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.
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.
Claims 1, 2, 5, 6, 8, 13, 18, 61, 62, 65, 67, 75, 79 and 84-86 are rejected under 35 U.S.C. 103 as being unpatentable over Zhang et al (US20140329936) in view of Wescott et al. (US 20070148339) and Anderson et al (WO 2017193015).
Zhang ‘936 is directed to formaldehyde-free protein containing binder compositions. Zhang teaches the binder compositions include protein sources, e.g. soy flour [0005] that are from protein treated to expose polypeptide chains of the proteins [0036].
Zhang teaches the binder compositions are for use for making wood-containing products. The methods may include applying the binder composition to a lignocellulosic material such as wood chips, wood fibers, wood particles, wood veneer wood planks wood blocks among other lignocellulosic materials. The mixture of the binder composition and the lignocellulosic material may be heated at or above a temperature where the composition starts to crosslink into a cured thermoset binder that bonds together the lignocellulosic material [0047].
Zhang teaches particleboards with the surface/core/surface mass ratio of 20/60/20 were prepared by forming surface/core/surface layers sequentially with the respective wood furnish/binder blend in a wooden template [0069].
A surface/core/surface layer structure is equated with the claimed first face layer, second face layer and core layer between the face layers.
Zhang teaches the amount of binder to dry weight of wood components is 10% binder content in the core layer and 12% binder content in the surface layers [0068] which is in the claimed range of 3 parts to 25 parts.
Zhang teaches one specific non-limiting example of the present binder compositions includes a polymer compound, such as a polycarboxy polymer; a crosslinking agent crosslinkable with the polymer compound, such as a polyol; and a protein that is crosslinkable with both the polymer compound and the crosslinking agent.
Specific examples of polyols may include glycerol, ethylene glycol, propylene glycol, diethylene glycol, and triethylene glycol, among other polyols [0030].
Zhang teaches an aqueous composition with a polyol as a crosslinking agent that can be a glycerol.
Zhang does not teach the amount of the glycerol cross-linkers used in the composition.
Zhang teaches the binder composition contains a protein such as soy flour which referred to as the polypeptide [0036] as claimed. The relative amount of the soy protein component (e.g., soy flour) to add can vary depending on other binder components used, the processing conditions, and the type of end product being made, among other considerations. Embodiments have the concentration of soy protein flour (as a percentage weight of the binder composition) ranging from about 5% to about 95%; about 10% to about 90%; about 25% to about 80%; about 20% to about 60%; about 20% to about 50%; about 30% to about 70%; etc [0024] which overlaps the claimed range of 20-85%.
Zhang teaches addition of base to adjust pH such as alkali metal hydroxides [0035].
Zhang does not teach the amount of base pH adjuster added to the mixture.
With regard to the optionally claimed components, as they are optional, the claims do not positively recite the components.
Zhang teaches the pre-press moisture content of the core as 20-22% as shown in Table 2 after paragraph [0076] which is the substantially the same as the claimed range of 9-16%. The moisture in the composition is an intermediate limitation for making a product. A claim to an intermediate product for reuse in making a final product that has not specific, substantial and credible utility. Whether the moisture prior to curing is 16% or 20% would not necessarily impact the final product as the moisture is in part driven out during the curing process. In the absence of evidence that the starting moisture content produces an unexpected result, the claimed composition is obvious over Zhang.
In the alternative, Anderson is directed to a wood adhesive composition comprising a protein and a poly(glycidyl ether); a method for using the wood adhesive composition to make a composite wood product; and composite wood products made using the wood adhesive composition (ABST).
The wood adhesive composition is typically an aqueous based composition. The wood adhesive composition may be used in the production of composite wood products such as plywood, particle board, medium density fiber board ("MDF"), high density fiber board ("HDF"), oriented strand board ("OSB"), engineered wood flooring, combinations thereof, and the like (page 3, lines 12-17).
The binders comprise a protein such as soy flour that is denatured via a base (page 4, lines 13-22).
