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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
`
`14/006,011
`
`09/18/2013
`
`Ryo Sugawara
`
`HOKUP0201WOUS
`
`7644
`
`MARKD. SARALINO (PAN)
`RENNER, OTTO, BOISSELLE & SKLAR, LLP
`1621 EUCLID AVENUE
`ISTH FLOOR
`
`CLEVELAND, OH 44115
`
`WALSHON,SCOTT R
`
`1788
`
`10/09/2018
`
`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.
`14/006 ,011
`Examiner
`Scott R Walshon
`
`Applicant(s)
`Sugawaraetal.
`Art Unit
`AIA Status
`1788
`No
`
`-- 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 be timely 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}.
`Anyreply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
`
`Status
`
`1){¥] Responsive to communication(s)filed on 24 July 2018.
`(9 A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`2a)l¥) This action is FINAL.
`2b) C) This action is non-final.
`3)() An election was made bythe applicant in responseto a restriction requirement set forth during the interview on
`; the restriction requirement and election have been incorporated into this action.
`4) Since this application is in condition for allowance except for formal matters, prosecution as to the meritsis
`closed in accordance with the practice under Exparfe Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`6 7
`
`Disposition of Claims*
`1,21 and 23-31 is/are pending in the application.
`5)
`Claim(s)
`5a) Of the above claim(s)__ is/are withdrawn from consideration.
`C] Claim(s} _is/are allowed.
`Claim(s) 1,21 and 23-31 is/are rejected.
`8) ( Claim(s)__ is/are objected to.
`9)
`(4 Claim(s)
`are subject to restriction and/or election requirement
`* 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 __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)() Acknowledgmentis made ofa claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`c)1) None of the:
`b)( Some**
`a)Q All
`Certified copies of the priority documents have been received.
`1.1)
`Certified copies of the priority documents have been received in Application No. |
`2.1.)
`3.1) 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)
`
`3) (J Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(7) Other:
`4)
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date29June2018.
`U.S. Patent and Trademark Office
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20181001
`
`

`

`Application/Control Number: 14/006,01 1
`Art Unit: 1788
`
`Page 2
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`RESPONSE TO AMENDMENT
`
`Notice of Pre-AlA or AIA Status
`
`1.
`
`The present application is being examined under the pre-AlA first to invent
`
`provisions.
`
`2.
`
`Amendments to claim 1, filed on 24 July 2018, have been entered in the above-
`
`identified application. Claims 29-31 have been added and claims 2-20 and 22 have
`
`been cancelled by applicant. Claims 1, 21, and 23-31 are pending.
`
`Information Disclosure Statement
`
`3.
`
`The information disclosure statement (IDS) submitted on 29 June 2018 is in
`
`compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure
`
`statement is being considered by the examiner.
`
`WITHDRAWN REJECTIONS
`
`4.
`
`The pre-AlA 35 U.S.C. § 103 rejection of claims 1, 21, and 23-28 as over Swift
`
`(U.S. Pat. 7,655,711), made of record on page 5, paragraph 7 of the office action mailed
`
`30 April 2018 has been withdrawn due to Applicant’s amendment in the responsefiled
`
`24 July 2018.
`
`In particular, Swift does not teach an amountof p-TSA within the
`
`specified range.
`
`

`

`Application/Control Number: 14/006,01 1
`Art Unit: 1788
`
`Page 3
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`NEW AND REPEATED REJECTIONS
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`The text of those sections of Title 35, U.S. Code not included in this action can be found
`
`in a prior Office action.
`
`Claim Rejections - 35 USC § 103
`
`5.
`
`Claims 1, 21, 23-29, and 31 are rejected under pre-AlA 35 U.S.C. 103(a) as
`
`being unpatentable over Hawkins (U.S. Pat. 8,864,893). Note that Hawkins wasfiled on
`
`08 October 2010 and is based on a provisional application filed 09 October 2009.
`
`Regarding claims1, 26, 27, 28, and 29, Hawkins discloses an aqueous binder
`
`composition used for insulation and non-woven mats, see title and abstract and col. 2,
`
`lines 50-55. The binder composition includes a catalyst for crosslinking such ascitric
`
`acid or adipic acid which read on the claimed polyvalent carboxylic acid, see col. 2, lines
`
`59-65. See also col. 10, lines 42-54. Citric acid is one of the acids specified in claims 1
`
`and in claim 28 while adipic acid is one of the acids specified in claim 1. Para-
`
`toluenesulfonic acid may also be included, see col. 6, lines 24-31 and col. 10, lines 42-
`
`54. The amount of catalyst or cure accelerator to be usedis in the range of 0-10 wt. %
`
`based on the total solids of the binder composition, more preferably from 1-5 wt. %of 3-
`
`5 wt. %, see col. 6, lines 49-54.
`
`The binder also includes a carbohydrate of natural origins such as a
`
`monosaccharide or disaccharide or oligosaccharide, see col. 5, lines 26-42. Among the
`
`disclosed carbohydrates are sucrose whichis one of the specified oligosaccharides in
`
`claim 27. This reads on the claimed saccharide.
`
`

