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 .
Claim Objections
Claim 19 is objected to because of the following informalities: the text “(ii-c)” appears after claim 19 and before claim 20. Appropriate correction is required.
Claim 31 is objected to because of the following informalities: “0,18” should read “0.18”. 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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 19, 28, and 31 are 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.
Regarding claim 19, A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 19 recites the broad recitation “at least two distinguishable layers”, and the claim also recites “the total number of layers is then three or more” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Regarding claim 28, the phrase “preferably” is read similarly as the phrase "such as" and thus renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 31, the claim recites that “none of the compounds having two or more amino groups is polylysine” which contradicts claim 18. Accordingly, the claim scope is unclear here as it is not clear how both of these conditions can be met.
Additionally, regarding claim 31, the phrase “preferably” is read similarly as the phrase "such as" and thus renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim Rejections - 35 USC § 103
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.
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.
Claim(s) 18 and 20-31 are rejected under 35 U.S.C. 103 as being unpatentable over Hand (US 2015/0224671) in view of Petersson et al. (US Patent No. 4,316,709), hereinafter Petersson.
Regarding claim 18, Hand discloses a process of producing a lignocellulosic composite comprising: (a) making a formed sheet by:
(a-1) preparing a mixture comprising (par. 0018):
lignocellulosic particles (par. 0017 – “wood particles” are lignocellulosic particles; par. 0025), and
a heat-curable binder composition comprising as components for hardening the binder via reaction with each other at least
(ii-a) one, two, or more carbohydrate compounds (par. 0034 – “at least one carbohydrate component”) and
(ii-b) one or two compounds having two or more amino groups (par. 0048 – polyamines have two amino groups, as the nitrogen-containing component of par. 0034), comprising hexamethylenediamine (HMDA – par. 0057), and
(a-ii) forming a sheet from said mixture obtained in step (a-1) (par. 0019), resulting in a formed sheet;
(b) in a dielectric heating and pressing unit (par. 0077 – heated press), at least temporarily compacting and dielectrically heating the formed sheet as resulting in step (a) so that the heat-curable binder composition hardens and the composite results (par. 0080), and that producing the lignocellulosic composite is part of a continuous production of lignocellulosic composites (this would be clearly implied, if considered limiting); wherein before the dielectric heating occurs, the temperature of the binder is below 80 C (as it would be at room temperature or around 20 C – par. 0072).
Hand explains that “post-curing” in the disclosure “simply means heating the particle board to a temperature above room temperature” (par. 0072). However, Hand does not explicitly disclose that the curing or post-curing in any case, occur in a dielectric heating press (where the press has a heat source that is dielectric), as is required in the claim.
However, Petersson discloses a continuous belt press for heat treatment of a material, for example, glue-coated wood chips (Petersson, abstract). The “glue” in Petersson maps to the “binder” of the above process of Hand – as “glue” can also be referred to as a “binder.” While Hand explains that the sheet above is “heated and pressed,” the reference does not specify that the dielectric (RF wave) heating occurs specifically within the press. Peterrsson demonstrates that a (continuous) dielectric heating press is conventionally known in the art for pressing and heating wood materials and a binder together (Petersson, 3:31-3:49; ref. claim 1).
As such, one of ordinary skill in the art would have found the dielectric heating press of Petersson to be a substitutable alternative to the generically described “heated press” of Hand, since using either press would result in a cured, pressed product containing wood particles and binder or glue. Accordingly, one of ordinary skill in the art, before the effective filing date of the claimed invention, would have found it obvious to have specified that the dielectric heating press of Petersson is substituted for the heated press of Hand, as is required in the claim as to perform the pressing and heating step with dielectric heating.
Regarding claim 20, Hand/Petersson discloses the subject matter of claim 18, and it is further implied that the production of a formed sheet according to step (a) is continuous, as there is no mention of any stopping during the pressing or making of a formed sheet.
Regarding claims 22-23 and 28, Hand/Petersson discloses the subject matter of claim 18, and (only one of the conditions in each claim is required to be met under BRI with the use of “and/or”) further discloses that the internal bond strength is at least 0.2 N/mm^2 (Hand, par. 0107). While the conditions of the intermediate as in claim 22 do not appear to be explicitly described (formed sheet), these would be considered met by performing the steps in claim 18. Furthermore, with respect to claim 28, because the internal bond strength is met, these process conditions must have been selected such that the result occurred and at least one embodiment (Hand, Fig. 6) is below 70%.
Regarding claim 24, Hand/Petersson discloses the subject matter of claim 18, and further discloses (only one of these conditions is required to be met under BRI due to the “and/or” language in the claim) that step (a) of making the formed sheet is performed such that the unreacted binder portion is at least 80% (which corresponds to being less than a 0.2 conversion rate as more than 80% of the reactants are still yet to react) (Hand, par. 0038).
Regarding claim 25, Hand/Petersson discloses the subject matter of claim 18, and further discloses that the dielectric heating occurs to a temperature of at least 130 C (Hand, Examples, par. 0132-0134, includes 140 C specifically, and explains that temperatures of up to 180 C are reached).
Regarding claims 26-27, Hand/Petersson discloses the subject matter of claim 18. With respect to the press plate temperature and the temperature of the formed sheet, Hand further describes that these steps can be carried out in a variety of different temperatures (Hand, par. 0075-0077). The board is cooler than the formed sheet by 5, 10 or 15 C (Hand, par. 0075) and the temperature of the formed sheet can be in a range overlapping with the claimed range (Hand, par. 0074). Accordingly, one of ordinary skill in the art would have found it obvious to have specified that the temperature conditions are as required in the claim as a routine optimization of the disclosure of Hand above.
Regarding claim 29, Hand/Petersson discloses the subject matter of claim 18, and further discloses (only one of the and/or conditions must be met under BRI) that the heating occurs such that the maximum temperature is reached within 100 seconds (Hand, par. 0134).
Regarding claim 30, Hand/Petersson discloses the subject matter of claim 18 which includes the HMDA/polylysine above, and further discloses that the carbohydrate compounds are saccharides (Hand, par. 0043).
Regarding claim 31, Hand/Petersson discloses the subject matter of claim 18, and further discloses that the carbohydrate and amine are present in a ratio of 10:90 to 90:10 (Hand, par. 0063 describes 50-90% carbohydrate and 10-50% amine which would fall within this range as claimed).
Claim(s) 19 is rejected under 35 U.S.C. 103 as being unpatentable over Hand (US 2015/0224671) in view of Petersson (US Patent No. 4,316,709) as applied to claim 18 above, and further in view of Weinkotz (US 2018/0071945).
Regarding claim 19, Hand/Petersson discloses the subject matter of claim 18, but does not appear to explicitly disclose that there are two layers formed as part of the composite.
However, Weinkotz discloses that a multilayer lignocellulosic article can be formed with protective layers on the outside (Weinkotz, par. 0028-0029). Accordingly, in order to likewise protect the article being formed above in Hand/Petersson, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to have modified the above disclosure from Hand/Petersson to likewise have included at least a second layer to protect the board being produced above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW D GRAHAM whose telephone number is (469)295-9232. The examiner can normally be reached Monday - Friday 7:30AM-4:00PM (CST).
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/ANDREW D GRAHAM/Primary Examiner, Art Unit 1742