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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address; COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`16/628,077
`
`01/02/2020
`
`Nachiko MAEDA
`
`HOKU.3PUSO1
`
`A115
`
`MARKD. SARALINO (PAN)
`RENNER, OTTO, BOISSELLE & SKLAR, LLP
`1621 EUCLID AVENUE
`ISTH FLOOR
`
`CLEVELAND, OH 44115
`
`KIM, YUNJU
`
`1742
`
`11/15/2021
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`
`ipdocket @rennerotto.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`Office Action Summary
`
`Application No.
`16/628,077
`Examiner
`YUNJU KIM
`
`Applicant(s)
`MAEDAetal.
`Art Unit
`1742
`
`AIA (FITF) Status
`Yes
`
`-- The MAILING DATEofthis communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom the mailing
`date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHSfrom the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133}.
`Any reply received by the Office later than three months after the mailing date of this communication, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`
`
`1) Responsive to communication(s) filed on 05/11/2021.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)L) This action is FINAL. 2b)¥)This action is non-final.
`3)02 An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4\0) Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`Disposition of Claims*
`1-5 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`C} Claim(s)
`is/are allowed.
`Claim(s) 1-5 is/are rejected.
`S)
`) © Claim(s)____is/are objected to.
`Cj) Claim(s
`are subjectto restriction and/or election requirement
`)
`S)
`* If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http://www.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) )
`
`Application Papers
`10)() The specification is objected to by the Examiner.
`11) The drawing(s) filed on 01/02/2020 is/are: a)[¥) accepted or b)( objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`_—_c)L) None ofthe:
`b)L) Some**
`a)¥) All
`1.2 Certified copies of the priority documents have been received.
`2.2) Certified copies of the priority documents have been received in Application No.
`3.4 Copies of the certified copies of the priority documents have been receivedin this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`* See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1)
`
`Notice of References Cited (PTO-892)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date
`01/02/2020,01/11/2021,05/11/2021.
`
`U.S. Patent and Trademark Office
`
`3) (J Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`
`4)
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20210527
`
`

`

`Application/Control Number: 16/628,077
`Art Unit: 1742
`
`Page 2
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`DETAILED ACTION
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`Notice of Pre-AlA or AIA Status
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`1.
`
`The present application, filed on or after March 16, 2013, is being examined under
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`the first inventor to file provisions of the AIA.
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`Information Disclosure Statement
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`2.
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`The information disclosure statement (IDS)s 01/02/2020, 01/11/2021 and
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`05/11/2021 have been considered by the examiner.
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`Claim Rejections - 35 USC § 103
`
`3.
`
`The following is a quotation of 35 U.S.C. 103 which forms the basis for all
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`obviousnessrejections setforth 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.
`
`4.
`
`The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148
`
`USPQ 459 (1966), that are applied for establishing a background for determining
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`obviousness under 35 U.S.C. 103 are summarized as follows:
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`1. Determining the scope and contents of the prior art.
`
`

`

`Application/Control Number: 16/628,077
`Art Unit: 1742
`
`Page 3
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`2. Ascertaining the differences between the prior art and the claims at issue.
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`3. Resolving the level of ordinary skill in the pertinent art.
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`4. Considering objective evidence presentin the application indicating
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`obviousness or nonobviousness.
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`5.
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`This application currently names joint inventors. In considering patentability of the
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`claims the examiner presumes that the subject matter of the various claims was
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`commonly ownedasof the effective filing date of the claimed invention(s) absent any
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`evidenceto the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to
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`point out the inventor and effective filing dates of each claim that was not commonly
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`ownedas ofthe effectivefiling date of the later invention in order for the examiner to
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`consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2)
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`prior art against the later invention.
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`6.
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`Claims 1, 3 and 5 are rejected under 35 U.S.C. 103 as being unpatentable
`
`over Umemura (US 2011/0174191) in view of Asadaet al. (JP 2014113784-of
`
`record_Machine Translation provided herewith).
`
`With respect to claim 1, Umemura teaches a method for manufacturing a wood
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`composite board (“to produce a plywood using the composition”, Pa [0027]), comprising:
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`supplying a biomass composition containing a pulverized tree material and a
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`multivalent carboxylic acid (“a composition cured by applying heat/pressure thereto,
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`including (a) a plant-derived material in the form of powder or small pieces and (b) a
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`

