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 .
Response to Arguments
Applicant's arguments filed February 25, 2026 have been fully considered but they are not persuasive.
The applicant presented arguments regarding the rejection of independent claim 1 under 35 U.S.C. § 103:
1) Applicant focuses on the steps ii) and iii) of the process of claim 1 which recites:
ii) adding either the liquid part or the solid part to a lignocellulosic material to provide a mixture, then
iii) adding the remaining liquid or solid part to the mixture to provide a lignocellulosic material impregnated with the adhesive composition.
Applicant maintains that these are sequential steps and that the primary reference used in the rejection of claim under § 103, Brady (US 2009/0098387) IDS 05/15/2024, does not teach or suggest such a sequential addition. Instead, Brady teaches that "[t]he components of the adhesive composition are combined in a suitable mixer and are stirred until a homogeneous mixture is obtained." (paragraph [0040]). The applicant interprets that to mean that all of the components (e.g. protein source, water, etc.,) are mixed together and then applied to a lignocellulosic substrate and not adding either the liquid or solid part of the adhesive to a lignocellulosic material and then adding the remaining liquid or solid part. The applicant supports this interpretation by the passages from Brady:
“The process involves applying the disclosed adhesive composition to lignocellulosic substrates'-i.e., the complete adhesive is applied to the lignocellulosic substrate), (paragraph [0040]) ("The crosslinker is typically added close to the time of application"-i.e., the crosslinker is added to the protein source/water/ diluent mixture before application to the lignocellulosic substrate); (paragraphs [0046]-[0051]) describing that the pre-formed liquid adhesive formulation is applied to the lignocellulosic substrate by, for example, spraying or roller coating); Examples 16-27 and 29-33 (confirming that the crosslinker (PAE resin), when used with protein, is always mixed with the soy flour/ diluent mixture before application); claim 13 ("A method for producing a lignocellulosic composite comprising applying the adhesive composition of claim 2, to a lignocellulosic substrate and curing the adhesive composition to form the lignocellulosic composite").
In summary, the applicant maintains that Brady is directed to an approach where the adhesive is prepared in a single, fully mixed composition prior to application and does not disclose or suggest a process where the solid adhesive part and liquid adhesive part are added sequentially or separately to the lignocellulosic material.
The secondary reference, Evon et al. (Journal of Agricultural Studies, 2015, vol. 3 pp. 194-211 ("Evon")), does not remedy this because Evon is directed to manufacturing fiberboards from sunflower cake as a byproduct of a biorefinery process with the board formed by mixing the sunflower cake with natural binders prior to molding. Therefore, Evon constitutes a bulk staring material containing lignocellulosic fiber and residual proteins which are combined with natural binders and water and not sequentially added as in claim 1. (Applicant Arguments/Remarks 02/25/2026 pp. 4-5).
The examiner counter-argues that Brady, in at least one embodiment, does provide a process for sequentially adding either the liquid part (paragraphs [0033] [0037]) or the solid part (paragraph [0022] sunflower meal) to a lignocellulosic material (paragraph [0040] various orders of addition can be employed, For example, the protein source, such as soy flour, can be added to water, followed by diluent. Alternatively, the diluent can be added to water, followed by the protein source.). The applicant singles out one embodiment where a lignin containing composite is formed by applying the adhesive composition to a lignin containing substrate and curing the adhesive composition to form the composite (paragraph [0046] and claims 2 and 13).
However, under broadest reasonable interpretation, the disclosure allows for the sequential addition whereby the process steps include steps where the liquid or solid part is added to the lignocellulosic material, and then followed by adding the remaining liquid or solid part to the mixture to provide lignocellulosic material impregnated with the adhesive composition.
Moreover, in general, the transposition of process steps or the splitting of one step into two, where the processes are substantially identical or equivalent in terms of function, manner and result, was held to be not patentably distinguish the processes. Ex parte Rubin, 128 USPQ 440 (Bd. Pat. App. 1959). See also MPEP § 2144.04 IV. C.
