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 Rejections - 35 USC § 102
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 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, 9, 13, & 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jonny Builds (Jonny Builds, How to Burn & Stain Wood Aka Shou Sugi Ban, web/20210301175339/https://www.instructables.com/workshop, 3/1/2021; hereafter Jonny Builds).
Claim 1: Jonny Builds is directed is directed towards a method of coating wood after performing a burn treatment (i.e. a method of coating a bio insulated panel, see title, the Examiner notes that Shou Sugi Ban refers to a centuries old Japanese technique for preserving wood by charring its surface, pgs 1-2), the method comprising:
milling one or more surfaces of a non-coated bio insulated panel resulting in surface fibers (see the pine boards which read on a non-coated bio insulated board which has been milled and resulting in surface fibers, see pgs 2-3 and pictures on pg 2);
flame treating the milled panel surface to burn the surface fibers and heat the milled panel surface to dry the panel surface (Step 1, Burn it, pgs 2-3); and
coating the milled panel surface while it is dry (Step 3: Stain It! and Step 4: Sanding & Finish, pgs 4-5).
Claim 2: The wood has been milled, see pictures of the pine boards on pg 5 which have a bullnose (i.e. milling) as well as sawn.]
Claim 9: The coating occurs in multiple passes along the milled panel (see Step 3: Bullets 1 & 2, pg 4).
Claim 13: The surface is coated with a stain followed by wipe on poly (i.e. painting the coated surface, see Bullet 4, pg 5).
Alternatively, Jonny Builds teaches brushing on the stain, wiping it off and applying more or less stain as desired (i.e. at least 2 coats of the stain, see pg 4).
Claim 14: Jonny Builds teaches applying at least 2 coats of the stain in step 3. Though Jonny Builds does not explicitly teach that the second coat of the stain is applied prior to first stain coat fully cures it is apparent that the second coat is applied on the first coat as depicted in the top right image on page 4.
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.
Claims 3-5 & 10-12 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Jonny Builds.
Claim 3: Jonny Builds discloses using a propane torch (see pgs 2-3).
Jonny Build does not a specific temperature for the flame (the same fuel taught by applicant for the flame).
Jonny Builds teaches the claimed invention but fails to explicitly teach the propane fuel burns at the claimed temperature. Since the same fuel is used to produce the flame, it is reasonable to presume the same flame temperature will be obtained. Support for said presumption is found in the use of like materials and like processes which would result in the claimed property.
The burden is upon the Applicant to prove otherwise. In re Fitzgerald 205 USPQ 594. In addition, the presently claimed properties would obviously have been present once the product is provided. Note In re Best, 195 USPQ at 433, footnote 4 (CCPA 1977).
Alternatively, the temperature of the flame is a result effective variable based on the desired exposure temperature and degree of burning.
It would have been obvious to one of ordinary skill in the art at the time of filing to optimize the flame temperature to obtain the desired exposure temperature and degree of burning because it is prima facie obvious to optimize result effective variables.
"Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." See MPEP 2144.05(II)(B).
Claim 4: Jonny Builds discloses using a propane torch on wood (see pgs 2-3).
Jonny Build does not a specific temperature for the flame (the same fuel taught by applicant for the flame).
Jonny Builds teaches the claimed invention but fails to explicitly teach the propane flame heats the wood surface to 212-450F. Since the same fuel is used to produce the flame and used to heat the same material, it is reasonable to presume the same treatment temperature will be obtained. Support for said presumption is found in the use of like materials and like processes which would result in the claimed property.
The burden is upon the Applicant to prove otherwise. In re Fitzgerald 205 USPQ 594. In addition, the presently claimed properties would obviously have been present once the product is provided. Note In re Best, 195 USPQ at 433, footnote 4 (CCPA 1977).
Alternatively, the flame treatment temperature of the surface is a result effective variable based on the desired degree of char on the surface.
It would have been obvious to one of ordinary skill in the art at the time of filing to optimize the flame treatment temperature of the surface to obtain the desired degree of char on the surface because it is prima facie obvious to optimize result effective variables to obtain desired results.
"Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." See MPEP 2144.05(II)(B).
Claim 5: Jonny Builds teaches moving the torch relative to the wood (see pg 2).
Jonny Builds does not teach a rate of movement for the torch or that the wood is moved relative to the flame.
The rate of movement of the torch relative to the wood is a result effective variable based on the desired amount of exposure and char.
It would have been obvious to one of ordinary skill in the art at the time of filing to optimize the rate of movement of the torch relative to the wood to obtain the desired degree of char on the surface because it is prima facie obvious to optimize result effective variables to obtain desired results.
"Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." See MPEP 2144.05(II)(B).
It would have been obvious to one of ordinary skill in the art at the time of filing to move the wood relative to the flame instead of the flame relative to the wood because it is prima facie obvious to switch the movement of two parts that are moved relative to each other. See MPEP 2144.04(IV)(C).
Claim 10: Jonny Builds teaches waiting for the wood to cool and then stain (see pg 3).
Jonny Build does not teach a time period for the cooling period prior to staining.
However, Jonny Builds teaches that the amount of heat put into the wood is a result effective variable based on the effect/appearance (see pgs 2-3) and the cooling time is based on the amount of heat put into the wood.
Therefore, the cooling time and thus time between burning and coating is a result effective variable based on the desired appearance produced and thus it would have been obvious to one of ordinary skill in the art at the time of filing to optimize the time between burning and coating because it is prima facie obvious to optimize result effective variables.
Claim 11: Jonny Build teaches applying more or less stain based on desired results (see pg 4).
Jonny Builds does not teach a specific stain thickness.
However, given that the amount of stain (i.e. thickness) is based on the desired results it is apparent that the stain thickness is a result effective variable based on desired results and it is prima facie obvious to optimize a result effective variable to obtain a desired result.
Claim 12: Jonny Build teaches applying more or less stain based on desired results (see pg 4).
Jonny Builds does not teach a specific stain thickness.
However, given that the amount of stain (i.e. thickness) is based on the desired results it is apparent that the stain thickness is a result effective variable based on desired results and it is prima facie obvious to optimize a result effective variable to obtain a desired result.
Claims 6 & 7 are rejected under 35 U.S.C. 103 as being unpatentable over Jonny Builds as applied above, and further in view of Pfau et al. (US PG Pub 2011/0223411; hereafter ‘411).
Claims 6 & 7: As discussed above, Jonny Builds teaches coating includes applying a stain and a polyurethane (see pgs 4-5).
Jonny Builds does not teach that coating includes using a two-part polyurea.
However, ‘411, which is directed towards coatings for wood substrates (title, abstract, & ¶ 20) teaches that polyurethane and two-part polyurea are suitable alternatives for sealing wood substrates (¶ 30).
It would have been obvious to one of ordinary skill in the art at the time of filing to substitute two-part polyurea for polyurethane in the process of Jonny Builds because they are art recognized alternatives and it is prima facie obvious to substitute known alternatives for the same purpose.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Jonny Builds in view of ‘411 as applied above, and further in view of Larson et al. (US PG Pub 2010/0247904; hereafter ‘904).
Claim 8: As discussed above, the combination of Jonny Builds and ‘411 teach using a two-part polyurea and the final coat.
The combination does not teach applying the coating at a pressure of 1500-3000 psi and a temperature of 50-400ºF.
However, ‘904, which is directed towards two-part polyurea coatings (title & abstract) teaches that is known in the art to apply two-part polyurea coatings with a spray coating apparatus at a pressure of 2600psi and a temperature of 175ºF (¶s 23-25).
It would have been obvious to one of ordinary skill in the art at the time of filing to use a spray coating apparatus at a pressure of 2600 psi and a temperature of 175ºF during the process of Jonny Builds and ‘411 because spraying at 2600 psi and 175ºF are art recognized process conditions when spraying two-part polyurea and would have predictably produced the desired coatings.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES M MELLOTT whose telephone number is (571)270-3593. The examiner can normally be reached 8:30AM-4:30PM CST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Curtis Mayes can be reached at 571-272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/James M Mellott/ Primary Examiner, Art Unit 1759