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
The applicant’s election without traverse of Invention 1 and Species 1 in the reply filed on 2 March 2026 is acknowledged. Claims 7 and 13-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species (claim 7) or invention (claims 13-20), there being no allowable generic or linking claim.
Information Disclosure Statement
The IDS dated 2 March 2026 lists US 2023/0311445 to Merrick et al. as well as an International Search Report and Written Opinion. The Search Report lists US 2023/0311446 to Merrick et al. Note that the publication numbers are identical except for the final digit (5 versus 6). Also, US 2023/0311445 is withdrawn and unavailable for viewing. It appears that the applicant intended to cite US 2023/0311446 in the IDS based on its citation in the Search Report and the matching inventor name. This reference is being cited by the examiner on form PTO-892 (see attached) so no correction or further submission is required.
Specification
Applicant is reminded of the proper content of an abstract of the disclosure.
A patent abstract is a concise statement of the technical disclosure of the patent and should include that which is new in the art to which the invention pertains. The abstract should not refer to purported merits or speculative applications of the invention and should not compare the invention with the prior art.
If the patent is of a basic nature, the entire technical disclosure may be new in the art, and the abstract should be directed to the entire disclosure. If the patent is in the nature of an improvement in an old apparatus, process, product, or composition, the abstract should include the technical disclosure of the improvement. The abstract should also mention by way of example any preferred modifications or alternatives.
Where applicable, the abstract should include the following: (1) if a machine or apparatus, its organization and operation; (2) if an article, its method of making; (3) if a chemical compound, its identity and use; (4) if a mixture, its ingredients; (5) if a process, the steps.
Extensive mechanical and design details of an apparatus should not be included in the abstract. The abstract should be in narrative form and generally limited to a single paragraph within the range of 50 to 150 words in length.
See MPEP § 608.01(b) for guidelines for the preparation of patent abstracts.
The abstract of the disclosure is objected to because it includes a comparison with the prior art (“a denser, smoother and more uniform surface than that obtained with particle-based products”). A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
The disclosure is objected to because of the following informalities:
On page 7, in line 23, “odium tetraborate” should be replaced with “sodium tetraborate”.
Appropriate correction is required.
Claim Objections
Applicant is advised that should claim 2 be found allowable, claim 4 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. Similarly, should claim 3 be found allowable, claim 5 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
It appears that claims 4 and 5 were intended to recite “the second set of processed fibers” rather than “the first set of processed fibers”. The examiner respectfully suggests amending claims 4 and 5 to correct this issue.
Claim 1 is objected to because of the following informalities:
In claim 1, “applying pressure and heat by a press to the composite” should be replaced with “applying pressure and heat by a press to the composite mat” for consistency with line 2 of the claim.
Appropriate correction is required.
Claim Interpretation
The term “anti-settling fibers” as used in claim 1 is interpreted under broadest reasonable interpretation to encompass fibers that resist settling within a layer due to their physical morphology. The specification defines “anti-settling” as “the resistance of a fiber or similar material from settling to the bottom of a layer, mixture, or structure over time” (page 2, line 22 to page 3, line 3). The specification further describes anti-settling fibers as possessing “fluffy, flossy, puffy, loose-fill, anti-settling, whiskers-like characteristics” (page 4, lines 10-12). Accordingly, anti-settling fibers are interpreted to include fibrillated fibers, interlocking lofted fibers, woven or non-woven fiber structures (e.g., fiberglass mesh or mat), and other fiber configurations that resist settling within a layer due to entanglement, fibrillation, or structural integrity.
The terms “bottom” and “top” as used in claim 1 (e.g., “forming a bottom fiber layer” and “forming, on top of the core strand layer, a top fiber layer”) are interpreted as specifying the formation order and relative position of the layers (i.e., the bottom fiber layer is formed first, the core strand layer is formed on top of it, and the top fiber layer is formed on top of the core strand layer). These terms do not require that the bottom and top fiber layers be the outermost exterior surfaces of the final product.