`

`Application/Control Number: 14/006,01 1
`Art Unit: 1788
`
`Page 4
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`The binder composition is added to fibers and cured in a curing oven by means
`
`of heat and pressure, see FIG.
`
`1 and description at col. 14, lines 22-25.
`
`Although Hawkins does not specify that a furan compound is generated from the
`
`saccharide and is able to form polymersbyesterification with the polyvalent carboxylic
`
`acid, Hawkins does specify that the insulation and binder are crosslinked through an
`
`esterification reaction, see col. 1, lines 16-21. Furthermore, Hawkins uses the same
`
`saccharide and carboxylic acids as claimed. Since the same materials as claimed are
`
`described in Hawkins, such materials are inherently able to form the furan compound
`
`which is able to react in the claimed manner.
`
`Although Hawkins does not specify a particular embodiment which includes all of
`
`the particular ingredients as described above, particularly the specific carboxylic acid,
`
`oligosaccharide, and p-toluenesulfonic acid, Hawkins does teach that each of these
`
`components is desirably added to the binder composition. For example, Hawkins
`
`describes a shortlist of suitable organic acids such as p-toluenesulfonic acid which may
`
`be included in the binder to adjust the pH to a desired level, see col. 10, lines 42-54.
`
`It
`
`therefore would have been obvious to include one of the disclosed ingredients for the
`
`purpose described in Hawkins to arrive at the claimed bonding composition.
`
`Regarding claim 21, Hawkins specifies that the binder composition is aqueous,
`
`see col. 5, lines 9-25.
`
`Regarding claim 23, Hawkins teaches in Tables 1-3 in col. 12 using various
`
`amounts of the carbohydrate and crosslinking agent. The crosslinking agent includes
`
`the organic acid and is preferably present in the amount of 10-30 wt. %of the solids in
`
`the binder composition, see col. 5, line 66 through col. 6, line 23. The carbohydrate is
`
`

`

`Application/Control Number: 14/006,01 1
`Art Unit: 1788
`
`Page 5
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`presentin the most preferable range of from 70-85 wt. %of the solids in the binder
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`composition, see col. 5, lines 56-65. These amounts are within the claimed ranges for
`
`the amountof polyvalent carboxylic acid and saccharide components.
`
`Regarding claims 24 and 25, Hawkins further teaches forming a fibrous
`
`insulation product including organic or inorganic fibers, see col. 12, line 64 through col.
`
`13, line 22. Suitable organic fibers include those of cotton, bamboo, kenaf, flax, or other
`
`plants which read on the claimed woody or herbaceous plants in claim 24. Suitable
`
`inorganic fibers include glass fibers which read on the inorganic fibers of claim 25. See
`
`id. The binding composition is sprayed onto the fibers and then cured, see FIG. 1 and
`
`description at col. 13, line 48 through col. 14, line 36.
`
`Claim 31, Hawkins teaches that the binder includes a carbohydrate of natural
`
`origins such as a monosaccharide or disaccharide or oligosaccharide, see col. 5, lines
`
`26-42. Among the disclosed carbohydrates are sucrose which is one of the specified
`
`oligosaccharides in claim 27.
`
`6.
`
`Claims 1, 21, and 23-31 are rejected under pre-AlA 35 U.S.C. 103(a) as being
`
`unpatentable over Swift (U.S. Pat. 7,655,711) in view of Michl (U.S. Pub.
`
`2009/0252962).
`
`Regarding claims 1 and 29, Swift describes a formaldehyde-free binders useful
`
`in the fabrication of products from loosely assembled fibers such as wood boards, see
`
`abstract and col. 4, lines 24-31. The binder includes a polycarboxylic acid such ascitric
`
`acid, adipic acid, sebacic acid, phthalic acid, tartaric acid, succinic acid, or others, see
`
`col. 6, lines 12-43. The binder also includes a carbohydrate reactant such as a mono-
`
`

