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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12/18/2025 has been entered.
Rejections
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
Claim(s) 1, 4-6, 8, 13-14 and 17-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Houze et al. (US 2006/0180286 A1).
Regarding claim 1 and 8, Houze teaches an aqueous adhesive composition for assembling corrugated cardboards comprising a primary part of gelatinized and/or swollen starches, and a second part of non-gelatinized and/or swollen starches (para 0001-0002), wherein the starch content is 95 % of the dry content (para 0010), wherein the primary part (aka base part, aka suspended component) and the second part comprise granular modified starches (gelatinized portion, granular portion, current claim 8) (para 0012, 0089). Houze also teaches that, from a moisture- and water-resistance perspective, the starches comprise an amylose content of 30 to 52 % (para 0097), which overlaps that presently claimed.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
Indeed, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to provide the starches of the prior art with the presently claimed amylose content based on the degree of moisture- and water-resistance required of the prior art’s intended application as in the present invention.
Regarding claim 4, teaches that the starches are oxidized (para 0091).
Regarding claim 5, Houze teaches that the composition comprises calcium hydroxide (caustic agent) (para 0024).
Regarding claim 6, Houze teaches that the composition comprises borax (para 0024).
Regarding claim 13, Houze teaches that the composition comprises crosslinking agent, which would have apprised the skilled artisan that the starches are crosslinked (para 0095).
Regarding claim 14, as noted above, Houze’s primary part of gelatinized and/or swollen starches (carrier component), and a second part of non-gelatinized and/or swollen starches (suspended component).
Regarding claims 17-18, Houze does not specify the proportions of the solid content of the disclosed starches, nor the solid content proportions of the primary part (i.e., the carrier component), but Houze does instruct that water is added (para 0019). Also as noted above, the primary part provides the gelatinized portion of the claimed adhesive composition.
Indeed, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to add viscosity-reducing water in an amount towards providing the starch solid content and primary part in the amounts presently claimed based on the resultant viscosity and the degree of gelatinization required of the prior art’s intended application as in the present invention.
Regarding claim 19, Houze teaches that cross-linking provides moisture- and water-resistance (para 0095), as does adjusting the amylose content (para 0097), and that the invention is directed to the reduction of the water-resistance agents (wet strength resins) (para 0098). Houze also counsels towards reducing water-resistance agents (para 0096).
Indeed, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to reduce or eliminate the water-resistance agents towards reducing environmentally hazardous compounds as in the present invention.
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Houze et al. (US 2006/0180286 A1) in view of Anderson et al. (US 6710175 B2).
Regarding claim 10, Houze teaches an aqueous adhesive composition for assembling corrugated cardboards comprising oxidized starches as in the rejection of at least current claims 1 and 4 as set forth above.
Houze is silent to the oxidation comprising chlorine.
However, Anderson teaches that the oxidation of starch employs chlorine in an amount of 0.05 to 3.0 %, wherein the adjustment of the chlorine content is a common practice for oxidations with hypochlorites (column 6, lines 1-24).
The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (Claims to a printing ink comprising a solvent having the vapor pressure characteristics of butyl carbitol so that the ink would not dry at room temperature but would dry quickly upon heating were held invalid over a reference teaching a printing ink made with a different solvent that was nonvolatile at room temperature but highly volatile when heated in view of an article which taught the desired boiling point and vapor pressure characteristics of a solvent for printing inks and a catalog teaching the boiling point and vapor pressure characteristics of butyl carbitol.
“Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” 325 U.S. at 335, 65 USPQ at 301.).
Indeed, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to employ the oxidation processes of the secondary Anderson invention as the oxidation process(es) contemplated by the primary Houze invention, and thereby arrive at the presently claimed invention from the disclosures of the prior art.
Response to Arguments
Applicant’s arguments, see the claim amendments and the remarks filed 12/18/2025, with respect to the rejection of claims 1, 4-6, 8, 13-14 and 17-19 over Houze et al. under 35 U.S.C. 103 and claim 10 over Houze et al. in view of Anderson et al. under 35 U.S.C. 103 as set forth in paragraphs 3-4 of the action mailed 7/18/2025, have been fully considered but they are not persuasive.
The Examiner acknowledges the Applicant’s assertions that the presently claimed invention is directed to adhesives and concerns of controlling the viscosity, suspension of a secondary starch and tack under Stein Hall processing conditions/ The Examiner also respectfully reiterates that, while it is recognized that the phrase “consisting essentially of” narrows the scope of the claims to the specified materials and those which do not materially affect the basic and novel characteristics of the claimed invention, absent a clear indication of what the basic and novel characteristics are, “consisting essentially of” is construed as equivalent to “comprising”. Further, the burden is on the applicant to show that the additional ingredients in the prior art, i.e., the inclusion of additional starch(es), starch blends, would in fact be excluded from the claims and that such ingredients would materially change the characteristics of the applicant’s invention, See MPEP 2111.03.
Thus, while House teaches that the disclosed adhesive compositions a legume starch and at least of a cereal and/or tuber starch (para 0001), and while it may be recognized that the inclusion of materials not specifically recited in the presently claimed invention will affect the resultant adhesive’s characteristics (i.e., gelatinization temperatures, viscosities, suspension behavior and tack), there is no indication that such affects would fall outside that presently claimed adhesive. Indeed, the only occurrence in the presently claimed invention where characteristics, or properties, of the recited adhesive are provided is the peak viscosity of current claim 4, and that limitation is further recited as “optional.” Moreover, there is nothing of record that would disqualify the disclosure of House because additional starches allegedly necessitate the formulation of alkali levels, crosslinker amounts and cooking a conditions, nor is there any indication as what constitutes “acceptable performance” as distinguishing House’s invention from that presently claimed in these or other matters.
In addition, the presently claimed invention does not provide boron or borax proportions, and thus it is uncertain if the cited portions of House discussing the amount of these agents provides any evidence that the additional starches is relevant to disqualifying House for the reasons postured by the Applicant. Similarly, the Applicant’s arguments against House in regards to cited paragraphs 0040, 0056, and 0133 are not persuasive. Thus, the disclosure of the Houze teaches the presently claimed adhesive within the scope of the limitations encompassed by the “consisting essentially of” language.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FRANK D DUCHENEAUX whose telephone number is (571)270-7053. The examiner can normally be reached 8:30 PM - 5:00 PM.
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/FRANK D DUCHENEAUX/Primary Examiner, Art Unit 1788 2/4/2026