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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on July 20, 2026 has been entered.
Status of the Claims
By amendment filed July 20, 2026, claims 1 and 3 have been amended. Claims 12 through 15 were previously withdrawn.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 July 20, 2026, with respect to the rejections of claims by de Jong under 102 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 Therefore, the rejection has been withdrawn.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 new prior art necessitated by the amendments to the claims. As will be discussed further within this Office Action, Gosselink (U.S. Patent Publication No. 2015/0111056) teaches a method for modifying wood by impregnating the wood with an aqueous composition comprising polymerizable HMF and was not prepared by the addition of humins.
Furthermore, the new limitation that the 5-HMF-resinification solution is prepared without addition of humins fails to comply with the written description requirement. The mere absence of a positive recitation is not basis for an exclusion. However, a lack of literal basis in the specification for a negative limitation may not be sufficient to establish a prima facie case for lack of descriptive support. Ex parte Parks, 30 USPQ2d 1234, 1236 (Bd. Pat. App. & Inter. 1993). "Rather, as with positive limitations, the disclosure must only 'reasonably convey[] to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.' ... While silence will not generally suffice to support a negative claim limitation, there may be circumstances in which it can be established that a skilled artisan would understand a negative limitation to necessarily be present in a disclosure." Novartis Pharms. Corp. v. Accord Healthcare, Inc., 38 F.4th 1013, 2022 USPQ2d 569 (Fed. Cir. 2022). See MPEP section 2173.05(i). None of the cited sections of the specification would have reasonably conveyed to one of ordinary skill that humins should not be added to the claimed solution.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 3-10 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 1 requires that the resinification solution is prepared without the addition of humins. This limitation is not supported by the specification as originally filed and therefore fails to comply with the written description requirement.
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 4-8 are rejected under 35 U.S.C. 103 as being unpatentable over Gosselink et al (U.S. Patent Publication No. 2015/0111056).
In the case of claim 1, Gosselink teaches a method for producing modified lignocellulosic material/wooden material wherein the lignocellulosic material was impregnated with a composition comprising pyrolysis oil, a polymerizable furan compound and a catalyst for polymerization of the furan compound followed by curing the impregnated material (Abstract, Page 1 Paragraphs 0013-0015 and Page 2 Paragraph 0029).
Gosselink teaches that the solvent/pyrolysis oil for the composition was an aqueous medium because it comprised water (Page 2 bottom of Paragraph 0020). Gosselink further teaches that the catalyst/accelerant for polymerization included inorganic salts and organic acids (Page 2 Paragraph 00260. Furthermore, Gosselink teaches that the polymerizable furan compound included hydroxymethylfurfural (Page 2 Paragraph 0024) which was present in in the compound in the amount of 10 to 40 wt% (Page 2 Paragraph 0025), which overlapped with the claimed range of 20 to 50 wt%. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See section 2144.05.I of the MPEP.
Furthermore, Gosselink does not teach that humins were added to the compound.
As for claim 5, Gosselink teaches that the catalyst included maleic acid and citric acid (Page 2 Paragraph 0026), which fall within the groups required by the claims.
As for claims 4 and 6, Gosselink teaches that the catalyst, which included inorganic salts such as ammonium salt and organic acids, was present in the concentration of 3 to 20 wt% of the furan compound (Page 2 Paragraph 0026), which would have overlapped with the claimed range and as was discussed previously overlapping ranges are prima facie obvious.
As for claim 7, Gosselink teaches that the impregnation was conducted at sub-atmospheric pressure (Page 3 Paragraph 0033).
As for claim 8, Gosselink teaches that the curing/polymerization was conducted at a temperature in the range of 100 to 180 ℃ (Page 3 Paragraph 0036), which was within the claimed range.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over de Gosselink 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 Gosselink as it applies to claim 1 have been discussed previously and are incorporated herein.
In the case of claim 3, though Gosselink teaches that the catalyst comprised chlorides, sulphates and ammonium salts Gosselink does not teach that the catalyst 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.
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 used ammonium chloride, ammonium sulfate, magnesium chloride or magnesium sulfate as catalysts because these were all known chloride and sulphate catalysts in the art for polymerizing a furan compound.
Claims 9 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Gosselink 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 Gosselink as it applies to claim 1 have been discussed previously and are incorporated herein.
In the case of claim 10, Gosselink does not teach that the wooden material treated by the taught method was a coniferous material, a cedar material or a cypress material. However, Gosselink does teach that the wood treated by the taught method included any wood material used to forming furniture, flooring and building materials (Pages 2-3 Paragraphs 0029 and 0031).
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 coniferous/pine, cedars and cypress woods which were used to form furniture, flooring and building materials (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 Gosselink on either pine/coniferous, cedar or cypresses wood materials because these were known types of wood material in the art to be modified with furfural compounds.
Conclusion
Claims 1 and 3 through 10 have been rejected. Claims 12 through 15 were previously withdrawn. No claims were allowed.
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
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