`

`Application/Control Number: 14/006,01 1
`Art Unit: 1788
`
`Page 6
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`or poly-saccharide, see col. 12, lines 11-49. Suitable such carbohydrates include
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`sucrose and maltose, see col. 12, line 48. The binder is aqueous, see col. 3, lines 61-
`
`62 and col. 8, lines 19-27.
`
`Swift also teachesincluding p-toluenesulfonic acid, see Table 5 in col. 39, note j
`
`which describes the “TSA” componentin line 4 of the table.
`
`Swift teaches forming mats by a process whichincludes spraying the binder onto
`
`the fibers, followed by heating and pressing the mat to cure the mat, see col. 23, lines
`
`15-62. This reads on the bonding composition being configured to be cured through
`
`heating and pressing.
`
`The chemical reaction which the binder undergoes is the Maillard reaction which
`
`produces polymersthat contain a furan ring, see col. 2, lines 25-43. An esterification
`
`processis part of the reaction, see col. 11, lines 19-53. The Examiner has considered
`
`this to teach the limitation that the bonding composition is configured to be cured with a
`
`substance containing a furan compound generated from the polysaccharide through
`
`heating and pressing as claimed, and that the furan is able to form polymers by
`
`esterification and condensation, and that the saccharide is able to form a polymer by
`
`esterification as claimed.
`
`In the alternative, as Swift teaches the same acid components
`
`and saccharide components as specified in the claims, these components are inherently
`
`able to react in the claimed manner byesterification.
`
`Although Swift does not provide a specific example binder which includes one of
`
`the claimed polycarboxylic acids, claimed saccharides, and p-toluenesulfonic acid, it
`
`would have been obvious to select among the disclosed ingredients to arrive at the
`
`claimed bonding composition.
`
`

`

`Application/Control Number: 14/006,01 1
`Art Unit: 1788
`
`Page 7
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`Although Swift gives an example in which p-toluenesulfonic acid is included in
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`the composition, see Table 5 in col. 39, note j which describes the “TSA” componentin
`
`line 4 of the table, the disclosed amount is only about 0.4 wt. % p-toluenesulfonic acid
`
`which is less than the claimed amount.
`
`Michl also describes formaldehyde-free aqueous binders for making fibrous
`
`boards, see abstract and p. 1, [0001-0005]. The binder includes an ethylenically
`
`unsaturated dicarboxylic acid such as maleic acid, see p. 1, [0021-0024]. The binder
`
`also includes a saccharide compound of a monosaccharide, oligosaccharide, or
`
`polysaccharide, see p. 4, [0058]. The binder also includes a reaction accelerant such
`
`as p-toluenesulfonic acid, see p. 8-9, [0143]. The amount of accelerant to be added in
`
`the range of 0.1 to 5 wt. %, preferably 0.1 to 2 wt. %. This is within the claimed range.
`
`Swift and Michl are analogous as they each disclose formaldehyde-free aqueous
`
`binders for forming fibrous boards, and the binders include a dicarboxylic acid,
`
`saccharide, and p-toluenesulfonic acid. Thus the references are similar in composition
`
`and function.
`
`It would have been obvious to have included the p-toluenesulfonic acid within the
`
`range disclosed in Michl to arrive at the claimed invention, as Michl teaches thatthis
`
`material is a reaction accelerant and describes a suitable effective concentration range
`
`for this compound. Swift uses an amountof p-toluenesulfonic acid in its example which
`
`is within the range disclosed in Michl.
`
`Regarding claim 21, Swift teaches that the binder is aqueous, see col. 3, lines
`
`61-62 and col. 8, lines 19-27.].
`
`

`

`Application/Control Number: 14/006,01 1
`Art Unit: 1788
`
`Page 8
`
`Regarding claim 23, Example 5 of Swift usescitric acid and dextrose in a 1:6
`
`weight ratio to form the binder. See col. 18, lines 56-63. This is 14.3 parts by weight of
`
`acid per 100 parts of the total of acid + dextrose, and correspondingly 85.7 parts of
`
`dextrose. This is within the claimed range. Other examples are also within the claimed
`
`ranges; such as Example 1 at col. 17, lines 30-55 which uses 81.9 grams ofcitric acid
`
`and 50.0 grams of dextrose, which is 37.9 parts of acid and 62.1 parts dextrose per 100
`
`parts total.
`
`It would have been obvious to substitute one of the mono- or oligo-
`
`saccharides disclosed in Swift for the dextrose component.
`
`Regarding claims 24-25, Swift teaches applying the aqueous binder to fibers
`
`followed by thermally curing the binder, see col. 3, line 55 through col. 4, line 4. The
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`fibers may be cellulose fibers (see col. 4, lines 5-14 and lines 24-31 describing sawdust
`
`and wood shavings)or glass fibers (see col. 4, lines 15-23). These read on the claimed
`
`element pieces from woody or herbaceous plants or inorganic element pieces as
`
`claimed. The binder may be sprayed onto the fibers or applied by a roll-on process, see
`
`col. 14, lines 40-49.
`
`Regarding claims 26 and 27, Swift teaches using sucrose or maltose, see col.
`
`12, line 48.
`
`Regarding claim 28, Swift teaches using citric acid, tartaric acid, malic acid, or
`
`sebacic acid which are the specified polyvalent carboxylic acid components, see col. 6,
`
`lines 12-48.
`
`Claim 30, Swift teaches that the binder includes a polycarboxylic acid such as
`
`citric acid, adipic acid, sebacic acid, phthalic acid, tartaric acid, succinic acid, or others,
`
`