2) Applicant argues that neither Brady nor Evon recognizes particle size as a function parameter in an adhesive impregnation process. In particular, Evon fails to disclose or suggest the claimed granulometry in a function context and merely describes the results of grinding or defibration of a bulk biorefinery and does not identify as parameters governing adhesive behavior or impregnation. Evon does not teach or suggest selecting a particulate fraction having a d50 below 300 µm nor does it associate particle size with improved properties for the produced article. In contrast, the instant application demonstrate that sunflower meal having a d50 approximately 80 µm gives superior performance (internal boding strength and reduced thickness swelling compared to defibrated sunflower meal having a much larger d50. (Applicant Arguments/Remarks 02/25/2026 pp. 5-6).
The examiner counter-argues that Evon is analogous and pertinent art, in that it discloses the manufacturing of fiberboards using natural binders and lignocellulosic fibers from sunflower cake. The particle size distribution is critical to insuring good mechanical properties and therefore, Evon indicates the development of a particle size distribution to monitor this result effective variable (See Figure 1.p. 204 (p. 10 in the document sequence) last paragraph). Therefore, under broadest reasonable interpretation, it would have been obvious to one with ordinary skill in the art use the range of granularity of less than d50 as motivated by the achievement of good mechanical properties.
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.
Claim(s) 1-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Brady (US 2009/0098387 A1) IDS 05/15/2024 in view of P. Evon et. al. New Insulation Fiberboards from Sunflower Cake With Improved Thermal and Mechanical Properties, Journal of Agricultural Studies, 2015, vol. 3 pp.194-211
Regarding Claim 1, Brady teaches a process for preparing an article (paragraphs [0003] [0015] particleboard, fiberboard, strandboard, lignocellulosic substrates) comprising:
- i) providing a two-part adhesive composition (paragraphs [0017] [0018] aqueous mixture of a protein) having
- a liquid part comprising an amine-based azetidinium-functional cross-linker, a diluent and water (paragraphs [0033] [0037[ non-urea diluents, water-soluble or water-dispersible, with at least one embodiment without protein of azetidinium resin with urea), and
- a solid part comprising ground Helianthus meal or ground Brassica meal or a mixture thereof (paragraph [0022] protein-based adhesive with sunflower (Helianthus) meal as a constituent (where the sunflower genus name is Helianthus see Evon introduction above as evidence).
- ii) adding either the liquid part or the solid part to a lignocellulosic material to provide a mixture (paragraph [0040] components are combined in a suitable mixer and are stirred until a homogeneous mixture is obtained), then
- iii) adding the remaining liquid or solid part to the mixture (paragraph [0040] the diluent can be added to water, followed by the protein source) to provide a lignocellulosic material impregnated with the adhesive composition (paragraph [0046] The process
involves applying the adhesive composition to a lignin containing substrate and curing the adhesive composition to form a lignin containing composite).
However, Brady is silent as to the Helianthus meal having a granulometry d50 of less than 300 µm.
However, Evon discloses fiberboards manufactured by compression molding from a cake generated during the sunflower biorefinery with cohesive mixtures of a natural binder and lignocellulosic fibers (abs). Moreover, to obtain good mechanical properties a particle size distribution indicates that particle diameters smaller than 500 µm classically leads to good mechanical properties (Figure 1, p. 203 last paragraph fines (diameter inferior to 500 µm) contain spherical particles from the kernel breakdown process such continuity in particle sized classically leads to good mechanical properties).
It would have been obvious to one with ordinary skill in the art at the time of the effective filing date of the invention to have used a granulometry d50 of less than 300 µm, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. One would have been motivated to use this range for the purpose of maintaining good mechanical properties as disclosed by Evon (Table 3 pp. 203, 205).
Regarding Claim 2, the combination of Brady and Evon disclose all the limitations of claim 1 and Brady further discloses that the amine-based azetidinium-functional cross-linker is an epichlorohydrin-based cross-linker (paragraph [0010]).
Regarding Claim 3, the combination of Brady and Evon disclose all the limitations of claim 2 and Brady further discloses that the epichlorohydrin-based cross-linker is a polyamidoamine-epichlorohydrin (PAE), polyalkylenepolyamine-epichlorohydrin (PAPAE), amine polymer-epichlorohydrin (APE), or a combination thereof (paragraphs [0010] [0029]).