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, 2, and 4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2023/0311446 (“Merrick”).
Regarding claim 1, Merrick discloses a method for producing a wood-based composite panel (a method of producing a fire-resistant wood composite product; see claim 1, [0010], and [0013]), comprising the steps of:
forming a composite mat on a production line in a factory (see the manufacturing process of Figure 10 and [0050]-[0051]) by
forming a bottom fiber layer with a first set of processed fibers, wherein the first set of processed fibers comprises anti-settling fibers (placing a bottom FR-additive conveying laminate on the forming line so as to be the bottommost layer of the mat; see [0051] and Figure 10, particularly step 126, and claim 8; the conveying laminate may comprise fiberglass and may be a woven or mesh material; see [0011] and [0033]; a woven or mesh fiberglass mat constitutes a layer of anti-settling fibers because the woven or mesh structure resists settling of the constituent fibers within the layer);
forming, on top of the bottom fiber layer, a core strand layer with a plurality of wood strands (forming one or more layers of a strand mat with treated wood strands, including bottom surface strands, core strands, and top surface strands; see [0050] and Figure 10, particularly steps 130, 140, 150, and claim 1);
forming, on top of the core strand layer, a top fiber layer with a second set of processed fibers, wherein the second set of processed fibers comprises anti-settling fibers (placing a conveying laminate on the top layer of the mat; see [0050] and Figure 10, particularly step 160, and claim 1; laminate layers are present on both sides of the strand layers; see [0051]; the conveying laminate may comprise fiberglass and may be woven or mesh; see [0011] and [0033]); and
applying pressure and heat by a press to the composite mat to form a wood-based composite board with fiber-based surface layers (application of heat and pressure to mats to form boards; see [0050] and Figure 10, particularly step 172, and claim 1).
Regarding claim 2, Merrick discloses that the first set of processed fibers comprise synthetic fibers (the conveying laminate may comprise fiberglass, which is a synthetic fiber; see [0011] and [0033]; synthetic materials for use in a conveying laminate further include nylon, polyester, aramid, modacrylic, melamine, carbon fiber, silica/boron blends, silica/aramid blends, and the like; see [0034]).
Regarding claim 4, claim 4 is identical to claim 2. Please see the rejection of claim 2. It appears that claim 4 was intended to recite “the second set of processed fibers” rather than “the first set of processed fibers”. To the extent claim 4 is so amended, Merrick discloses that the conveying laminate on the top of the strand mat may also comprise fiberglass or other synthetic material (see [0011], [0033]-[0034], and [0051], which teaches laminate layers present on both sides of the strand layers).
Claims 1, 3, 5, 6, 8, and 9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2019/0375128 (“Sokka”).
Regarding claim 1, Sokka discloses a method for producing a wood-based composite panel (a method of producing a core board suitable for a coated multi-ply wood panel; see claim 1 and [0008]), comprising the steps of:
forming a composite mat on a production line in a factory (forming a layered structure by vertical stacking; see [0060]-[0061]; the steps of forming and pressing are carried out in a hot press; see [0070]) by
forming a bottom fiber layer with a first set of processed fibers, wherein the first set of processed fibers comprises anti-settling fibers (providing a first fibrous layer consisting of a sheet of fibrillated fibers; see [0063] and claim 11; fibrillated fibers are produced by mechanical processing such as thermomechanical refining; see [0032] and [0053]; such fibrillated fibers resist settling within a layer due to their branched, entangled morphology);
forming, on top of the bottom fiber layer, a core strand layer with a plurality of wood strands (providing on the opposite side of the second layer a plurality of sheets of wood based material, interlayered with layers of adhesive to form a stack; see [0065] and claim 11; the “wood based layer” covers wood veneer and wood strand; see [0021] and claim 15);
forming, on top of the core strand layer, a top fiber layer with a second set of processed fibers, wherein the second set of processed fibers comprises anti-settling fibers (providing on top of the second adhesive layer a second fibrous layer consisting of a sheet of fibrillated fibers; see [0067] and claim 11); and
applying pressure and heat by a press to the composite mat to form a wood-based composite board with fiber-based surface layers (pressing the layered structure thus obtained to form a core board suitable for a coated multi-ply wood panel; see [0068] and claim 11; the steps of forming and pressing are carried out in a hot press; see [0070]).
