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 .
Continued Examination Under 37 CFR 1.114
The amendment filed December 22, 2025 has been entered and considered. With the entry of the amendment, claim 8 is canceled, claims 10-19 are withdrawn, and claims 1-7, 9 and 20 are pending for examination.
Election/Restrictions
Applicant’s election of Group I, claims 1-9, and Species (a) of the wood product is a wall in a hotel, in the reply filed on October 11, 2024 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 10-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on October 11, 2024.
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 1-7, 9 and 20 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.
For claim 1, this claim now has that the first coat of toner is “comprising a clear finish, a pigmentation, and at least one of isobutyl alcohol, methanol, propyl alcohol, n-butyl alcohol, isopropyl alcohol, or ethylbenzene”. However, upon review, this is not supported by the disclosure as filed. At best, it is described that the first toner coating can contain (1) the combination of “toluene, butyl acetate, acetone, isobutyl alcohol, ethyl alcohol, ethyl acetate, methanol, and propyl alcohol” and that it may further include (2) the combination of “n-butyl alcohol, isopropyl alcohol, or ethylbenzene” (note 0015 of the specification as filed), and original claim 16 also had that the first toner coating can comprise “toluene, butyl acetate, acetone, isobutyl alcohol, ethyl alcohol, ethyl acetate, methanol, and propyl alcohol”, where with the “and” use, is describing a combination with all these materials. Original claim 17 also had that the first toner coating can comprise (on top of the materials of claim 16), “n-butyl alcohol, isopropyl alcohol, or ethylbenzene”, where with the “and” use, is describing a combination of all the listed materials. Additionally, paragraphs 0024 and 0029 of the specification as filed describes a first toner coating comprising ALL of the materials listed in claims 16 and 17. Therefore, for claim 1, it is not supported that the first coat of toner can have “at least one of”, which would include one or two of these materials, for example, where as noted above, only the specifically above listed combinations of materials are disclosed. Therefore, the claim is broader than what is disclosed in the application as filed and contains new matter.
Additionally, for claim 1, as to the second toner coat having “at least one chemical that is a same chemical that is a same chemical as at least one chemical of the first coat of the toner”, if the chemical is referring to the listed “at least one of isobutyl alcohol, methanol, propyl alcohol, n-butyl alcohol, isopropyl alcohol, or ethylbenzene”, this is not supported by the disclosure as filed, because the second toner coating is described as the same or substantially the same chemical composition as the first toner coating, and the disclosure also describes the second toner composition as including the same groups as discussed above for the first toner coating of claim 1, and therefore, it is not described that the second toner coating can contain simply one of the listed chemical compositions, or amounts/combinations other than that disclosed, and therefore the claim contains new matter for the same reasons as described above.
Similarly, for claim 20, this claim now has that the second coat of toner “comprises at least one of butyl acetate, isobutyl alcohol, methanol, propyl alcohol, n-butyl alcohol, isopropyl alcohol, or ethylbenzene”. However, upon review, this is not supported by the disclosure as filed. At best, it is described that the second toner coating can contain (1) the combination of “toluene, butyl acetate, acetone, isobutyl alcohol, ethyl alcohol, ethyl acetate, methanol, and propyl alcohol” and that it may further include (2) the combination of “n-butyl alcohol, isopropyl alcohol, or ethylbenzene” (note 0015 of the specification as filed), and original claim 16 also had that the second toner coating can comprise “toluene, butyl acetate, acetone, isobutyl alcohol, ethyl alcohol, ethyl acetate, methanol, and propyl alcohol”, where with the “and” use, is describing a combination with all these materials. Original claim 17 also had that the second toner coating can comprise (on top of the materials of claim 16), “n-butyl alcohol, isopropyl alcohol, or ethylbenzene”, where with the “and” use, is describing a combination of all the listed materials. Additionally, paragraphs 0024 and 0029 and 0031 of the specification as filed describes a toner coating comprising ALL of the materials listed in claims 16 and 17, which can be the second toner coating (as the same/substantially the same composition as the first toner coating) . Therefore, for claim 20, it is not supported that the second coat of toner can have “at least one of”, which would include one or two of these materials, for example, where as noted above, only the specifically above listed combinations of materials are disclosed. Therefore, the claim is broader than what is disclosed in the application as filed and contains new matter.
The dependent claims do not cure the defects of the claims from which they depend and are therefore also rejected.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-7, 9 and 20 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 now has “applying a second coat of the toner . . . the second coat of the toner comprising the clear finish, the pigmentation, and at least one chemical that is the same chemical as at least one chemical of the first coating of the toner”. This is vague and indefinite as it is unclear what is covered. If “the clear finish” or “the pigmentation” considered chemicals, then (1) the second toner already has at least one chemical that is the same chemical as at least one chemical of the first coating of the toner. (2) Alternatively, is applicant referring as “chemical” to the “isobutyl alcohol, methanol, propyl alcohol, n-butyl alcohol, isopropyl alcohol, or ethylbenzene” materials? For the purpose of examination, either option is considered as meeting the claim requirements, but applicant should clarify what is intended, without adding new matter.
The other dependent claims do not cure the defects of the claim from which they depend and are therefore also rejected.
Claim Rejections - 35 USC § 103
The rejection of claims 1 and 20 under 35 U.S.C. 103 as being unpatentable over Aronson (US 2018/0339312) in view of Lazano et al (US 2009/0045541), Berry (US 3080257), (1) EITHER Fisher (US 2692208) OR Japan 2002-221847 (hereinafter ‘847), and (2) EITHER alone OR further in view of Liittschwager et al (US 6485800) is withdrawn due to the amendments filed December 22, 2025, changing the scope of the clams.
Response to Arguments
Applicant's arguments filed December 22, 2025 have been fully considered.
With the amendment as filed December 22, 2025, the 35 USC 103 rejections are withdrawn, but the above noted 35 USC 112 rejections have been made as to new matter and unclarity in the claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHERINE A BAREFORD whose telephone number is (571)272-1413. The examiner can normally be reached M-Th 6:00 am -3:30 pm, 2nd F 6:00 am -2:30 pm.
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, GORDON BALDWIN can be reached at 571-272-5166. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/KATHERINE A BAREFORD/Primary Examiner, Art Unit 1718