DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
This Office Action is in response Applicant’s amendments and remarks in response to a Nonfinal rejection filed February 13, 2026.
Claims 14-17 and 22 are withdrawn due to a previous Restriction requirement filed February 22, 2024.
Claims 1-2, 4-8, 10-13 and 18-21 are currently pending.
This Action is FINAL.
Claim Analysis
Summary of Claim 1:
An adhesive composition comprising:
Lignin;
A plant protein composition that is ground plant meal; and
A hydroxyl-functional compound
Wherein the adhesive composition does not comprise a reactive prepolymer.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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 pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-2, 4-8, 10-13, and 18-21 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Werle et al. (US 3619222) in view of Brady et al. (US 20090098387 as listed in IDS dated 06/27/2022).
The composition disclosed in claim 1 is incorporated herein by reference.
Regarding claim 1 and 2, Werle et al. teach an adhesive composition having thermoplastic properties, the adhesive comprising a protein such as soy protein, a polyhydric compound selected from the group consisting of glycerine, ethylene glycol, polyethylene glycol, etc., and a lignin extract (claim 1). Werle et al. further teach in Example 13 an adhesive solution comprising soy protein, Stapel (a lignin sulfonate extract, see Example 1), and glycerine only.
Werle et al. do not teach the adhesive composition comprises a plant protein composition that is ground plant meal as recited in the instant claim.
Brady et al. disclose an adhesive composition comprising a protein source (abstract). Brady et al. teach suitable protein sources include rapeseed meal, sunflower meal, and soy in the form of soy flour or soy protein concentrate [0022-0023], thereby reading on instant claim 1 and 2. Therefore, soy flour and soy protein are considered to be equivalents and the examiner notes that the substitution of equivalents (i.e., soy flour and soy protein concentrate) requires no express motivation as long as the prior art recognizes the equivalency. In re Fount USPQ 532 (CCPA 1982); In re Siebentritt, 152 USPQ 618 (CCPA 1967); Graver Tank & Mfg. Co. Inc. v Linde Air Products Co., 85 USPQ 328 (USSC). Therefore, it is prima facie obvious that soy protein and soy flour are considered to be equivalent (exchangeable), it is held that substitution of art recognized equivalents is within the level of ordinary skill in the art. (See MPEP 2144.06).
Regarding claim 4, Werle et al. doe not teach or fairly suggest canola meal, rapeseed meal, or sunflower meal can be used with the adhesive composition.
Brady et al. disclose an adhesive composition comprising a protein source (abstract). Brady et al. teach suitable protein sources include rapeseed meal, sunflower meal, and soy [0022]. Therefore, soy and rapeseed meal or considered to be equivalents and the examiner notes that the substitution of equivalents (i.e., soy flour and rapeseed meal) requires no express motivation as long as the prior art recognizes the equivalency. In re Fount USPQ 532 (CCPA 1982); In re Siebentritt, 152 USPQ 618 (CCPA 1967); Graver Tank & Mfg. Co. Inc. v Linde Air Products Co., 85 USPQ 328 (USSC). Therefore, it is prima facie obvious that soy protein and rapeseed meal are considered to be equivalent (exchangeable), it is held that substitution of art recognized equivalents is within the level of ordinary skill in the art. (See MPEP 2144.06).
Regarding claim 5-6, Werle et al disclose in Example 13, 16.7 parts by weight of 100 parts total soy protein was used, thereby lying within the claimed range (col 8, line 5-22).
Werle et al. do not teach the adhesive composition comprises a plant protein composition that is ground plant meal as recited in the instant claim.
Brady et al. disclose an adhesive composition comprising a protein source (abstract). Brady et al. teach suitable protein sources include rapeseed meal, sunflower meal, and soy in the form of soy flour or soy protein concentrate [0022-0023], thereby reading on instant claim 5 and 6. Therefore, soy flour and soy protein are considered to be equivalents and the examiner notes that the substitution of equivalents (i.e., soy flour and soy protein) requires no express motivation as long as the prior art recognizes the equivalency. In re Fount USPQ 532 (CCPA 1982); In re Siebentritt, 152 USPQ 618 (CCPA 1967); Graver Tank & Mfg. Co. Inc. v Linde Air Products Co., 85 USPQ 328 (USSC). Therefore, it is prima facie obvious that soy protein and soy flour are considered to be equivalent (exchangeable), it is held that substitution of art recognized equivalents is within the level of ordinary skill in the art. (See MPEP 2144.06).
