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 .
Election/Restrictions
Applicant's election with traverse of Group I (claims 1-9) and the species where the aminoplast-forming chemical is urea or substituted urea in the reply filed on June 18, 2026 is acknowledged. The traversal is on the ground that the resin of claim 1 is not taught by Matsuo (US 2014/0336331 A1) because Matsuo’s resin is prepared by a two-step process rather than by a single polycondensation reaction. Applicant further asserts that it has not been established that the resin is “temperature-curable” (Matsuo demonstrates the resin curing at room temperature). This argument is not persuasive because claim 1 does not recite a specific temperature range at which the resin should cure or not cure. Applicant’s argument regarding Matsuo using a two-step process is persuasive because Matsuo’s resin would likely have a different structure than a resin prepared by a one-step process. In particular, it is likely that the monomer distribution within the resin would be different in a process where 5-HMF is added in the second step compared to a one-step process reacting all of the monomers together. However, lack of unity remains, as shown in the 35 U.S.C. 103 rejection over Last (US 2013/0137626 A1) below. The restriction requirement is still deemed proper and is therefore made FINAL. Claims 10-20 are withdrawn from consideration. Claims 1-9 are pending.
Specification
The disclosure is objected to because of the following informalities:
The brief description of figures (page 7, lines 10-15) describes Figure 4B as showing FTIR results, but Figure 4B contains GPC results. See Figure 4B and page 24, lines 25-27. The brief description of figures should be corrected to describe the data shown in Figure 4B. Applicant is required to provide a brief description of all figures. See MPEP 608.01(f).
Appropriate correction is required.
Claim Objections
Claims 1 and 3 are objected to because of the following informalities:
In claim 1, line 1, “(poly)-” should read “(poly-).”
In claim 1, line 4, “at the least one second” should read “at least one second.”
In claim 1, line 9, “(poly-)condensate to the temperature-curable resin” should read “(poly)-condense to the temperature-curable resin” because condensate is a noun, but the phrasing requires a verb.
In claim 3, line 3, “at the least one second” should read “at least one second.”
In claim 3, line 3, “(poly-) condensable” should read “(poly-)condensable.”
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
Claim 8 is 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 8 recites the limitation "the water content of the reaction solution" in line 2. There is insufficient antecedent basis for this limitation in the claim. Claim 8 depends from claim 1, but claim 1 recites a resin and does require water or a reaction solution.
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.
Claims 1 and 3-6 are rejected under 35 U.S.C. 103 as being unpatentable over Last (US 2013/0137626 A1).
Regarding claims 1 and 4-6, Last teaches aqueous microcapsule dispersions that are used as impregnating resins ([0395]). The dispersions are prepared by combining at least one amine, at least one aldehydic component which has at least two C atoms per molecule, and a copolymer which comprises units of AMPS (2-acrylamido-2-methylpropane-sulfonic acid) and one or more (meth)acrylate monomers ([0378]). Last’s preferred amine components include ureas ([0056]), reading on an aminoplast-forming chemical that is urea (claim 6). Last’s preferred aldehydes are one or more selected from a list including glyoxal and hydroxymethylfurfural ([0074]). Hydroxymethylfurfural reads on 5-HMF. Last’s AMPS copolymer preferably has 80-99 mol% of AMPS units ([0121]), reading on an organic sulfonic acid. Last discloses that the components are combined and reacted in the presence of the AMPS copolymer and that curing of the capsules takes place by later temperature increase ([0378]). Because the capsules are cured later by temperature increase, the resin reads on a temperature-curable resin.
Last does not anticipate a combination of glyoxal and 5-HMF.
However, it would have been obvious to one of ordinary skill in the art prior to the effective filing date to have selected any two aldehydes taught by Last, including a combination of glyoxal and 5-HMF, because Last teaches using more than one aldehyde. An aldehyde component that is glyoxal and 5-HMF reads on a second poly-condensable chemical that is glyoxal (claim 5). Glyoxal is an aldehyde different than 5-HMF, its oligomers, or its isomers (claim 4).
Last therefore teaches a temperature curable resin prepared by the (poly-)condensation of an aminoplast-forming chemical (urea) with 5-HMF and a second (poly-)condensable chemical (glyoxal) in the presence of an organic sulfonic acid (AMPS copolymer) under reaction conditions under which the aminoplast-forming chemical, 5-HMF, and second (poly-)condensable chemical (poly-)condense to the temperature-curable resin.