The wood composite has a moisture content 2 to 12 percent, preferably 6 to 9 percent and 7-9% (page 14, lines 15-22 and page 32, lines 13-19). The moisture levels in this range will enhance the ability of the finished cured multi-ply plywood to pass the soak test requirements. The lower the moisture level were more difficult to bond that higher moisture level veneers.
It would have been obvious to one of ordinary skill in the art before the effective filing date to produce a finished wood product with the claimed moisture level motivated to pass soak test requirements and improve bonding.
Zhang does not teach the amount of the glycerol cross-linkers used in the composition.
Zhang does not teach the amount of base pH adjuster added to the mixture.
Wescott is directed to a water-resistant, protein-based powder adhesive compositions and methods for preparing them are provided. The adhesives are prepared by denaturing a vegetable protein, such as soy flour to the "preferred adhesive state", co-polymerizing with one or more reactive cross-linking agents and spray-drying or freeze-drying the composition to preserve the preferred adhesive state. The adhesives exhibit superior water resistance, and can be used to bond wood substrates, such as panels or laminate, or in the preparation of composite materials.
Wescott teaches a denaturant of sodium hydroxide, which is preferably employed at an amount of from about 5 wt. % or less to about 40 wt. % or more, based on sodium hydroxide to protein, preferably from about 6, 7, 8, or 9 wt. % to about 30 or 35 wt. %, and most preferably from about 10, 11, 12, 13, 14, or 15 wt. % to about 16, 17, 18, 19, 20, 21, 22, 23, 24, or 25 wt. %. The amount of sodium hydroxide employed is preferably kept as low as possible, and the amount employed is preferably directly related to the amount of protein present in the flour. For a typical soy flour containing from about 40 wt. % to about 50 wt. % protein, the amount of sodium hydroxide is preferably from about 8 wt. % to about 12 wt %. If the amount of sodium hydroxide is insufficient, inadequate denaturation and cross-linking can result, which in turn can result in inferior performance. It is possible to employ the caustic that is already present in a suitable cross-linker, like phenol-formaldehyde, as the denaturant. This allows for the soy flour to be added directly to the cross-linking agent and for the denaturation reaction to occur in the presence of the cross-linker [0050].
To aid in the solubility, compatibility, stability and flow behavior of the final powdered adhesive, antioxidants, accelerators and compatibilizing or plasticizing materials can be added. The following materials are used as additives and cross-linkers: linseed oil, tung oil, maleic anhydride modified oils or derivation of the materials. The stage I protein denaturation may occur prior to or at the same time as the stage II blending. These include, but are not limited to, ethylene glycol, poly(ethylene glycol), glycerol, and other ionic and non-ionic surfactants as are known in the art [0051].
The adhesive includes from about 0 wt. % to about 99 wt. % of the cross-linking agent, and contains a solids content of from 80 wt. % to 100 wt. %. The adhesive has a pH of from 1 to 13.5 [0026].
It would have been obvious to one of ordinary skill in the art before the effective filing date to employ the claimed amount of sodium hydroxide base material and glycerol cross-linking agent motivated to produce a protein based adhesive for wood products.
As to claims 2 and 5, Zhang teaches the protein based formaldehyde-free based binders are a substitute for the traditional urea-formaldehyde binders and compares the UF binder boards with the soy binder boards in Table 2. Zhang teaches the soy based binders do not off-gas formaldehyde during production and use.
It would have been obvious to one of ordinary skill in the art before the effective filing date to substitute the soy binders for the UF binders in the surface layers motivated to reduce formaldehyde off-gas in the surface layer. It would have been obvious to one of ordinary skill in the art before the effective filing date to employ a traditional UF binder in the core motivated to produce a wood composite from conventional UF binders.
As to claim 6, Zhang teaches the first face, second face and core all contain the reaction product of the binder in the wood products.
As to claim 8, Zhang teaches a polypeptide that can be soy flour.
