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 .
Terminal Disclaimer
The terminal disclaimer filed on December 11, 2025 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of US Pat. 12,179,379 has been reviewed and is accepted. The terminal disclaimer has been recorded.
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.
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 1, 3-8, 15, 16, and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Capps (US Pat. 6,822,042) in view of Stofko et al. (US Pat. 4,944,823).
Considering Claims 1, 3, 4, 6, 7, 15, and 23: Capps teaches a resin composition comprising water, one or more saccharides, one or more polyols, and an isocyanate component (Abstract). The polyol component is preferably 1,2-propylene glycol/a monomer, and several other monomeric polyols are disclosed (4:17-34). The saccharide component may be a mono, di, or oligosaccharide (4:35-67), with the monosaccharides reading on monomer and the disaccharides reading on an oligomer with a degree of polymerization of 2. Thus, both the saccharide and polyol can read on component c) in disclosed embodiments of Capps.
Capps does not teach the addition of a polysaccharide biopolymer. However, Stofko teaches adding starch to an isocyanate adhesive for wood (3:1-8). Capps and Stofko are analogous art as they are concerned with the same field of endeavor, namely isocyanate adhesive compositions for lignocellulose. It would have been obvious to a person having ordinary skill in the art to have added the starch of Stofko to the composition of Capps, and the motivation to do so would have been, as Stofko suggests, to improve the bonding while reducing cost (2:10-37).
Capps is silent towards the amount of starch nanoparticles to the oligomer or monomer. However, Stofko teaches the amount of starch as being a result effective variable controlling the bond strength and cost of the adhesive (2:10-37; 4:10-23). It would have been obvious to a person having ordinary skill in the art to have optimized the amount of starch through routine experimentation, and the motivation to do so would have been, as Stofko suggests, to control the bond strength and cost of the adhesive (2:10-37; 4:10-23).
Considering Claim 5: Stofko teaches the starch as being native starch (3:9-20). As shown in the original specification, the degree of polymerization of native starch is over 100 (Table).
Considering Claim 8: As polymethylene diphenyl diisocyanate is hydrophobic, it would inherently form an oil phase in water.
Considering Claim 16: Capps teaches a resin composition consisting essentially of water, one or more saccharides, one or more polyols, and an isocyanate component (Abstract). The polyol component is preferably 1,2-propylene glycol/a monomer, and several other monomeric polyols are disclosed (4:17-34). Capps teaches acids/pH modifiers from the lignocelluose mixing with the adhesive (12:24-28).
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Capps (US Pat. 6,822,042) in view of Stofko et al. (US Pat. 4,944,823) as applied to claim 1 above, and further in view of Sachs et al. (US Pat. 4,801,631).
Considering Claim 17: Capps and Stofko collectively teach the composition of claim 1 as shown above.
Capps is silent towards the viscosity of the composition. However, Sachs et al. teaches a polyisocyanate adhesive having a viscosity of 500 to 10,000 cp at 25 ºC (7:40-48). Capps and Sachs et al. are analogous art as they are concerned with the same field of endeavor, namely adhesive compositions. It would have been obvious to a person having ordinary skill in the art to have used the viscosity of Sachs et al. in the composition of Capps, and the motivation to do so would have been, as Sachs et al. suggests, to prevent bleed out of the adhesive when applied to the substrate (2:16-45).
Claims 9-12 and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Capps (US Pat. 6,822,042) in view of Stofko et al. (US Pat. 4,944,823).
Considering Claims 9 and 12: Capps teaches a resin composition comprising water, one or more saccharides, one or more polyols, and an isocyanate component (Abstract). The polyol component is preferably 1,2-propylene glycol/a monomer, and several other monomeric polyols are disclosed (4:17-34). The saccharide component may be a mono, di, or oligosaccharide (4:35-67), with the monosaccharides reading on monomer and the disaccharides reading on an oligomer with a degree of polymerization of 2. Thus, both the saccharide and polyol can read on component c) in disclosed embodiments of Capps. Capps teaches mixing the adhesives with wood particles for form a wood composite (6:35-58).