`

`Application/Control Number: 14/006,01 1
`Art Unit: 1788
`
`Page 9
`
`see col. 6, lines 12-43. Phthalic acid, tartaric acid, and succinic acid are among the
`
`claimed acids.
`
`Claim 31, Michl teaches using an oligosaccharide in the composition, see p. 4,
`
`[0058].
`
`RESPONSETO APPLICANT’S ARGUMENTS
`
`7.
`
`Applicant’s arguments in the responsefiled 24 July 2018 regarding the pre-AlA
`
`35 U.S.C. § 103 rejection of claims 1, 21, and 23-28 of record over Hawkins (U.S. Pat.
`
`8,864,893) have been carefully considered but are deemed unpersuasive.
`
`Applicant argues at p. 7 of the remarks that although Hawkins describes the
`
`catalyst or cure accelerator to be present in the binder in the amount of from about 0%
`
`to about 10%by weight (see col. 6, lines 41-45 and 49-53), that Hawkins does not
`
`disclose or suggest an amount of p-toluenesulfonic acid within the specified range.
`
`The Examiner is not persuaded, and applicant’s argument is inconsistent with the
`
`reference. The cited paragraphstates, “Optionally, the binder composition may include
`
`a catalyst to assist in the crosslinking. The catalyst mayinclude inorganic salts, Lewis
`
`acids (i.e. aluminum chloride or boron trifluoride), Bronsted acids (i.e. sulfuric acid, p-
`
`toluenesulfonic acid and boric acid)...” See col. 4, lines 24-28. The end ofthis
`
`paragraph states that “The catalyst or cure accelerator may be present in the binder
`
`composition in an amount from about 0%to about 10%by weight of the total solids in
`
`the binder composition, or from about 1.0% to about 5.0% by weight, or from about
`
`3.0%to about 5.0% by weight.”. Thus, Hawkins discloses the use of p-toluenesulfonic
`
`acid within the claimed range.
`
`

`

`Application/Control Number: 14/006,01 1
`Art Unit: 1788
`
`Page 10
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`Applicant further argues that the experimental examples of Hawkins fail to
`
`disclose or suggest the specific combination of the carbohydrate together with the
`
`polycarboxylic acid and with p-toluenesulfonic acid together. See p. 7 of the remarks.
`
`However, in accordance with MPEP §2123 a rejection is proper over a prior art
`
`reference’s broad disclosure instead of merely preferred embodiments or examples
`
`because patents are relevant as prior art for all information they contain.
`
`/n re Heck,
`
`699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983). A reference may be
`
`relied upon for all that it would have reasonably suggested to one having ordinaryskill
`
`the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874
`
`F.2d 804 (Fed. Cir. 1989).
`
`Accordingly, this pre-AlA 35 U.S.C. § 103 rejection is maintained.
`
`

`

`Application/Control Number: 14/006,01 1
`Art Unit: 1788
`
`Page 11
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`All claims are rejected.
`
`Conclusion
`
`Applicant's amendment necessitated the new ground(s) 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).
`
`A shortenedstatutory period for reply to this final action is set to expire THREE
`
`
`
`MONTHS from the mailing date of this action. In the eventafirst reply is filed within
`
`TWO MONTHS ofthe mailing date of this final action and the advisory action is not
`
`mailed until after the end of the THREE-MONTH shortenedstatutory 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 mailing date ofthis final action.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to SCOTT R WALSHON whosetelephone number is
`
`(571)270-5592. The examiner can normally be reached on Mondayto Friday from 9am
`
`- 6pm.
`
`Examiner interviews are available via telephone, in-person, and video
`
`conferencing using a USPTO supplied web-basedcollaboration tool. To schedule an
`
`interview, applicant is encouraged to use the USPTO Automated Interview Request
`
`(AIR) at http:/Awww.uspto.gov/interviewpractice.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
`
`supervisor, Alicia Chevalier can be reached on (571) 272-1490. The fax phone number
`
`for the organization where this application or proceeding is assigned is 571-273-8300.
`
`

`

`Application/Control Number: 14/006,01 1
`Art Unit: 1788
`
`Page 12
`
`Information regarding the status of an application may be obtained from the
`
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`
`published applications may be obtained from either Private PAIR or Public
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`1000.
`
`/Scott R. Walshon/
`Primary Examiner, Art Unit 1788
`
`