While Last’s monomers do not include an oligomer and/or isomer of 5-HMF, the resulting resin taught by Last comprises residues of 5-HMF reacted with other monomers. These residues have the same structure as residues derived from oligomers of 5-HMF. Case law holds that:
Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
To the extent that the process limitations in a product-by-process claim do not carry weight absent a showing of criticality, the reference discloses the claimed product in the sense that the prior art product structure is seen to be no different from that indicated by the claims. The prior art teaches the same product as the instant claims, regardless of the process by which the prior art product has been produced. The burden is shifted to Applicant to provide factually supported evidence which demonstrates the contrary.
Regarding claim 3, Last teaches the temperature-curable resin according to claim 1. Last further teaches that the weight ratio of the amine and aldehydes to the AMPS copolymer is between 1:1 and 1:0.01 (a+b to c, [0076]).
Last does not anticipate the claimed organic sulfonic acid content.
However, it would have been obvious to one of ordinary skill in the art prior to the effective filing date to have selected the ratio of urea, 5-HMF, and glyoxal to AMPS copolymer in the range of 1:1 and 1:0.01 because Last teaches this range. This corresponds to the organic sulfonic acid (AMPS copolymer) being added in a weight ratio of 1-100 wt%. A range of 1-100 wt% overlaps with the claimed range of 1-3 wt%. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. See MPEP § 2144.05.I.
Claims 8 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Last (US 2013/0137626 A1) as applied to claim 1 above, and further in view of Evers (US 20080160303 A1).
Last teaches the temperature-curable resin according to claim 1. Last teaches that the aqueous dispersion can be used as an impregnating resin for wood ([0395]) and also teaches that water can be added to prevent slurry thickening ([0403]). Based on this teaching, one of ordinary skill would recognize that one could adjust the viscosity of the aqueous dispersion by adding water.
Last is silent as to the solids content and the viscosity measured using a rotational viscosimeter at 20°C according to ISO 3219:1994.
However, Evers teaches viscosity and solids content ranges for resins used to prepare wood products. Evers teaches wood strands combined with an adhesive composition (Evers, [0003]). Evers’s resins are aqueous solutions based on melamine, formaldehyde, and urea (Evers, [0009-0010]). Evers teaches that it is useful to use as little water as possible because this water needs to be removed in a subsequent processing step (Evers, [0027]). On the other hand, as the solids content rises (water content decreases), so does the viscosity of the resin (Evers, [0027]). Evers teaches that keeping the solids content below 80% is beneficial for achieving a smooth distribution of adhesive on wood strands (Evers, [0027]). The viscosity is preferably between 700 and 900 mPa*s (Evers, [0027]). Evers measures the viscosity at 20 °C (Evers, [0020]). Based on Evers’s disclosure, one of ordinary skill would have recognized that the related solids content and viscosity properties of the aqueous resin impact the performance of the resins. In particular, a lower water content (higher viscosity) is useful for minimizing the need for subsequent water remove, but a higher water content (lower viscosity) is useful for distributing the adhesive.
It would have been obvious to one of ordinary skill to have prepared a resin according to Last having a solids content below 80% and a viscosity between 700 and 900 mPa*s at 20 °C, as taught by Evers. One would have been motivated to prepare a resin with these properties in order to balance distributing the adhesive with subsequent water removal. A solid content below 80% overlaps with the claimed range of 60-85 mass%. While not explicitly measured according to according to ISO 3219:1994, there is likely overlap with the claimed range of 150-1000 mPa*s and a of 700-900 mPa*s. It would have further have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have optimized the solids content of Last into the range of 60-85 mass% and to have optimized the viscosity measured using a rotational viscometer at 20 °C according to ISO 3219:1994 into the claimed range of 150-1000 mPa*s. One would have been motivated to optimize the solids content and viscosity in order to balance distributing the adhesive with subsequent water removal. The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.).
Claims 1-2, 4-6, and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Hurkes (US 2020/0139427 A1).
Regarding claims 1-2, 4, and 6, Hurkes teaches a binder comprising a resin component and an acid ([0011-0013]). The acid is preferably para-toluene sulfonic acid ([0065-0066] and claim 15). The resin contains a furane resin obtainable by reacting at least one aldehyde compound, in particular formaldehyde, with furfuryl alcohol and additional monomers ([0012]). As additional monomers, Hurkes teaches urea, furfuryl alcohol derivatives, and/or phenol derivatives ([0016]). Furfuryl alcohol derivatives include 5-hydroxymethylfurfural (5-HMF) ([0048]).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date to have selected a combination of urea and 5-HMF as the additional monomers because Hurkes teaches these components. The resulting resin is derived from formaldehyde, furfuryl alcohol, urea, and 5-HMF. Urea reads on the instant aminoplast-forming chemical (claim 6). Formaldehyde and furfuryl alcohol read on the at least one second (poly-)condensable chemical. Formaldehyde is an aldehyde that is different from 5-HMF (claim 4). The reaction of these components reads on the instant (poly-)condensation. Hurkes therefore teaches a resin that contains an acid component that is para-toluene sulfonic acid (claim 2) and the (poly-)condensation product of formaldehyde, furfuryl alcohol, urea, and 5-HMF.
