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 .
Status of the Claims
By amendment filed January 24, 2026, claim 1 has been amended and claims 2 and 11 have been cancelled. Claims 12 through 15 were previously withdrawn. Claims 1, 3 through 10 and 12 through 15 are currently pending.
Response to Arguments
Applicant’s arguments, filed January 24, 2026, with respect to the rejection(s) of the claim(s) under 102(a)(1) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of the previously cited reference, de Jong (U.S. Patent # 9,896,543), as the claims are still obvious in view of the cited prior art of record. As was discussed in the previous Office Action, de Jong taught a method for modifying wood wherein the wood was impregnated with an aqueous solution comprising 5-hydroxymethylfurfural (5-HMF) and an organic acid which initiated/accelerated the polymerization of the 5-HMF after impregnation. De Jong does not teach that the 5-HMF was present in the amount of 20 to 50 wt% of the solution but this range would have been obvious. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here 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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP section 2144.05.II.A.
Applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references. Applicant does not provide any evidence that the claimed 5-HMF range would have produced unexpected results over the prior art and was therefore critical. Furthermore, applicant has not cited any limitation within the claims which is not taught or suggested by de Jong. Instead, applicant just speculates that the composition of de Jong which comprised components that are not claimed would not have been able to impregnate wood and would have produced inferior results to the claimed invention.
In response to applicant's argument that de Jong comprised components note required by the claims, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
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 1 and 5-9 are rejected under 35 U.S.C. 103 as being unpatentable over de Jong et al (U.S. Patent # 9,896,543).
In the case of claim 1, de Jong teaches a method for modifying wooden material by impregnating the wooden material with a polymerizable composition (Abstract and Column 1 Lines 15-20). The composition of de Jong comprised a first component comprising 5-hydroxymethylfurfural (5-HMF) (Column 4 Lines 14-37) and a second component comprising an organic acid which initiated/accelerated the polymerization of the first component (Column 3 Lines 41-67). De Jong further teaches that the composition comprised water as a diluent (Column 4 Line 62 through Column 5 Line 10). The method of de Jong comprised impregnating the wooden material/object with the composition followed by curing/polymerizing the composition by heating (Column 3 Lines 52-54 and Column 7 Line 51 through Column 8 Line 4).
De Jong does not specifically teach that the 5-HMF was present in the solution/composition in the concentration of 20 to 50% by weight (not inclusive of 50% by weight). However, section 2144.05.II.A of the MPEP states, generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here 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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
Furthermore, de Jong teaches that the amount of additional monomer-5-HMF was a relevant process parameter affecting the properties of the polymerized composition (Column 4 Lines 19-37).
Therefore, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have determined optimal concentrations for the 5-HMF of the composition/solution of de Jong through routine experimentation because the amount of 5-HMF affected the properties of the polymerized composition.
As for claim 5, de Jong teaches that the organic acids included maleic acid and citric acid (Column 3 Lines 63-67), which fall with the groups required by the claim.
As for claim 6, as was discussed previously, the composition of de Jong comprised an organic acid to accelerate/imitate the polymerization. However, de Jong does not specifically teach that the organic acid was present in the amount of 0.001 to 0.1 mol with respect to 1 mol of 5-HMF.
Furthermore, as was discussed previously, it would have been obvious to have determined optimal ranges for relevant process parameters and de Jong further teaches that the acidic initiator/organic acid should be present in a suitable amount to completely and quickly polymerize the monomers (Column 4 Lines 1-6).
Therefore, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have determined optimal concentrations for the organic acid/acidic initiator of de Jong through routine experimentation because the amount of organic acid affected the rate and degree of polymerization.
As for claim 7, de Jong teaches that the impregnation was conducted in a vacuum (Column 7 Line 62 through Column 8 Line 4) and therefore under a reduced pressure of less than the atmospheric pressure.
As for claim 8, de Jong teaches that the curing/polymerization of step 2) was conducted at 40 to 180 ℃ (Column 8 Lines 5-11), which was within the required range.
As for claim 9, de Jong teaches that the wood material included coniferous material including spruce (Column 8 Lines 17-25).
Claims 3 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over de Jong et al as applied to claim 1 above, and further in view of Van Rhijn et al (U.S. Patent # 8,158,206).
The teachings of de Jong as it applies to claim 1 have been discussed previously and are incorporated herein.
In the case of claims 3 and 4, though de Jong teaches that the resinification solution/initiator comprised inorganic compounds (Column 3 Lines 58-67) de Jong does not teach that the initiator was an inorganic salt, specifically one that had an anion of a chloride ion and/or sulfate ion and a cation of an ammonium ion, a magnesium ion and/or a hydrogen ion. However, as was discussed previously in the rejection of claim 5, de Jong taught that the initiators included organic acids such as maleic acid and citric acid.
Van Rhijn teaches a method for modifying wood by impregnating the wood with a polymerizable furan compound (Abstract and Column 1 Lines 15-24) wherein the curing/polymerization of the furan compound was initiated/accelerated with inorganic salts in the form of ammonium chloride, ammonium sulfate, magnesium chloride and magnesium sulfate and organic acids in the form of maleic acid and citric acid (Column 20 Line 49 through Column 21 Line 5).
Based on the teachings of Van Rhijn, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have substituted the maleic acid or citric acid initiators of de Jong with ammonium chloride, ammonium sulfate, magnesium chloride or magnesium sulfate because these were all known compounds in the art for initiating/accelerating the polymerization of furan compounds.
Furthermore, neither de Jong nor Van Rhijn teaches that the inorganic salt was present in the amount of 0.001 to 0.1 mol with respect to 1 mol of the 5-HMF but as was discussed in the rejection of claim 6 it would have been obvious to have determined an optimal concentration range for the initiator through routine experimentation because the concentration of the initiator affected the speed and degree of polymerization.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over de Jong et al as applied to claim 1 above, and further in view of Taguchi et al (U.S. Patent # 4,585,703).
The teachings of de Jong as it applies to claim 1 have been discussed previously and are incorporated herein.
In the case of claim 10, de Jong does not teach that the wooden material treated by the taught method was a cedar material or a cypress material. However, de Jong does teach that the wood treated by the taught method included any woody material including beech (Column 8 Lines 17-25).
Taguchi teaches a method for modifying a wooden material by impregnating the wood with a polymer composition wherein the polymer composition comprised furfural resins in order to improve the protection of the wood (Abstract and Column 1 Lines 5-14 and 40-49 and Column 2 Lines 6-7). Taguchi teaches that the types of wood treated by the taught method included beech, cedars and cypress woods (Column 9 Lines 31-40).
Based on the teachings of Taguchi, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to performed the modification process of de Jong on either cedar or cypresses wood materials because it was known in the art to modify these woods with furfural compounds.
Conclusion
Claims 1 and 3 through 10 have been rejected. Claims 12 through 15 were previously withdrawn. No claims were allowed.
THIS ACTION IS MADE FINAL. 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.
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