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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
`
`02/18/2022
`
`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 02/07/2022.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`2a)¥) This action is FINAL.
`2b) (J 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.
`(1 Claim(s)__is/are objectedto.
`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)0) The drawing(s) filedon__ is/are: a)(J 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)1) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`c)Z None ofthe:
`b)() Some**
`a)C All
`1.2 Certified copies of the priority documents have been received.
`2.1.) Certified copies of the priority documents have been received in Application No.
`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)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date 11/30/2021.
`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 20220211
`
`

`

`Application/Control Number: 16/628,077
`Art Unit: 1742
`
`Page 2
`
`DETAILED ACTION
`
`Notice of Pre-AlA or AIA Status
`
`1.
`
`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
`
`2.
`
`The information disclosure statement (IDS) 11/30/2021 has been considered by
`
`the examiner.
`
`Response to Amendment
`
`3.
`
`The Amendmentsfiled 02/07/2022 responsive to the Office Action filed 11/15/2021
`
`has been entered. Claim 1 has been amended. Claims 1-5 are pendingin this application.
`
`Responseto Arguments
`
`4.
`
`Applicant’s arguments, see Amendments pages3-4 filed 02/07/2022, with respect
`
`to the rejection of the claim 1 under 103 rejection have been fully considered and are
`
`persuasive. Therefore,
`
`the rejection has been withdrawn. However, upon further
`
`consideration, a new ground(s) of
`
`rejection is made in view of Umemura (US
`
`

`

`Application/Control Number: 16/628,077
`Art Unit: 1742
`
`Page 3
`
`2011/0174191) in view of Asada et al.
`
`(JP 2014113784Machine Translation) and
`
`Tamogami et al. (US 2019/0009427).
`
`Claim Rejections - 35 USC § 103
`
`5.
`
`The following is a quotation of 35 U.S.C. 103 which forms the basis for all
`
`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.
`
`6.
`
`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
`
`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 presentin the application indicating
`
`obviousness or nonobviousness.
`
`7.
`
`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 ownedasof 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
`
`

`

`Application/Control Number: 16/628,077
`Art Unit: 1742
`
`Page 4
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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)
`
`prior art against the later invention.
`
`8.
`
`Claims 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over
`
`Umemura (US 2011/0174191) in view of Asada et al. (JP 2014113784Machine
`
`Translation) and Tamogami et al. (US 2019/0009427) (All of record).
`
`With respect to claim 1, Umemura teaches a method for manufacturing a wood
`
`composite board (“a method for producing an environmentally friendly plastic-like
`
`formed body (such as a molding and a particleboard) from the composition”, Pa [0001]
`
`and [0005]), comprising:
`
`supplying a biomass composition containing a pulverized tree material and a
`
`multivalent carboxylic acid (“a composition cured by applying heat/pressure thereto,
`
`including (a) a plant-derived material in the form of powder or small pieces and (b) a
`
`polycarboxylic acid”, Pa [0007]) to a surface of a wood board (“the composition may be
`
`interposed between veneer sheets for plywood”, Pa [0027]); and
`
`then performing thermocompression molding on the biomass composition
`
`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.
`
`

`

`Application/Control Number: 16/628,077
`Art Unit: 1742
`
`Page 5
`
`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 (pg 3 li 2-3),
`
`and palm is used as chip board materials (pg 6 li 16-18).
`
`It would have been obvious to one of ordinary skill in the art before the effective
`
`filing date of the invention to modify Umemura with the teachings of Asada sothat the
`
`one would use the palm tree for the plant-derived material in the form of powder or
`
`small pieces in Umemura’s method, since it has been held that the use of a known
`
`technique to improve similar devices (methods or products) in the same wayis likely to
`
`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.).
`
`Umemura teaches production of an environmentally friendly plastic-like formed
`
`body (such as a molding and a particleboard) from the composition (Pa [0001] and
`
`[0005]) and specifically teaches the methods of producing a molding and a plywood (Pa
`
`[0027]), but does not specifically teach supplying a biomass composition to a surface of
`
`a wood board to have a thickness within a range of 1 mm to 5 mm bothinclusive after
`
`thermocompression molding so as to form a surface layer of the biomass composition
`
`on the surface of the wood board.
`
`In the same field of endeavor, a method of producing a wood-based material
`
`using a composition, Tamogami teaches that wood-based materials (for example,
`
`plywoods, particle boards, and laminated woods) are generally produced by applying or
`
`spraying an adhesive etc. onto wood-based elements (raw materials), followed by
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`molding the wood-based elements through pressurizing and heating (Pa [0003] and
`
`

