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 1-14 and 20-22, in the reply filed on July 06, 2026 is acknowledged. The traversal is on the ground(s) that the cited prior art does not teach or suggest the presence of hetero atoms in the ammonium group and that the positive charge of the ammonium groups was counter balanced with an anion. This is not found persuasive because the presence of one or more hetero atoms is optional and there is nothing within the claims or in the specification of the present application that the anion counter balancing the positive charge of the ammonium was free and not covalently bonded.
The requirement is still deemed proper and is therefore made FINAL.
Claims 15-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on July 06, 2026.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 8-10, 12 and 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Delis et al (U.S. Patent # 9,308,668).
In the case of claim 1, Delis teaches a process for treating lignocellulosic material with a functionalized polyorganosiloxane (Abstract). Delis teaches that the polyorganosiloxane comprised a polyorganosiloxane backbone and at least one functional group which included zwitterionic groups (Column 3 Line 40 through Column 4 Line 37). Delis teaches that the zwitterionic groups had a formula analogous to formula (I) of the claims comprising a positively charged nitrogen, two R2 groups which read on R2 and R4 of the claims, an R3 groups which reads on R3 of the claim and a group which reads on the “ * ” of the claims in the form of a R3 group linked with an anion of a carboxylate (Column 9 Lines 21-30). Delis teaches that R2 comprised was a saturated hydrogen carbon having 1 to 20 carbon atoms and optionally comprised O, S, or N hetero atoms (Column 7 lines 10-15). Furthermore, Delis teaches that R3 was a divalent/bivalent hydrocarbon having 1 to 20 carbon atoms (Column 7 Lines 15-20).
As for claims 8 and 10, Delis teaches that the polyorganosiloxane compound was part of an aqueous composition (Column 18 Lines 29-39). The treatment method of Delis comprised impregnating the lignocellulosic material the composition by vacuum-pressure impregnation at a pressure in the range of 5 mbar to 20 bar followed by drying the impregnated material (Column 20 Lines 31-58).
As for claim 9, Delis teaches that the post-impregnating drying was conducted at 103 ℃ (Column 23 Lines 59-62).
As for claim 12, Delis does not teach that the aqueous composition required heavy metal compounds.
As for claim 14, Delis teaches that the aqueous composition comprising the polyorganosiloxane contained the taught functionalized polyorganosiloxane compound in the amount of 1 to 80 wt% based on the total weight of the composition (Column 18 Line 58 through Column 19 Line 6).
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 2-7, 13, 21 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Delis et al.
The teachings of Delis as it applies to claim 1 have been discussed previously and are incorporated herein.
In the case of claims 2 and 3, as was discussed previously, R2 and R3 of Delis read on R2, R3 and R4 of the claims and Delis teaches that R2 and R3 were saturated hydrocargons having up to 24 or 20 carbon atoms, which overlapped with the carbon atoms required by the claims. 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). See section 2144.05.I of the MPEP.
As for claims 4-6 and 21, are rejected for the same reasons discussed previously in the rejection of claim 1. Furthermore, Delis teaches a polyorganosiloxane compound of formula (VI) which reads on the formula (II) of the claims (Column 14 Lines 28-41) wherein the n of Delis, which reads on n of the claims, ranges from 1 to 28, which overlapped with the claimed range of 9 to 200 and as was discussed previous overlapping ranges are prima facie obvious. Furthermore, R1 and RF of formula (VI) reads on R1 and R5, respectively, of the claims and R1 comprised aliphatic hydrocarbons having up to 100 carbon atoms or divalent groups having a heteroatom of O, S, N (Column 6 Line 13 through Column 7 Line 10).
Delis further teaches that the ammonium functionalized polyorganosiloxane was cationic (Column 15 Lines 16-27) and included anions in the form of a halides, hydroxides, nitrates and carboxylates which neutralized cationic functional groups (Column 13 Lines 44-53).
As for claim 7, Delis teaches that the polyorganosiloxane compound of the taught invention had an average molecular weight of less than 3000 g/mol (Column 23 Lines 27-30), which overlapped with the claimed range and as was discussed previously overlapping ranges are prima facie obvious.
As for claims 13 and 22, Delis teaches that the drying of the impregnated material was up to a temperature of 103 ℃ (Column 23 Lines 59-63), which overlapped with the claimed ranges and as was discussed previously overlapping ranges are prima facie obvious.
Claims 11 is rejected under 35 U.S.C. 103 as being unpatentable over Delis et al as applied to claim 8 above, and further in view of Shutov et al (U.S. Patent # 4,486,475).
The teachings of Delis as it applies to claim 8 have been discussed previously and are incorporated herein.
In the case of claim 11, Delis does not teach having pre-dried the lignocellulosic material to a residual relative moisture content of 0.1 to 20%.
Shutov teaches a method for modifying wood comprising impregnating the wood with a modifying system (Abstract). Shutov further teaches that prior to impregnation the wood was pre-dried to a moisture content of 6 to 14% (Column 3 Lines 33-39 and Column 4 Lines 24-35).
Based on the teachings of Shutov, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have pre-dried the wood/lignocellulosic material of Delis to a moisture content of 6 to 14% because this was a known moisture level in the art for wood/lignocellulosic material being modified by impregnation with a treatment composition.
Allowable Subject Matter
Claim 20 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 was discussed previously, Delis taught a polyorganosiloxane compound having a formula analogous to that of the claimed formula (II) wherein n was in the range of 0 to 28. However, Delis does not fairly teach or suggest that the polyorganosiloxane compound had an n value, which signified the number average degree of polymerization, in the range of 40 to 60.
Conclusion
Clams 1 through 14, 21 and 22 have been rejected and claim 20 have been objected. Clams 15 through 17 are withdrawn. No claims were allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL P WIECZOREK whose telephone number is (571)270-5341. The examiner can normally be reached Monday - Friday, 6:00 AM - 3:30 PM.
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/MICHAEL P WIECZOREK/Primary Examiner, Art Unit 1712