As to claim 13, Zhang teaches the target pH of the binder composition is about 6 to about 10.5 or more which overlaps the claimed range of greater than 9.
As to claim 18, Zhang teaches addition of sodium bisulfite to reduce the viscosity [0023]. Zhang teaches addition of 0.5 grams of sodium bisulfite in 50 grams of soy flour which would be approximately 1% and reasonably in the claimed range of the dry weight of the binder reaction mixture. 1% does not take into account the glycerol or other ingredients on a dry weight basis.
It would have been obvious to one of ordinary skill in the art before the effective filing date to employ the amount of sodium bisulfite motivated to reduce the viscosity to the desired range.
As to claim 23, Zhang does not teach borax.
Anderson ‘116 is directed to a process for producing a soy protein water dispersion. The process includes a soy protein water dispersion with 5 parts borax as a tackifier and viscosity stabilizer. 5 parts would be about 5% and in the claimed range of 4 to 6%.
It would have been obvious to one of ordinary skill in the art before the effective filing date to employ borax in the composition motivated provide a tackifier and viscosity stabilizer.
As to claims 61 and 62, Zhang teaches addition of sodium hydroxide to adjust the pH.
As to claim 65, Zhang teaches the polypeptide is soy flour.
As to claim 67, Zhang teaches the amount of soy flour is employed in embodiments have the concentration of soy protein flour (as a percentage weight of the binder composition) ranging from about 5% to about 95%; about 10% to about 90%; about 25% to about 80%; about 20% to about 60%; about 20% to about 50%; about 30% to about 70%; etc [0024] which overlaps the claimed range of 20-85%.
As to claim 75, Zhang teaches the pre-press moisture of the core is about 20% and the surface layers are 23% and therefore the face layers are greater than the core layer. Zhang teaches the moisture content of the surface layers are more than the core. Wherein Zhang does not teach the core is in the claimed range of claim 1, Anderson teaches the moisture content of the core in the claimed range.
Anderson is directed to a wood adhesive composition comprising a protein and a poly(glycidyl ether); a method for using the wood adhesive composition to make a composite wood product; and composite wood products made using the wood adhesive composition (ABST).
The wood adhesive composition is typically an aqueous based composition. The wood adhesive composition may be used in the production of composite wood products such as plywood, particle board, medium density fiber board ("MDF"), high density fiber board ("HDF"), oriented strand board ("OSB"), engineered wood flooring, combinations thereof, and the like (page 3, lines 12-17).
The binders comprise a protein such as soy flour that is denatured via a base (page 4, lines 13-22).
The wood composite has a moisture content 2 to 12 percent, preferably 6 to 9 percent and 7-9% (page 14, lines 15-22 and page 32, lines 13-19). The moisture levels in this range will enhance the ability of the finished cured multi-ply plywood to pass the soak test requirements. The lower the moisture level were more difficult to bond that higher moisture level veneers.
It would have been obvious to one of ordinary skill in the art before the effective filing date to produce a finished wood product with the claimed moisture level motivated to pass soak test requirements.
As to claim 79, Zhang teaches the wood products can be particle board [0018].
As to claims 84, Zhang does not teach glucose or corn syrup.
Anderson teaches the plasticizing agents can include glycerol, glycols include glucose syrups (page 6, lines 5-13). Anderson teaches it is known to substitute glucose syrups for glycerol in engineered wood boards.
It would have been obvious to one of ordinary skill in the art before the effective filing date to further comprise polyols that are glucose based motivated to employ a plasticizing agent in the wood adhesive.
As to claim 85, Zhang teaches the swelling tests were conducted based on EN 317 and not ASTM D 1037-06a as claimed. Zhang teaches the soy binders exhibit good swelling and mechanical properties. As Zhang in view of Wescott and Anderson teaches the same materials and structure and Zhang teaches improved swelling properties, it is reasonable to presume that the property is inherent to the combination.