`

`Application/Control Number: 16/628,077
`Art Unit: 1742
`
`Page 4
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`polycarboxylic acid”, Pa [0007]) to a surface of a wood board (“the composition may be
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`interposed between veneer sheets for plywood”, Pa [0027]); and
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`then performing thermocompression molding on the biomass composition
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`supplied to the surface of the wood board (“heated ...and then applied pressure’, Pa
`
`[0027]).
`
`Umemurais silent to using a palm for the pulverized tree material.
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`In the same field of endeavor, a method of manufacturing a wood board, Asada
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`teaches that chips coated with an adhesive are laminated and hot pressed (pg3li 2-3),
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`and palm is used as chip board materials (pg 6 li 16-18).
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`It would have been obvious to one of ordinary skill in the art before the effective
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`filing date of the invention to modify Umemura with the teachings of Asada sothat the
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`one would use the palm tree for the plant-derived material in the form of powder or
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`small pieces in Umemura’s method, since it has been held that the use of a known
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`technique to improve similar devices (methods or products) in the same wayis likely to
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`be obvious. See KSA International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82
`
`USPQ2d 1385, 1395 — 97 (2007) (see MPEP § 2143, C.).
`
`With respect to claim 3, even though the combination as applied to claim 1
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`above does notspecifically teach that the pulverized palm tree material contains
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`parenchymatous cells, since Umemura does not teach any further step for treating of
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`filtering the pulverized tree material, the one having ordinary skill in the art would
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`appreciate that the pulverized tree material would contain parenchymatous cells.
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`

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`Application/Control Number: 16/628,077
`Art Unit: 1742
`
`Page 5
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`With respect to claim 5, Umemura as applied to claim 1 above teaches that the
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`wood board is a composite board or a particleboard (“veneer sheets”, Pa [0027)).
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`7.
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`Claims 2 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over
`
`Umemura (US 2011/0174191) in view of Asada etal. (JP 2014113784-of
`
`recordMachine Translation provided herewith) as applied to claim 1 above, and
`
`further in view of Tamogami et al. (US 2019/0009427).
`
`With respect to claim 2, Umemura as applied to claim 1 above further teaches
`
`that the composition mayfurther contain a saccharide (Pa [0010]), and a solution of
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`polycarboxylic acid and saccharide is used in the composition (Pa [0015]), but does not
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`specifically teach that the biomass composition further contains an intermediate product
`
`of juice of a palm and a multivalent carboxylic acid.
`
`In the same field of endeavor, an aqueous bonding composition for producing a
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`wood-based material, Tamogami teaches that the composition includes a saccharide
`
`(Pa [0025]), and the saccharide comprises a sugar syrup comprising squeezed juice of
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`the sugar raw materials such as Palmyra palm (Pa [0040] and [0041]).
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`It would have been obvious to one of ordinary skill in the art before the effective
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`filing date of the invention to modify Umemura with the teachings of Tamogami so that
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`the one would use squeezedjuice of a palm for the purpose of obtaining the saccharide
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`and provide the solution of the polycarboxylic acid and squeezedjuice of a palm in the
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`composition.
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`

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`Application/Control Number: 16/628,077
`Art Unit: 1742
`
`Page 6
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`With respectto claim 4, the combination as applied to claim 1 aboveis silent to
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`using at least one of ammonium sulfate or ammonium chloride.
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`In the same field of endeavor, an aqueous bonding composition for producing a
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`wood-based material, Tamogami teaches that the aqueous bonding composition
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`includes a saccharide and an inorganic acid ammonium salt, such as ammonium
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`chloride (Pa [0022]) and therefore has more excellent curability, thus making it possible
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`to further improve bonding properties (bending strength, bending strength under wet
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`condition, peeling strength, and water-absorption thickness expansion coefficient) of the
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`wood-based material (Pa [0060]), and furthermore, the ammonium chloride has good
`
`compatibility with the saccharide and therefore can inhibit generation of precipitates in
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`the aqueous bonding composition so that the aqueous bonding composition is more
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`suitable for spraying (Pa [0061]).
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`It would have been obvious to one of ordinary skill in the art before the effective
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`filing date of the invention to modify Umemura with the teachings of Tamogami so that
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`the one would add the ammonium chloride to the composition for the purpose of more
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`excellent curability, improving bonding properties of the wood board, and helping the
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`composition suitable for spraying.
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`Conclusion
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`

`

`Application/Control Number: 16/628,077
`Art Unit: 1742
`
`Page 7
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to YUNJU KIM whosetelephone number is (571)270-1146.
`
`The examiner can normally be reached on 8:00-4:00 EST M-Th; Flexing Fri.
`
`Examiner interviews are available via telephone, in-person, and video
`
`conferencing using a USPTO supplied web-based collaboration tool. To schedule an
`
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`
`(AIR) at http:/Awww.uspto.gov/interviewpractice.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
`
`supervisor, Christina Johnson can be reached on 571-272-1176. The fax phone
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`number for the organization where this application or proceeding is assigned is 571 -
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`273-8300.
`
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`
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`
`/YUNJU KIM/
`Examiner, Art Unit 1742
`
`