Capps does not teach the addition of a polysaccharide biopolymer. However, Stofko teaches adding starch to a isocyanate adhesive for wood (3:1-8). Capps and Stofko are analogous art as they are concerned with the same field of endeavor, namely isocyanate adhesive compositions for lignocellulose. It would have been obvious to a person having ordinary skill in the art to have added the starch of Stofko to the composition of Capps, and the motivation to do so would have been, as Stofko suggests, to improve the bonding while reducing cost (2:10-37).
Capps is silent towards the amount of starch nanoparticles to the oligomer or monomer. However, Stofko teaches the amount of starch as being a result effective variable controlling the bond strength and cost of the adhesive (2:10-37; 4:10-23). It would have been obvious to a person having ordinary skill in the art to have optimized the amount of starch through routine experimentation, and the motivation to do so would have been, as Stofko suggests, to control the bond strength and cost of the adhesive (2:10-37; 4:10-23).
Considering Claims 10, 19, and 20: Capps teaches adding the mixture to the wood particles at seven weight percent based on the dry substrate (6:35-58).
Capps is silent towards the amount of starch nanoparticles to the oligomer or monomer. However, Stofko teaches the amount of starch as being a result effective variable controlling the bond strength and cost of the adhesive (2:10-37; 4:10-23). It would have been obvious to a person having ordinary skill in the art to have optimized the amount of starch through routine experimentation, and the motivation to do so would have been, as Stofko suggests, to control the bond strength and cost of the adhesive (2:10-37; 4:10-23).
Considering Claim 11: Capps teaches the wood as being particles/wood fines (6:35-58).
Considering Claim 18: Capps does not teach spraying the adhesive onto the substrate. However, Stofko teaches spraying a liquid onto a lignocellulose substrate (7:28-43). Capps and Stofko are analogous art as they are concerned with the same field of endeavor, namely adhesive compositions. It would have been obvious to a person having ordinary skill in the art to have sprayed the adhesive of Capps as in Stofko, and the motivation to do so would have been, it is one of two commercially viable means for applying an adhesive to the lignocellulose particles.
Claim 13, 21, and 22 is rejected under 35 U.S.C. 103 as being unpatentable over Capps (US Pat. 6,822,042) in view of Stofko et al. (US Pat. 4,944,823).
Considering Claims 13 and 21: Capps teaches a resin composition comprising water, one or more saccharides, one or more polyols, and an isocyanate component (Abstract). The polyol component is preferably 1,2-propylene glycol/a monomer, and several other monomeric polyols are disclosed (4:17-34). The saccharide component may be a mono, di, or oligosaccharide (4:35-67), with the monosaccharides reading on monomer and the disaccharides reading on an oligomer with a degree of polymerization of 2. Thus, both the saccharide and polyol can read on component c) in disclosed embodiments of Capps. Capps teaches mixing the adhesives with wood particles for form a wood composite (6:35-58). Capps teaches adding the mixture to the wood particles at seven weight percent based on the dry substrate (6:35-58).
Capps does not teach the addition of a polysaccharide biopolymer. However, Stofko teaches adding starch to an isocyanate adhesive for wood (3:1-8). Capps and Stofko are analogous art as they are concerned with the same field of endeavor, namely isocyanate adhesive compositions for lignocellulose. It would have been obvious to a person having ordinary skill in the art to have added the starch of Stofko to the composition of Capps, and the motivation to do so would have been, as Stofko suggests, to improve the bonding while reducing cost (2:10-37).
Capps is silent towards the amount of starch nanoparticles to the oligomer or monomer. However, Stofko teaches the amount of starch as being a result effective variable controlling the bond strength and cost of the adhesive (2:10-37; 4:10-23). It would have been obvious to a person having ordinary skill in the art to have optimized the amount of starch through routine experimentation, and the motivation to do so would have been, as Stofko suggests, to control the bond strength and cost of the adhesive (2:10-37; 4:10-23).
Considering Claim 22: Capps teaches adding the mixture to the wood particles at seven weight percent based on the dry substrate (6:35-58).
Capps is silent towards the amount of starch nanoparticles to the oligomer or monomer. However, Stofko teaches the amount of starch as being a result effective variable controlling the bond strength and cost of the adhesive (2:10-37; 4:10-23). It would have been obvious to a person having ordinary skill in the art to have optimized the amount of starch through routine experimentation, and the motivation to do so would have been, as Stofko suggests, to control the bond strength and cost of the adhesive (2:10-37; 4:10-23).
