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 .
Information Disclosure Statement
The listing of references in the specification (found on pages 2 and 3) is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
Additionally, it is noted none of the references cited in copending PCT/US25/16251 have been provided, and unless the references have been cited by the examiner on form PTO-892, they have not been considered.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 3 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 3 recites the limitation "fire-retardant material". There is insufficient antecedent basis for this limitation in the claim. Is this the same fire-retardant material from claim 1, or additional, or different fire-retardant material than that of claim 1?
Claim Rejections - 35 USC § 102
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.
Claims 1 and 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Schrul et al (US 2020/0108524; herein Schrul). Regarding claim 1, Schrul teaches:
Blending a plurality of wood strands with one or more chemicals or adhesives (claim 1 steps a) and b) and claim 2)
Apply a fire-retardant material to at least some of said plurality of wood strands (claim 2)
Forming, on a forming line, a multi-layer strand mat from said plurality of wood strands, said multi-layer strand mat comprising a top surface (claim 1 step c))
Placing an intervening overlay layer on the top surface of the multi-layer strand mat (claim 1 step e) and the release paper of paragraph 0234)
In a press, applying heat and pressure to the multi-layer strand mat and intervening overlay layer to form a master blank, panel or board (claim 1 step f))
After removing the master blank, panel or board from the press, removing the intervening overlay layer from the top surface (paragraph 0234, the release paper is removed)
Regarding claim 11:
As previously discussed Schrul uses release paper.
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.
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.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Schrul, in view of Greten (US 3098781). Regarding claim 2, Schrul is silent to:
Further comprising the step of adding a fines layer to the multi0layer stand mat as the top surface
In the same field of endeavor Greten teaches having fines at the surface of the board to prevent telegraphing (column 1, lines 15-27, column 4, line 72 through column 5, line 16, and column 6, lines 8-17).
It would have been obvious to one having ordinary skill in the art at the time the invention was filed to have the fines as the outer layer as taught by Greten, since it prevents migration of larger particles to the surface.
Claims 3 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Schrul and Greten as applied above, and further in view of Haataja et al (US 2004/0191553; herein Haataja). Regarding claim 3:
Wherein the fines layer comprises fire-retardant material
As previously discussed Schrul teaches adding a fire-retardant but is silent to fines, and Greten is silent to adding a fire-retardant to the fines.
However, in the same field of endeavor Haataja teaches adding a fire-retardant to fines for use as a top layer (paragraph 0037 and Figures 2-6)
It would have been obvious to one having ordinary skill in the art at the time the invention was filed to have the fines of Greten mixed with fire-retardant since the board of Schrul is already mixed with fire-retardant and Haataja shows that is possible to mix fines and fire-retardant.
Regarding claim 4:
See remarks regarding claims 2 and 3.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Schrul, in view of Baxter et al (US 2010/0171233; herein Baxter). Regarding claim 5:
Schrul teaches removing the release paper, but not specifically via planing or sanding.
In the same field of endeavor Baxter teaches planing to remove unwanted material from the finished boards (paragraph 0076).
It would have been obvious to one having ordinary skill in the art at the time the invention was filed to plane the board in order to remove the release paper, since the release paper is unwanted material. It has been shown that a person of ordinary skill has good reason to pursue the known options in their art. If this leads to an anticipated success, it is likely that it was not due to innovation but of ordinary skill and common sense. KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385, 1397 (2007). In this instance there are only so many ways to remove unwanted material from a finish board, therefore the use of planing to do so is obvious when the desired end result is a clean board.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Schrul, in view of Spica (US 2002/0007898).
Schrul teaches removing the release paper, but not specifically pressure washing.
In the same field of endeavor Spica teaches washing with a liquid to remove unwanted material from the finished boards (paragraph 0017).
It would have been obvious to one having ordinary skill in the art at the time the invention was filed to wash the board in order to remove the release paper, since the release paper is unwanted material. It has been shown that a person of ordinary skill has good reason to pursue the known options in their art. If this leads to an anticipated success, it is likely that it was not due to innovation but of ordinary skill and common sense. KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385, 1397 (2007). In this instance there are only so many ways to remove unwanted material from a finish board, and even fewer ways via washing (making pressure washing obvious) therefore the use of washing to do so is obvious when the desired end result is a clean board.
Claims 7-10 and 12-15 are rejected under 35 U.S.C. 103 as being unpatentable over Schrul.
Regarding claim 7:
As previously discussed Schrul removes the release paper, but is silent to peeling.
It would have been obvious to one having ordinary skill in the art at the time the invention was filed to peel the release paper to remove the release paper, since the release paper is unwanted material. It has been shown that a person of ordinary skill has good reason to pursue the known options in their art. If this leads to an anticipated success, it is likely that it was not due to innovation but of ordinary skill and common sense. KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385, 1397 (2007). In this instance there are only so many ways to remove unwanted material from a finish board, therefore the use of peeling to do so is obvious when the desired end result is a clean board.
Regarding claim 8:
Per paragraph 0234 of Schrul the release paper is adhesive resistant since it comes off the finished board.
Regarding claim 12:
As previously discussed Schrul teaches release paper, but is silent to the paper being kraft paper.
Since Schrul teaches paper, the use of kraft paper would have been obvious to one having ordinary skill in the art at the time the invention was filed, since it has been shown that a person of ordinary skill has good reason to pursue the known options in their art. If this leads to an anticipated success, it is likely that it was not due to innovation but of ordinary skill and common sense. KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385, 1397 (2007). In this instance there are only so many types of paper and type of paper usable in such processing, thus deciding to use kraft paper is well within the abilities of a skilled artisan.
Regarding claims 9, 10, and 13-15:
Claims 9, 10, and 13-15 are directed to the size of the intervening overlay layer. Schrul, as previously discussed, teaches a release paper, but is silent to the size therefore. However, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to have the needed size release paper in Schrul, since it has been held where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device (MPEP 2144.04 IV A)
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: see PTO-892 for art related to wood board manufacturing with release properties and fire-retardants.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TIMOTHY J KENNEDY whose telephone number is (571)270-7068. The examiner can normally be reached Mon-Fri 8am-5pm..
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Galen Hauth can be reached at 571-270-5516. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TIMOTHY KENNEDY/Primary Examiner, Art Unit 1743
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