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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 4/29/2026 has been entered.
The objections and prior art rejections are maintained or modified as follows:
Specification
Claim Objections
Claim 18 is objected to as the form of the claim is improper. Where a claim sets forth a plurality of elements or steps, as in the instant claims, each element or step should be separated by a line indentation. See MPEP 608.01(m) and 37 CFR 1.75(i).
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 of this title, 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.
Claims 1-2, 8, 16, 18, 21-22 and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Jones (US 819,889) in view of Brown (US 5,078,274).
Jones (fig. 1-4) teaches a system and method for screening a wood-based feedstock comprising bark to recover wood particles included in the wood-based feedstock comprising:
(re: certain elements of claim 18) at least one first screening device for separating the wood particles from the bark particles to form a wood stream and a screened wood-based feedstock comprising bark (fig. 1 showing system for screening wood chips comprising multiple screening stages with screens 14, 15, 16, 17; p. 1, ln. 8-90 teaching system of screening mass of chips and fragments—including bark, knot-wood and clear wood chips produced from chipping a log—to generate wood streams to be used in production of paper products; p. 2, ln. 20-90 and p. 3, ln. 35-53 teaching various outlets for screening/separating stages wherein some streams can be combined for subsequent processing);
and a second screening device for screening the screened wood-based feedstock comprising bark to form a second wood stream and a second screened wood-based feedstock comprising bark, and wherein the second screening device arranged after or below the first screening device is a disc screen, a slot screen, or a plate screen with rods arranged to have a slot size adjusted according to the thickness of the bark in the wood-based feedstock (p. 1, ln. 99-p. 2, ln. 70 teaching a top first screen 14 composed of circular holes 200, wherein bark stream from outlet 21 can be re-directed back to chipping apparatus and wood stream continues on to second screening stage near 15).
Further, Applicant is respectfully reminded that claim language consisting of functional language and/or intended use phrasing is given little, if any, patentable weight as the apparatus must merely be capable of functioning, or being used, as claimed. See MPEP 2111.04 (stating that claim scope may not be limited by claim language, such as “wherein” clauses, that do not limit a claim to a particular structure), 2114 (stating that manner of operating a device does not differentiate device claims from the prior art). Moreover, Applicant is reminded that the patentability of apparatus claims must depend upon structural limitations, not mere statements of functions. See Galland-Henning Manufacturing Company et al. v. Dempster Brothers, Inc., 165 USPQ 688 (E.D. Tenn. 1970). Here, the device cited above is certainly capable of-
(re: certain elements of claim 18) wherein the wood-based feedstock comprising bark is formed by debarking a wood-based raw material to form a wood-based feedstock comprising bark and debarked wood-based raw material (p. 1, ln. 8-90 teaching system of screening mass of chips and fragments—including bark).
Jones further teaches-
(re: claim 21) wherein the system comprises at least one screening device with openings adjusted to approximately 120% of the largest dimension of the bark particles of the wood-based raw material for separating the bark particles from the wood particles (p. 1, ln. 99-p. 2, ln. 70 teaching screening feed stock produced from chipping of log, wherein screening openings at various stages are specifically configured to screen wood chip and bark particles of various dimensions, wherein openings can be regarded as approximately 120% of bark particles and Applicant is respectfully reminded that the material or article worked upon by the apparatus does not limit apparatus claims, see MPEP 2115);
(re: claim 22) wherein the wood-based feedstock is formed in the debarking of wood-based raw material comprising logs, stumps, blocks, branches, or any combinations thereof (Id.).
(re: claims 1-2, 8, 9, 14) The claimed method steps are performed in the normal operation of the combined device described below.
Jones further teaches-
(re: claim 16) a product comprising wood particles produced by the method of claim 1 (p. 1, ln. 8+ teaching use of wood streams to produce various sulfite pulps used in paper industry or as fuel).
Jones as set forth above teaches all that is claimed except for expressly teaching
(re: certain elements of claim 18) wherein the first screening device comprises a screen with holes with a size of 40 -50 mm;
(re: claim 26) wherein the first screening means is a plate screen with holes with a size of approximately 45 mm.
Here, it is noted that Jones as cited above already teaches that the chipper produces chips/bark fragments of various sizes and that the screening stages can use hole, slotted or wire screens configured to the desired screening size.
Brown further teaches that it is well-known in the wood chip sizing arts
(re: claim 18 and related method claims)
to configure a first screening device with holes with a size range of 40-50 mm to better control the flow of wood chips in the screening system and to reduce burden on subsequent screening stages (fig. 5 showing system with initial plate screen with holes; col. 3, ln. 40- col. 4, ln. 60 teaching that initial flow management screen reduces burden on upstream screening elements; col. 6, ln. 10-45, col. 8, ln. 25-50 and col. 10, ln. 30-48 teaching that initial screen functions as a flow management screen and can be set in size range near 45 mm, wherein acceptable flow rate and screen sizing may vary based on pulping mill and quality of desired product, i.e., what type of flow is acceptable).