Regarding claim 3, Sokka discloses that the first set of processed fibers comprise natural fibers (the fibrillated fibers are selected from the group of cellulosic fibers and lignocellulosic fibers; see [0051]; the fibrillated fibers are produced from softwood or hardwood, such as spruce, pine, larch, birch, aspen, alder, or eucalyptus; see [0054]).
Regarding claim 5, claim 5 is identical to claim 3. Please see the rejection of claim 3.
Regarding claim 6, Sokka discloses that processed fibers in the first set of processed fibers and the second set of processed fibers are the same (the method of [0062]-[0068] uses the same type of fibrillated fiber sheets for both the first and second fibrous layers, with no distinction between them).
Regarding claim 8, Sokka discloses that one or more functional groups are attached to the processed fibers in the first set of processed fibers and/or the second set of processed fibers (the fibrillated fibers are cellulosic and lignocellulosic fibers; see [0051]; cellulosic fibers inherently possess hydroxyl (-OH) functional groups on the fiber surface).
Regarding claim 9, Sokka discloses that the processed fibers in the first set of processed fibers and/or the second set of processed fibers are treated or blended with one or more functional additives or fillers prior to mat formation (the fibrillated fibers are bonded with an adhesive resin selected from phenol-formaldehyde, melamine-formaldehyde, urea-formaldehyde, polyurethane, and lignin-based resins; see [0055]; the adhesive resin is applied to or mixed with the fibers prior to stacking; see [0048] and [0056]-[0057]).
Claims 11 and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sokka, as applied to claim 1 above, as evidenced by US 2019/0136015 (“Barzegari”).
Regarding claim 11, Sokka discloses that the processed fibers in the first set of processed fibers and/or the second set of processed fibers are 4 mm or less in length, with a width or diameter of 200 µm or less (Sokka teaches that the fibrillated fibers can be obtained from hardwood species, including birch, aspen, and eucalyptus; see [0054]). Hardwood fibers have average dimensions of 1 mm in length and 20 µm in diameter (see [0025] of Barzegari).
Regarding claim 12, Sokka discloses that the processed fibers in the first set of processed fibers and/or the second set of processed fibers are 1 mm or less in length, with a width or diameter of 55 µm or less. As discussed in the rejection of claim 11, hardwood fibers as contemplated by Sokka (see [0054]) have average dimensions of 1 mm in length and 20 µm in diameter, as evidenced by Barzegari (see [0025]). A fiber length of 1 mm is within the claimed range of “1 mm or less”.
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.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Sokka, as applied to claim 1 above, and further in view of US 5,470,631 (“Lindquist”) (cited in an IDS).
Regarding claim 10, Sokka does not explicitly disclose that the strands are treated or blended with one or more functional additives or fillers prior to mat formation.
Lindquist is directed to an oriented strand board-fiberboard composite structure and method of making the same (see the title and abstract). Lindquist teaches that the wood strands are bonded with a resin selected from phenol formaldehyde resin and polydiphenylmethyl diisocyanate resin, added to the strands in an amount of about 2% to about 10% by weight of the dry weight of strands (see claim 5). Lindquist further teaches sizing the strands with a hydrocarbon wax selected from paraffinic wax, microcrystalline wax, and mixtures thereof in an amount of about 0.5% to about 2% by weight of the dry weight of the wood strands (see claim 7).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have treated or blended the wood strands of Sokka with resin and wax prior to mat formation, as taught by Lindquist, since these are standard pre-treatments in the manufacture of wood strand composites to achieve bonding between strands and moisture resistance in the finished product. See MPEP 2143(I)(A) (combining prior art elements according to known methods to yield predictable results).
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1, 6, and 8-10 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1 and 4-7 of copending Application No. 19/260,466 (“the reference application”).
