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 .
Final Rejection
Applicant's arguments filed 11/12/2025 have been fully considered but they are not persuasive for reasons detailed below.
The 35 U.S.C. 112 rejections are maintained or modified as follows:
These rejections have been withdrawn.
The prior art rejections are maintained or modified as follows:
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 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; or
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-2, 7-9, 14-16, 18, 21-22 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jones (US 819,889).
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: claim 18) at least one first screening
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 of 1 1/8 in and second screen 15 below said top screen including elongated slots 210—preferable 3 1/4 in long and 5/8 in wide, 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, 7-9, 14-15) The claimed method steps are performed in the normal operation of the device described above.
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).
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 6, 10-13, 23 and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Jones (US 819,889) in view of Sung et al. (“Sung”)(KR 101996187)(with text citations to English translation previously attached) and legal precedent.
Jones as set forth above teaches 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;
(re: claim 23) wherein the first screening device comprises a screen with a hole size of 40 mm-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.
Sung further teaches that logs from forests are processed for a variety of purposes, including pulpwood, lumber and fuel chips, and 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 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 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 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 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 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, Examiner disagrees that Jones fails to teach two screening steps for separating bark as Jones as cited above expressly teaches multiple screening stages/steps for screening a mass of wood chips and fragments—including bark. Applicant’s argument that Jones focuses on separating bark and wood based on differences in specific gravity is also undermined by a reasonable interpretation of the prior art. Indeed, Jones as cited above expressly teaches the type of screening stages claimed by Applicant, thus it is unclear why Jones would also not function to separate bark and produce the wood streams as claimed (p. 1, ln. 99-p. 2, ln. 70 teaching a top first screen 14 composed of circular holes 200 of 1 1/8 in and second screen 15 below said top screen including elongated slots 210—preferable 3 1/4 in long and 5/8 in wide, 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). Applicant’s further argument regarding Sung is also misplaced as Sung is simply relied on to teach that logs from forests are processed for a variety of purposes and that it is well-known to use multiple screening and reducing techniques during processing as well as configure the specific screening openings based in the desired application. Consequently, as a reasonable interpretation of the prior art undermines Applicant’s amendments and arguments, the claims stand rejected.
Examiner has maintained the prior art rejections, statutory rejections and drawing objections as previously stated and as modified above. Applicant's amendment necessitated any new grounds of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a). The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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 extension fee 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 date of this final action.
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.
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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January 28, 2026