DETAILED ACTION
Examiner’s Note
All claims being currently amended in an amendment paper shall be presented in the claim listing, indicate a status of “currently amended,” and be submitted with markings to indicate the changes that have been made relative to the immediate prior version of the claims. The text of any added subject matter must be shown by underlining the added text. The text of any deleted matter must be shown by strike-through, except that double brackets placed before and after the deleted characters may be used to show deletion of five or fewer consecutive characters. The text of any deleted subject matter must be shown by being placed within double brackets if strike-through cannot be easily perceived. Only claims having the status of “currently amended” or “withdrawn” if also being amended, shall include markings. If a withdrawn claim is currently amended, its status in the claim listing may be identified as “withdrawn— currently amended.” (see MPEP 714). Withdrawn claim 16 has not been properly annotated in accordance with MPEP 714).
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 .
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 remarks filed 5/6/2026, 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 4-5 of the action mailed 2/6/2026, have been fully considered but they are not persuasive.
The Examiner respectfully directs the Applicant’s attention to the prior art rejections set forth above, and the attendant obviousness statements, wherein it is noted that there was no statement contained therein that employment of a “single” starch would have been obvious. Thus, it is unclear as to the Applicant’s rationale that Houze “teaches away” from the claimed invention in this regard. In addition, while the presently claimed invention recites that the adhesive “consists essentially of,” the Examiner submits that there is nothing in the claim language that requires only a single starch.
Further, the employment of a pea starch (or legume starch) is conspicuously recited as “optional.” Therefore, the inclusion of more than one starch would fall within the scope of the presently claimed “consists essentially of” language, and thus Houze does not teach away from the presently claimed invention. Moreover, there is nothing in the claim language that specifically precludes the employment of starches outside the scope of pea or legume starches.
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.
In regards to the practicality of the Houze invention with the associated industry, the Examiner respectfully reminds the Applicant that “the arguments of counsel cannot take the place of evidence in the record”, In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965). It is the Examiner’s position that the arguments provided by the Applicant against the obviousness of the presently claimed invention, or the patentability thereof, over Houze must be supported by a declaration or affidavit. As set forth in MPEP 716.02(g), “the reason for requiring evidence in a declaration or affidavit form is to obtain the assurances that any statements or representations made are correct, as provided by 35 U.S.C. 24 and 18 U.S.C. 1001.”
Turning now to the section of the Applicant’s arguments asserting the unexpected ability to overcome Houze’s stated problems, the Examiner contends that the elected invention is directed to a product and not a process (e.g., a limited oxidation process) for achieving said product. It is also significant to note that claimed invention as recited in elected claims 1, 4-6, 8, 13-14 and 17-19 do not require an oxidation process towards the recited modification. Claim 4 lists 12 other processes other than oxidation towards this end with current claim 10 being the only elected claim requiring oxidation of the starch.
Further, the presently claimed invention as recited in at least current claim 1 is limited to only an adhesive that consists essentially of a granular modified starch (with a legume or pea starch as optional) having an amylose content of 30 to 40 % by weight. Some of the dependent claims altering the scope of the claimed adhesive to “comprising” language (see, for example, claim 5).
As set forth in MPEP 716.02(d), whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support.” In other words, the showing of unexpected results must be reviewed to see if the results occurred over the entire claimed range, In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980).
The Applicant has not provided data to show that the unexpected results do in fact occur over the entire claimed range of 30 to 40 % by weight regardless of the methodology employed to arrive at the presently claimed invention. Again, the Examiner respectfully reiterates that the elected invention is a product invention, and not one directed to the methodology and the alleged “manufacturing efficiency” obtained therefrom. Moreover, one skilled in the art would not have been apprised that pea starch (or legume) is critical to the claimed invention towards achieving the alleged results presently in the present data as these starches are clearly recited as optional.
Also, returning to In re Schulze as noted above, it is the Examiner’s position that the arguments provided by the Applicant discussing pea starch oxidation and its attendant negative effects on corrugating adhesive performance are not persuasive. The Examiner acknowledges the peak viscosities of Example 3 presently disclosed as provided in Formulas 3-5, but is unclear how this result renders nonobvious the presently claimed “product” invention, and further how, and if, the recited amylose content contributes to the results.
Similarly, with respect to the manufacturing and the double and triple wall production speed, the is no mention as to the effect provides by the presently claimed amylose content. The data associated with Example 14 does not distinguish the claimed invention recited in at least current claim 1. Formula 17 does not discuss amylose content of the unmodified pearl adhesive for comparison with Formula 9, nor does it include a modified version (i.e., oxidized) of the pearl adhesive for comparison with Formula 9, nor does it further include an embodiment wherein a wet strength resin was not added for comparison with Formula 9. Indeed, there is not a proper side-by-side comparison of the adhesives of Formula 17 and 18. The Examiner also requests a definition for the acronyms “SF” and “DB” of Tables 6 and 7.
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 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 6/22/2026
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