Hurkes does not explicitly teach that the resin is temperature-curable.
However, Hurkes exemplifies curing at room temperature ([0088]). Room temperature is a temperature and the resin therefore reads on a temperature-curable resin.
While Hurkes does not use an oligomer and/or isomer of 5-HMF as a monomer, the resulting resin taught by Hurkes comprises residues of 5-HMF reacted with other monomers. These residues have the same structure as residues derived from oligomers of 5-HMF. In addition, while Hurkes does not teach preparing the resin in the presence of at least one organic sulfonic acid, the resin composition taught by Hurkes comprises an organic sulfonic acid and a resin derived from the claimed components. The resin is expected to have the same structure as one prepared in the presence of an organic sulfonic acid. Case law holds that:
Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
To the extent that the process limitations in a product-by-process claim do not carry weight absent a showing of criticality, the reference discloses the claimed product in the sense that the prior art product structure is seen to be no different from that indicated by the claims. The prior art teaches the same product as the instant claims, regardless of the process by which the prior art product has been produced. The burden is shifted to Applicant to provide factually supported evidence which demonstrates the contrary.
Regarding claim 5, Hurkes teaches the temperature-curable resin according to claim 1. Hurkes teaches that the furane resin is a reaction product of an aldehyde compound, in particular formaldehyde ([0042]). Hurkes goes on to teach that the aldehyde can be glyoxal ([0050]). It would have been obvious to one of ordinary skill in the art prior to the effective filing date to have substituted the preferred aldehyde (formaldehyde) for another aldehyde taught by Hurkes, including glyoxal. This substitution corresponds to a second (poly-)condensable chemical comprising glyoxal.
Regarding claim 8, Hurkes teaches the temperature-curable resin according to claim 1. Hurkes further teaches that the resin preferably comprises 25-80% by weight of the furane resin (Hurkes, claim 4). The overall amount of water in the resin is preferably at most 30% by weight (Hurkes, claim 9) and the resin preferably comprises up to 20% by weight of an organic solvent, particularly ethanol (Hurkes, claim 10).
Hurkes does not explicitly teach a solids content of 60-85 mass% determined by evaporating the water content under vacuum.
However, Hurkes teaches a resin with 20-50% furane resin, up to 30% water, and up to 20% ethanol. Ethanol has a lower boiling point than water, so a vacuum process that removes water would also remove ethanol. Hurkes therefore teaches a resin where up to about 50% of the mass would be removed under the claimed conditions. It would have been obvious to one of ordinary skill in the art prior to the effective filing date to have prepared the resin of Hurkes with any water and ethanol content taught by Hurkes, including any amount in the range of 20-50 mass% (20% is used as the lower limit because the upper furane resin content is 80%). This corresponds to a solids content of about 50-80 mass%. A range of 50-80 mass% overlaps with claimed range of 60-85 mass%. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. See MPEP § 2144.05.I.
Allowable Subject Matter
Claim 7 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.
The following is a statement of reasons for the indication of allowable subject matter:
As of the date of this office action, no prior art references, whether considered individually or in combination have been identified to anticipate or render obvious the claimed invention under 35 U.S.C. §102 or §103.
The closest prior art of record is Last (US 2013/0137626 A1) and Hurkes (US 2020/0139427 A1).
Last and Hurkes each teach the temperature-curable resin of claim 1, as laid out above. Last and Hurkes do not teach the claimed monomer ratio recited in claim 7. Lasts teaches a ratio of urea to aldehyde(s) of 1:1.2 to 1:1.5 ([0076]). In order to arrive at the claimed a:b:c ratio, one would need to select a combination of about 58-83% of 5-HMF and about 17-42% of another aldehyde. One would not know to use the required amount of each aldehyde because Last does not provide guidance on the relative amounts of each aldehyde when a mixture of aldehydes is used. Hurkes teaches too little nitrogen-containing compound to satisfy the claimed a:b:c ratio (less than 5 wt% of the resin, [0053]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AUDRA DESTEFANO whose telephone number is (703)756-1404. The examiner can normally be reached Monday-Friday 9-5.
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/AUDRA J DESTEFANO/Examiner, Art Unit 1766
/RANDY P GULAKOWSKI/Supervisory Patent Examiner, Art Unit 1766
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