Regarding claim 11 and 13, Werle et al. disclose ethylene glycol and polyethylene glycol may be used (claim 1).
Regarding claim 12, Werle et al. disclose in Example 13, glycerin was used (col 8, line 5-22).
Regarding claim 18, Werle et al. also teach that the adhesive formulation having thermosetting properties, which reads on the solid binder composition (claim 1).
Regarding claims 19-20, Werle et al. teach a method to use the adhesive composition and the resulting article, the method comprising applying the adhesive formulation to a kraft paper and then combining the first kraft paper with a second sheet of kraft paper to form a laminate (col 8, line 54-65).
Regarding claim 21, Werle et al. is silent on the particle size of the ground plant meal as recited in the instant claim.
Brady et al. teach the soy flour is formed by grinding processed soy flakes to 100-200 mesh [0023], equivalent to 74 to 149 µm and thereby lying within the claimed range of about 1 to about 400 µm. Brady et al. offer the motivation that soy flour maintains good adhesion performance [0058]. Werle et al. is also concerned about physical strength and properties (col 1, line 11-27). Therefore, it would have been obvious to one of ordinary skill in the art to use the soy flour of Brady et al. with the composition of Werle et al. with reasonable expectation that the physical properties would improve.
Claim 7 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Werle et al. (US 3619222) in view of Brady et al. (US 20090098387 as listed in IDS dated 06/27/2022), as evidenced by Saake et al. (“Lignin”, Ullman’s Encyclopedia of Industrial Chemistry as listed in IDS 06/27/2022).
The composition disclosed in claim 1 is incorporated herein by reference.
Werle et al. are silent on the molecular weight of the lignin as recited in the instant claim.
However, it is known that the lignosulfonates usually have a molar mass up to 60,000 g/mol (page 30), which is overlapping with the claimed range in view of the disclosure of Saake et al.
Therefore, it would have been obvious to one of ordinary skill in the art to use a lignin overlapping with the claimed range considering that lignosulfonates are typically within the range.
Response to Arguments
Applicant's arguments filed February 13, 2026 have been fully considered but they are not persuasive.
Applicant states “soy protein and soy flour are not equivalent”.
The examiner agrees with the applicant that soy protein isolate and soymeal/soy flour are not the same in that soy protein undergoes further purification. However, they are equivalent because they are useful for the same purpose in adhesive compositions as taught by Brady et al. Therefore, it would have been obvious to one of ordinary skill in the art to substitute soy protein and soy flour in the composition of Werle as taught by Brady et al. (MPEP 2144.06).
Applicant states “a person of skill in the art would have no expectation of success in exchanging the less-processed soy flour from the adhesives of Brady (that require a crosslinker to function as an effective adhesive) for the further-purified soy protein used in the adhesives of Werle (that do not include a reactive prepolymer), in order to allegedly arrive at an adhesive described by instant claim 1.”
The examiner disagrees. Werle does not teach the adhesive composition has a reactive prepolymer. Brady et al. is relied on to teach soy protein and soy flour have the same purpose in adhesive compositions, not for the crosslinker. Therefore, it would have been obvious to one of ordinary skill in the art to substitute soy protein and soy flour in the composition of Werle as taught by Brady et al. (MPEP 2144.06).
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) 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 of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREA WU whose telephone number is (571)272-0342. The examiner can normally be reached M F 8 - 5.
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, Joseph Del Sole can be reached on (571) 272-1130. 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.
/ANDREA WU/Examiner, Art Unit 1763
/CATHERINE S BRANCH/Primary Examiner, Art Unit 1763
Prosecution Insights