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 .
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.
Election/Restrictions
Applicant’s election without traverse of claim 9 – 13 in the reply filed on 8/19/26 is acknowledged.
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.
Claim(s) 9 – 13 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2015147165 A to Taketoshi et al. hereinafter “Taketoshi”.
Taketoshi is directed to phenol modified lignin resin (Abstract).
Regarding claims 9, Taketoshi teaches a composition comprising a F/P ratio of 0.4 to 0.4 to 1.5 and a lignin modified novolac type phenol resin having a molecular weight of 1000 to 10,000 g/mol [A11]. The lignin modified novolac type phenol resin is made by adding lignin and phenol and stirring followed by adding oxalic acid and stirring. Next, formaldehyde is added and mixed at 100C for 1 hours. Next, vacuum distillation was performed to remove residual phenol and formaldehyde (Example 1).
Therefore, it would have been obvious to one of ordinary skill for the one of ordinary skill to produce a lignin modified novolac type phenol resin with a F/P ratio of 0.6 to 1.5 and a molecular weight of >5500 to 10,000 g/mol as this is directly taught by Taketoshi.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) (Claim reciting thickness of a protective layer as falling within a range of "50 to 100 Angstroms" considered prima facie obvious in view of prior art reference teaching that "for suitable protection, the thickness of the protective layer should be not less than about 10 nm [i.e., 100 Angstroms]." The court stated that "by stating that ‘suitable protection’ is provided if the protective layer is ‘about’ 100 Angstroms thick, [the prior art reference] directly teaches the use of a thickness within [applicant’s] claimed range."). MPEP 2144.05
As to claim 11, Taketoshi discloses that the lignin compound has a number average molecular weight of 100 – 5000 g/mol [B4]. Therefore, it would have been obvious to one of ordinary skill for the one of ordinary skill to produce a lignin with a molecular weight of >2000 to 5,000 g/mol as this is directly taught by Taketoshi.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) (Claim reciting thickness of a protective layer as falling within a range of "50 to 100 Angstroms" considered prima facie obvious in view of prior art reference teaching that "for suitable protection, the thickness of the protective layer should be not less than about 10 nm [i.e., 100 Angstroms]." The court stated that "by stating that ‘suitable protection’ is provided if the protective layer is ‘about’ 100 Angstroms thick, [the prior art reference] directly teaches the use of a thickness within [applicant’s] claimed range."). MPEP 2144.05
Regarding claim 12, Taketoshi teaches the preparation of the lignin derivatives 1 – 3 at page 18. As the acetone was distilled off and the lignin dried the Examiner takes the position that it would be obvious that the volatile matter in the lignin would be less than 60%.
As to claim 13, teaches a composition comprising a F/P ratio of 0.4 to 0.4 to 1.5 and a lignin modified novolac type phenol resin having a molecular weight of 1000 to 10,000 g/mol [A11]. The lignin modified novolac type phenol resin is made by adding lignin and phenol and stirring followed by adding oxalic acid and stirring. Next, formaldehyde is added and mixed at 100C for 1 hours. Next, vacuum distillation was performed to remove residual phenol and formaldehyde (Example 1).
Taketoshi is silent as to performing the distillation at 150C or higher.
With regard to Applicant’s limitations regarding the distillation temperature, it is the position of the Examiner that one of ordinary skill in the art, at the time of the invention, would through routine and normal experimentation determine the optimization of these limitations to provide the best effective variable depending on the results desired. Because Taketoshi teaches vacuum distilling the lignin modified novolac resin at 100C, the Examiner asserts that the distillation temperature is an art recognized result-effective variable. Thus, it would be obvious in the optimization process to optimize the distillation temperature to reduce the volatile contact as required. In addition, merely modifying the process conditions such as temperature and concentration is not a patentable modification absent a showing of criticality, since the applicant does not show any unusual and/or unexpected results for the limitation stated (In re Aller, 220 Fo2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Note that the prior art provides the same effect desired by the Applicant, the formation of a lignin modified novalac resin.
Allowable Subject Matter
Claim 10 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Prior Art of Record
WO 2015147165 A1
Conclusion
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PAS 9/5/26
/PETER A SALAMON/Primary Examiner, Art Unit 1759
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