Claim 24 is rejected under 35 U.S.C. 103 as being unpatentable over Capps (US Pat. 6,822,042) in view of Stofko et al. (US Pat. 4,944,823) as applied to claim 1 above, and further in view of Layton et al. (US Pat. 5,128,407).
Considering Claim 24: Capps and Stofko et al. collectively teach the composition of claim 1 as shown above.
Capps does not teach adding urea to the composition. However, Layton et al. teaches adding urea to an isocyanate wood adhesive (1:52-68). Capps and Layton et al. are analogous art as they are concerned with the same field of endeavor, namely isocyanate wood adhesives. It would have been obvious to a person of ordinary skill in the art to have added urea to the adhesive of Capps, as in Layton et al., and the motivation to do so would have been, as Layton et al. suggests, to reduce the cost and provide a fluid composition (2:4-17).
Allowable Subject Matter
Claim 2 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.
Considering Claim 2: The prior art of record does not teach or suggest the claimed composition, specifically where the biopolymer comprises a combination of more than 80% by weight of starch and more than 15% by weight of protein. The closest prior art is Capps discussed above. There is no suggestion to add the claimed mixture of starch and protein in the claimed ratio to the composition of Capps. As such, the claims are non-obvious over the prior art of record.
Response to Arguments
Applicant's arguments filed December 11, 2025 have been fully considered but they are not persuasive, because:
A) In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). While Stofko et al. does teach that isocyanate reacts with water, and thus powdery binders are preferred (4:24-30), these are merely preferred embodiments. Further, the problem of reaction between the isocyanate and water is solved by Capps, which includes the polyol to retard the reaction between the isocyanate and water (3:20-30). As the combination of Capps and Stofko et al. teach that the combination of water and the carbohydrate can have shelf stability, the teaching away from the mixing of water and the carbohydrate with polyisocyanate is not persuasive.
B) In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, it would have been obvious to a person having ordinary skill in the art to have added the starch of Stofko to the composition of Capps, and the motivation to do so would have been, as Stofko suggests, to improve the bonding while reducing cost (2:10-37). As Stofko teaches that the starch particles increase the bonding strength, a person of ordinary skill in the art would be motivated to add the starch for this reason.
C) The applicant’s argument that Stofko et al. does not teach the ratio of the monomers or oligomers to the one of more biopolymers is not persuasive. Stofko teaches the amount of starch as being a result effective variable controlling the bond strength and cost of the adhesive (2:10-37; 4:10-23). It would have been obvious to a person having ordinary skill in the art to have optimized the amount of starch through routine experimentation, and the motivation to do so would have been, as Stofko suggests, to control the bond strength and cost of the adhesive (2:10-37; 4:10-23).
"A person of ordinary skill in the art is also a person of ordinary creativity, not an automaton." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421, 82 USPQ2d 1385, 1397 (2007). "[I]n many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle." Id. at 420, 82 USPQ2d 1397. Office personnel may also take into account "the inferences and creative steps that a person of ordinary skill in the art would employ." Id. at 418, 82 USPQ2d at 1396. See MPEP § 2141.03. As the amount of starch would necessarily control the ratio of the starch to other components, the amount of starch being a result effective variable would implicitly teach the ratio as being a result effective variable.
D) The applicant’s argument that Sachs teaches a preference for higher viscosity is not persuasive. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). See MPEP § 2123.
E) The applicant’s argument that Capps does not teach the amount of biopolymer applied in terms of the substrate weight is not persuasive. "A person of ordinary skill in the art is also a person of ordinary creativity, not an automaton." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421, 82 USPQ2d 1385, 1397 (2007). "[I]n many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle." Id. at 420, 82 USPQ2d 1397. Office personnel may also take into account "the inferences and creative steps that a person of ordinary skill in the art would employ." Id. at 418, 82 USPQ2d at 1396. See MPEP § 2141.03. As the amount of starch would necessarily control the ratio of the starch to other components, the amount of starch being a result effective variable would implicitly teach the ratio as being a result effective variable.
Conclusion
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LIAM J HEINCER whose telephone number is (571)270-3297. The examiner can normally be reached M-F 7:30-5:00.
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/LIAM J HEINCER/Primary Examiner, Art Unit 1767