When the reference discloses all the limitations of a claim except a property or function, and the examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention the examiner has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP § 2112- 2112.02
As to claim 86, Zhang teaches the internal bond strength tests were conducted based on EN319 and does not teach the tests are measured by ASTM D 1037-06a. Zhang teaches the binder provide improved strength and therefore as Zhang in view of Wescott and Anderson teaches the same materials and structure and Zhang teaches improved internal bond strength, it is reasonable to presume that the property is inherent to the combination. When the reference discloses all the limitations of a claim except a property or function, and the examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention the examiner has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP § 2112- 2112.02
Response to Arguments
Applicant’s amendments and arguments, with respect to the 35 USC 112(b) have been fully considered and are persuasive. The 112(b) rejection has been withdrawn in view of the amendment to clarify that the moisture of the composition is prior to curing.
Applicant's amendments and arguments filed 9/16/2025 have been fully considered but they are not persuasive however the rejection has been revised to include Anderson. Applicants amendments to claim 1 are not persuasive. The amendment to limit the moisture content to prior to curing is considered an intermediate product limitation and not directed to the final product. Therefore the rejection over Zhang is maintained as Zhang teaches substantially the same composition and moisture content. 20% is substantially the same as 16% and in the absence of evidence that the moisture content before curing impacts the final product and provides an unexpected result. However for the sake of clarity, Anderson is included in the rejection for teaching the claimed moisture percentage and therefore it would have been obvious to produce a engineered wood with the claimed moisture percentage motivated to achieve the desired soak test levels.
Applicant argues that 35 USC 103 rejection over Zhang in view of Wescott has not provided an articulated reasoning with rational underpinning to combine Zhang and Wescott. Applicant argues that Zhang does not teach or suggest an amount of glycerol cross-linkers used in the composition and relies on Wescott for teaching protein-based powder adhesive that includes optionally adding a cross-linking agent that includes glycols and a crosslinking can range from 0% to 99%. Applicant states that the Examiner has not provided articulated reasoning to modify the liquid binder composition of Zhang with a protein based powder adhesive of Wescott and a person would not be motivated to rely on teachings of powder adhesive to modify liquid adhesive.
Applicants arguments are not persuasive. As the compositions are described with ingredients based on the dry weight of the composition, the amount of crosslinkers are based on a dry weight and reasonable to presume that the amounts of crosslinkers in dry weight would be sufficient whether utilized in aqueous form or dry form. Additionally, Wescott teaches the soy flour based adhesive and soy mixture may be combined with a variety of cross-linking agents in a one-pot process prior to drying to produce a stable power adhesive with extensive room temperature shelf life [0009]; [0034]. Wescott dries the liquid based adhesive mixture in order to provide for shelf life and in this respect Wescott also produces a liquid adhesive, but then prefers to spray-dry and freeze-dry to a stable powder.
Applicant argues that Wescott teaches the crosslinking agent broadly teaches about 0% to 99% and PHOSITA would not be motivated to include 5-50%. Wescott teaches the broader range indicating that one of ordinary skill in the art could employ any amounts which overlap the claimed range. In the absence of evidence that the cross-linking agent (polyol) provides an unexpected result and/or the criticality of the claimed range, the rejection is maintained.
Applicant argues that the combination of Zhang, Wescott and Anderson do not teach or suggest the moisture content of 9-16% prior to curing.
Applicant’s arguments are not persuasive for the same reasons the arguments are not persuasive over Zhang in view of Wescott. The moisture amount prior to curing is considered an intermediate composition that is not present in the final product and Wescott does teach a liquid adhesive but choosing to spray dry to a powder to improve shelf life.
In view of cancelled claims 11, 32 and 76, as the claims have been cancelled, the rejection is withdrawn.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Valenzuela Valdés et al. US20210129375 A1
Parker; Anthony A. et al. US 20110311833 A1
Mangeon et al (WO 2021084031).
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.
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/JENNIFER A STEELE/Primary Examiner, Art Unit 1789
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