It would thus be obvious to one with ordinary skill in the art to modify the base reference with these prior art teachings—with a reasonable expectation of success—to arrive at the claimed invention. The rationale for this obviousness determination can be found in the prior art as cited above. Further, the prior art discussed and cited demonstrates the level of sophistication of one with ordinary skill in the art and that these modifications are predictable variations that would be within this skill level. Therefore, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to modify the invention of Jones for the reasons set forth above.
Claims 6, 10-13 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Jones and Brown (“Jones et al.”) as applied to the claims above, and further in view of Sung et al. (“Sung”)(KR 101996187)(with text citations to English translation previously attached) and legal precedent.
Jones et al. as set forth above teach all that is claimed except for expressly teaching
(re: claim 6) wherein the screened wood-based feedstock comprising bark comprises at least 95 weight-% of bark particles from the wood-based feedstock comprising bark;
(re: claim 10) wherein the length of the logs is 0.5-8 m;
(re: claim 11) wherein the recovered wood particles are oversize wood chips and/or overthick wood chips as specified by SCAN-CM 40:01;
(re: claim 12) wherein the bark particles are large accept chips, small accept chips, pin chips, and/or fines as specified by SCAN-CM 40:01;
(re: claim 13) wherein the recovered wood particles comprise bark in an amount of less than 5 weight-% of the recovered wood particles after separation from the bark particles; and
(re: claim 15) wherein debarker is a knife, a drum or a rotary debarker.
Sung, however, teaches that it is well-known in the wood chip processing arts
(re: claim 15)
to use a debarker with a rotating and cutting elements ( p. 1) as logs from forests are needed for a variety of purposes, including pulpwood, lumber and fuel chips, and—moreover-- that the end purpose partly depends on the type, size and quality of the logs, wherein it is well-known to use multiple screening and reducing techniques during processing—e.g., cutting, sawing, splitting crushing—and that the configuration of the screening openings may be application dependent (p. 2-5).
Indeed, the claimed features relating to
(re: claims 6 and 10-13)
- the specific screen type and sizing as well as the composition of the feed stock, log, recovered wood particles and/or bark particles can be regarded as common design parameters/operating variables controlled by the design incentives and/or economic considerations involved in this type of subject matter. This is especially applicable in the pulp producing arts—as taught by Sung above--as the type of desired output stream and the available inputs controls variations in the specific device dimensions, features and/or screening steps. Moreover, legal precedent teaches that variations in these type of common design parameters/operating variables are obvious and are the mere optimization of result-effective variables that would be known to one with ordinary skill in the art. See MPEP 2144.05 I.II (teaching ample motivation to optimize or modify result-effective variables based on “design need(s)” or “market demand”); see also MPEP 2144.04.IV (teaching that changes in size, proportion or shape of known elements are obvious); 2144.04.V.D. and VI (teaching that the mere rearrangement or duplication of known elements, or making known elements adjustable, is not a patentable advance).
It would thus be obvious to one with ordinary skill in the art to modify the combination of references with these prior art teachings—with a reasonable expectation of success—to arrive at the claimed invention as these modifications are already well-known and commonly implemented in the separating arts. The rationale for this obviousness determination can be found in the prior art itself as cited above and in legal precedent as described above.
Further, the prior art discussed and cited demonstrates the level of sophistication of one with ordinary skill in the art and that these modifications are predictable variations that would be within this skill level. Therefore, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to modify the invention of Jones et al. for the reasons set forth above.
Response to Arguments
Applicant’s arguments that the prior art fails to teach the amended claim features are unpersuasive in view of the reformulated prior art rejection set forth above. In particular, Brown as cited above expressly teaches that it is well-known to configure an initial screening element in the claimed size range. Moreover, the prior cited art of record makes it clear the opening size of a screening elements are well-known design parameters and are an unlikely basis to achieve patentability. Consequently, as a reasonable interpretation of the prior art undermines Applicant’s amendments and arguments, the claims stand rejected.
Conclusion
Any references not explicitly discussed but made of record during the prosecution of the instant application are considered helpful in understanding and establishing the state of the prior art and are thus relevant to the prosecution of the instant application.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH C RODRIGUEZ whose telephone number is 571-272-3692 (M-F, 9 am – 6 pm, PST). The Supervisory Examiner is MICHAEL MCCULLOUGH, 571-272-7805. The Official fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Alternatively, to contact the examiner, send an E-mail communication to Joseph.Rodriguez@uspto.gov. Such E-mail communication should be in accordance with provisions of the MPEP (see e.g., 502.03 & 713.04; see also Patent Internet Usage Policy Article 5). E-mail communication must begin with a statement authorizing the E-mail communication and acknowledging that such communication is not secure and may be made of record. Please note that any communications with regards to the merits of an application will be made of record. A suggested format for such authorization is as follows: "Recognizing that Internet communications are not secure, I hereby authorize the USPTO to communicate with me concerning any subject matter of this application by electronic mail. I understand that a copy of these communications will be made of record in the application file”.
Information regarding the status of an application may also be obtained from the Patent Center: https://patentcenter.uspto.gov/
/JOSEPH C RODRIGUEZ/Primary Examiner, Art Unit 3655
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August 26, 2026
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