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 .
DETAILED ACTION
Election/Restrictions
Applicant’s election without traverse of Group I, Species A, in the reply filed on 5/27/26 is acknowledged. Claims 37-38 and 51-52 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim.
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.
(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.
Claim(s) 33-36 and 39-49 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Pervan et al. (US 2013/0189534).
As to claim 33 and 36, Pervan discloses a method to produce a building panel, comprising providing a core 6, applying a thermosetting adhesive binder 19/6a (para 65-67, 72) on a first surface of the core, applying refined (para 11) lignocellulosic fibres 14 on the first layer (para 65, fig 2e), applying a wood veneer layer 5 (para 78) above the lignocellulosic fibres (para 34), applying pressure to the core, the first layer, the lignocellulosic fibres, and the wood veneer layer to form a building panel (para 11, 34, 51-78, figs 2a-2e; 3a-4b).
As to claims 34-35, Pervan discloses the adhesive is applied in liquid form, which can be an aqueous solution (para 74).
As to claim 39, Pervan discloses adhesive is applied in an amount of 50-300 g/m2 (pra 74)
As to claim 40, Pervan discloses during applying pressure, the adhesive at least partly permeates the wood veneer layer (para 72, fig 2e)
As to claims 41-44, Pervan discloses the method further comprising applying a resin impregnated overlay decorative paper layer 10 on the refined lignocellulosic fibres prior to applying the wood veneer layer and prior to applying pressure (para 37-40, 46-47, 78, 87, 91-92) .
As to claim 45, Pervan discloses the method wherein the refined lignocellulosic fibres are resinated refined lignocellulosic fibres (fiber resonated, see at least para 49-50, 69).
As to claim 46, Pervan discloses the method wherein refined lignocellulosic fibres originate from a refining step in a MDF or HDF manufacturing process.
As to claim 47, Pervan discloses the method wherein the refined lignocellulosic fibres are applied as a powder (para 46-47).
As to claim 48, Pervan discloses the method wherein wherein the core is formed prior to producing the building panel (at least para 44, 48, claim 1).
As to claim 49, Pervan discloses the method wherein an open structure in the wood veneer layer is at least partly filled by the refined lignocellulosic fibres after applying pressure (open structure filled with 29, para 90-92, fig 7a-7e).
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.
Claim(s) 50 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pervan.
While Pervan does not expressly disclose the refined lignocellulosic fibres are applied in an amount of 25-75 g/m2, Pervan discloses the number of fibers per area can be varied
depending on the cost/quality/flexibility/sound proofing requirements. As such, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to apply the refined lignocellulosic fibres in an amount of 25-75 g/m2 as such is a design choice obvious to one of ordinary skill in the art.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 33-36, 39, 40, and 45-50 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of U.S. Patent No. 12,139,909. Although the claims at issue are not identical, they are not patentably distinct from each other because the limitations recited in claims 1-12 of ‘909 encompass all of the limitation of claims 33-36, 39, 40, and 45-50 of the current application.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER T SCHATZ whose telephone number is (571)272-6038. The examiner can normally be reached Monday through Friday, 9-6.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Orlando can be reached at 571-270-5038. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/CHRISTOPHER T SCHATZ/Primary Examiner, Art Unit 1746
Prosecution Insights