Regarding Claim 4, the combination of Brady and Evon disclose all the limitations of claim 1 and Brady further discloses the diluent is glycerol or crude vegetable glycerin (paragraph [0035] preferred non-urea diluents are glycerol…)
.
Regarding Claim 5, the combination of Brady and Evon disclose all the limitations of claim 1 and Evon further discloses that the ground Helianthus meal is ground Helianthus annuus meal (p. 200 2.1).
Regarding Claim 6, the combination of Brady and Evon disclose all the limitations of claim 1 and Evon further discloses the ground Helianthus meal has a granulometry d50 between 10 µm and 275 µm (Figure 1 p. 203)
Regarding Claim 7, the combination of Brady and Evon disclose all the limitations of claim 1 and Brady further discloses that the adhesive composition further comprises at least one additive (paragraph [0039]).
Regarding Claims 8 and 9, the combination of Brady and Evon disclose all the limitations of claim 1 however, neither Brady nor Evon explicitly disclose that the weight ratio of the amine-based azetidinium- functional cross-linker / lignocellulosic material (dry weight / dry weight) is comprised between 0.2% and 10% or 0.5% and 12%.
However, Brady does disclose that the crosslinker, which is an amine-based azetidinium- functional cross-linker (paragraph [0010] [0037]), is present in the amount from about 0.01 to about 50 wt. % based on the total weight of the composition.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to use a range of the weight ratio of diluent/lignocellulosic material (dry weight/dry/ weight) comprised between 0.5% and 12% or 0.5 % and 12% since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. One would have been motivated to use the range of either 0.2% and 10% or 0.5% and 12% for the purpose of maintaining the stability of the crosslinkers in the formulation (paragraph [0040]).
Regarding Claim 10, the combination of Brady and Evon disclose all the limitations of claim 1 however, neither Brady nor Evon explicitly disclose that the weight ratio of ground Helianthus meal / lignocellulosic material (dry weight / dry weight) is comprised between 0.5% and 20%.
However, Evon does disclose that the fiberboards produced were cohesive mixtures lignocellulosic fibers which are entangled with the agromaterial of the sunflower cake which also act as reinforcement. This ratio of lignocellulosic fibers and ground Helianthus meal determine the density of the composite product (p. 206 2nd paragraph lines 1-4.
Therefore, it would be obvious to one having ordinary skill in the art at the time of the effective filing date of the invention to use a weight ratio of ground helianthus meal/lignocellulosic material (dry weight/dry weight) in the range of 0.5% and 20% since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. This would be considered as necessary because the mechanical properties of fiberboards are influenced by the molding conditions, and this is correlated to their densities. The higher the fiber board density, the higher its mechanical properties (p. 206 last paragraph lines 1-3).
Regarding Claim 11, the combination of Brady and Evon disclose all the limitations of claim 1 and Brady further discloses that step ii) and/or step iii) are carried out under mixing (paragraph [0040] components of the adhesive composition are combined in a suitable mixer and are stirred until a homogeneous mixture is obtained).
Regarding Claim 12, the combination of Brady and Evon disclose all the limitations of claim 1 and Brady further discloses a step of curing the adhesive composition (paragraphs [0011] [0046] forming a composite by curing the adhesive composition to form a lignin containing composite).
Regarding Claim 13, the combination of Brady and Evon disclose all the limitations of claim 1 and Brady further discloses a pressing step of the lignocellulosic material impregnated with the adhesive composition (paragraph [0050] composed panel may be pressed at ambient temperature to consolidate the structure).
Regarding Claim 14, the combination of Brady and Evon disclose all the limitations of claim 1 and Brady further discloses lignocellulosic material is wood strands and/or wood particles (paragraph [0015] wood strands and wood particles).
Conclusion
THIS ACTION IS MADE FINAL. 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 WAYNE K. SWIER whose telephone number is (571)272-4598. The examiner can normally be reached M-F generally 8:30 am - 5:30 pm PST.
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, Abbas Rashid can be reached at 571-270-7457. 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.
/WAYNE K. SWIER/Examiner, Art Unit 1748
/Abbas Rashid/Supervisory Patent Examiner, Art Unit 1748
Prosecution Insights