K.K./Examiner, Art Unit 3653
/MICHAEL MCCULLOUGH/Supervisory Patent Examiner, Art Unit 3653
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