`

`Application/Control Number: 16/628,077
`Art Unit: 1742
`
`Page 6
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`[0102]). Tamogami further teaches that examples of the wood-based element (raw
`
`material) comprise sawn boards, veneers (Pa [0101]) and examples of the wood-based
`
`material comprise laminated woods (Pa [0102)).
`
`It would have been obvious to one of ordinary skill in the art before the effective
`
`filing date of the invention to modify Umemurawith the teachings of Tamogami and
`
`incorporate Tamogami’s method of producing a laminated wood board into Umemura’s
`
`method so that the one would apply or spray the Umemura’s composition onto the wood
`
`board and perform Umemura’s molding for the purpose of producing a laminated wood
`
`board as an environmentally friendly plastic-like formed body.
`
`Furthermore, Umemura teaches that when a formed bodyis produced, applying
`
`heat/pressure are commonly carried out by upper and lower pressusing hot plates
`
`(heating platen), and the thickness of the formed bodyis controlled using a distance bar
`
`(a thickness regulating jig for regulating a distance between upper and lower hot plates)
`
`(Pa [0035]), and the obtained molding in Example 2 has a thickness of about 3 mm (Pa
`
`[0040)).
`
`Thus, one would have found it obvious to regulate a distance between upper and
`
`lower hot plates using a distance barin order to form a laminated wood board having a
`
`desired thickness. Furthermore, in alternative, one would have found it obvious to
`
`produce the laminated wood board having a thickness of about 3 mm for the purpose of
`
`producing an environmentally friendly plastic-like formed body having a thickness of
`
`about 3 mm.
`
`

`

`Application/Control Number: 16/628,077
`Art Unit: 1742
`
`Page 7
`
`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
`
`polycarboxylic acid and saccharide is used in the composition (Pa [0015]), but does not
`
`specifically teach that the biomass composition further contains an intermediate product
`
`of juice of a palm and a multivalent carboxylic acid.
`
`Tamogami as applied in the combination abovefurther teaches that the
`
`composition includes a saccharide (Pa [0025]), and the saccharide comprises a sugar
`
`syrup comprising squeezed juice of the sugar raw materials such as Palmyra palm (Pa
`
`[0040] and [0041)).
`
`It would have been obvious to one of ordinary skill in the art before the effective
`
`filing date of the invention to modify Umemura with the teachings of Tamogami so that
`
`the one would use squeezedjuice of a palm for the purpose of obtaining the saccharide
`
`and provide the solution of the polycarboxylic acid and squeezedjuice of a palm in the
`
`composition.
`
`With respect to claim 3, even though the combination as applied to claim 1
`
`above does notspecifically teach that the pulverized palm tree material contains
`
`parenchymatous cells, since Umemura does not teach any further step for treating of
`
`filtering the pulverized tree material, the one having ordinary skill in the art would
`
`appreciate that the pulverized tree material would contain parenchymatous cells.
`
`With respect to claim 4, Umemura as applied to claim 1 aboveis silent to using
`
`at least one of ammonium sulfate or ammonium chloride.
`
`

`

`Application/Control Number: 16/628,077
`Art Unit: 1742
`
`Page 8
`
`Tamogami as applied in the combination above further teaches that the aqueous
`
`bonding composition includes a saccharide and an inorganic acid ammonium salt, such
`
`as ammonium chloride (Pa [0022]) and therefore has more excellent curability, thus
`
`making it possible to further improve bonding properties (bending strength, bending
`
`strength under wet condition, peeling strength, and water-absorption thickness
`
`expansion coefficient) of the wood-based material (Pa [0060]), and furthermore, the
`
`ammonium chloride has good compatibility with the saccharide and therefore can inhibit
`
`generation of precipitates in the aqueous bonding composition so that the aqueous
`
`bonding composition is more suitable for spraying (Pa [0061]).
`
`It would have been obvious to one of ordinary skill in the art before the effective
`
`filing date of the invention to modify Umemura with the teachings of Tamogami so that
`
`the one would add the ammonium chloride to the composition for the purpose of more
`
`excellent curability, improving bonding properties of the wood board, and helping the
`
`composition suitable for spraying.
`
`With respect to claim 5, Tamogami as applied in the combination regarding
`
`claim 1 above teaches that the wood board is a composite board or a particleboard
`
`(“veneers”, Pa [0101)).
`
`Conclusion
`
`Applicant's amendment necessitated the new ground(s) of rejection presented in
`
`this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP
`
`

`

`Application/Control Number: 16/628,077
`Art Unit: 1742
`
`Page 9
`
`§ 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 replyis filed within
`
`TWO MONTHS ofthe mailing date ofthis 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
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`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.
`
`Any inquiry concerning this communication or earlier communications from the
`
`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-basedcollaboration tool. To schedule an
`
`interview, applicant is encouraged to use the USPTO Automated Interview Request
`
`(AIR) at http:/Avww.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
`
`number for the organization wherethis application or proceeding is assigned is 571-
`
`273-8300.
`
`Information regarding the status of an application may be obtained from the
`
`Patent Application Information Retrieval (PAIR) system. Status information for
`
`

`

`Application/Control Number: 16/628,077
`Art Unit: 1742
`
`Page 10
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`published applications may be obtained from either Private PAIR or Public PAIR.
`
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`
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`
`/YUNJU KIM/
`Examiner, Art Unit 1742
`
`