Regarding claim 1 of the present application, see claim 1 of the reference application.
Regarding claim 6 of the present application, see claim 4 of the reference application.
Regarding claim 8 of the present application, see claim 5 of the reference application.
Regarding claim 9 of the present application, see claim 6 of the reference application.
Regarding claim 10 of the present application, see claim 7 of the reference application.
This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-6 and 8-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 4-7, and 10 of copending Application No. 19/260,466 (“the reference application”).
Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding claim 1 of the present application, claim 1 of the reference application discloses all of the limitations of claim 1.
Regarding claims 2-5 of the present application, see claim 2 of the reference application.
Regarding claim 6 of the present application, see claim 4 of the reference application.
Regarding claim 8 of the present application, see claim 5 of the reference application.
Regarding claim 9 of the present application, see claim 6 of the reference application.
Regarding claim 10 of the present application, see claim 7 of the reference application.
Regarding claims 11 and 12 of the present application, claim 10 of the reference application recites that the processed fibers may comprise “cellulose microfibrils”, “cellulose nanocrystals”, and/or “cellulose nano-whiskers”. Such fibers inherently have dimensions within the ranges recited in claims 11 and 12 of the present application. Notably, cellulose nano-whiskers have nanoscale dimensions.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 2, and 4 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6, and 16 of copending Application No. 18/657,562 (“the ’562 application”).
Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding claim 1 of the present application, claim 1 of the ’562 application discloses a method for producing a fiber-reinforced wood composite panel comprising forming a strand mat with two or more strand layers, each comprising a plurality of wood strands; adding a fiber reinforcement layer within the strand mat between two adjacent strand layers; and applying pressure and heat by a press to form a fiber-reinforced wood composite board. Claim 6 of the ’562 application further discloses adding a second fiber reinforcement layer within the strand mat between two adjacent strand layers, in a different location from the first. Claim 16 of the ’562 application discloses a product structure comprising a bottom strand layer, a core strand layer, and a top strand layer, with a first fiber reinforcement layer between the core strand layer and the top strand layer, and a second fiber reinforcement layer between the core strand layer and the bottom strand layer.
This structure (bottom strand layer / fiber reinforcement layer / core strand layer / fiber reinforcement layer / top strand layer) contains, within the overall layered structure, a three-layer subsequence of fiber / strand / fiber. As discussed in the Claim Interpretation section, the terms “bottom” and “top” in claim 1 of the present application specify formation order and relative position, not that the fiber layers must be the outermost exterior surfaces of the final product. Accordingly, in the structure of claims 6 and 16 of the ’562 application, the lower fiber reinforcement layer reads on the “bottom fiber layer” of the present application, the core strand layer reads on the “core strand layer”, and the upper fiber reinforcement layer reads on the “top fiber layer”.
The fiber reinforcement layer of claim 1 of the ’562 application comprises one or more of a plurality of fibers, fiberglass, and a carbon fiber mat. A carbon fiber mat constitutes anti-settling fibers under the broadest reasonable interpretation discussed in the Claim Interpretation section since a carbon fiber mat is a woven or mesh fiber structure that resists settling of constituent fibers within the layer. Also note claims 2 and 3 of the ’562 application.
Regarding claims 2 and 4 of the present application, claim 1 of the ’562 application recites that the fiber reinforcement layer comprises fiberglass and/or a carbon fiber mat. Fiberglass and carbon fiber are synthetic fibers.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Specifically, see the abstract of EP 1 136 636 (“Bitzi”), the abstract of US 5,951,795 (“Calvé”), the abstract of US 3,447,996 (“Himmelheber”), and column 1, lines 15-22 of US 3,308,013 (“Bryant”).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to John DeRusso whose telephone number is (571)270-1287. The examiner can normally be reached Monday-Friday, 10:00 AM-6:00 PM ET.
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, Sam Zhao, can be reached at (571) 270-5343. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/John J DeRusso/Primary Examiner, Art Unit 1744