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 .
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 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.
DETAILED ACTION
Prosecution on the merits is reopened. Accordingly, this Action is non-final.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Status of claims
The amendment filed on 09/03/2025 is acknowledged. Claims 4, 24-28, and 32 have been canceled and claims 6, 9-11, 14, 15, 18-23, 29, and 30 have been withdrawn. Claims 1-3, 5, 7, 8, 12, 13, 16, 17, 31, and 33 are under examination in the instant office action.
Rejections withdrawn
Applicant’s amendments and arguments filed on 09/03/2025 are acknowledged and have been fully considered. Any rejection and/or objection not specifically addressed below is herein withdrawn. Applicant’s amendments and arguments have overcome the rejections 35 U.S.C. 103(a) of claims 1 and 33 over Sunkel et al. (US 2004/0228821 A1) and of claims 1-5, 7, 8, 12, 13, 16, 17, 31, and 33 over Li et al. (US 2014/0342153 A1) and Sunkel et al. (US 2004/0228821 A1) from the previous Office Action. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set of rejections and/or objections presently being applied to the instant application.
New ground of rejections
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth 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.
This application currently names joint inventors. In considering patentability of the claims under 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of 35 U.S.C. 103(c) and potential 35 U.S.C. 102(e), (f) or (g) prior art under 35 U.S.C. 103(a).
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(a) 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 present in the application indicating obviousness or nonobviousness.
Claims 1-3, 5, 7, 8, 12, 13, 16, 17, 31, and 33 are rejected under 35 U.S.C. 103(a) as being unpatentable over Chen et al. (US 2016/0253927 A1) as evidenced by Li et al. (Pressure-Sensitive Adhesives Based on Epoxidized Soybean Oil and Dicarboxylic Acids, ACS Sustainable Chemistry & Engineering, Vol 2, Issue 8, Article).
Chen et al. teach a plurality of bio-based prepolymer particulates, to be dispersed throughout an aqueous-based continuous phase (paragraph 110-111), comprising
the reaction product of at least one epoxidized vegetable oil (the claimed epoxide molecule in the instant claims 1-3) and a dimer acid including dimers of linoleic acid, oleic acid, etc., (C36 dimer acids, the elected species of crosslinker in the instant claims 1, 5, 7, 8, and 31 and thus the claimed crosslinked structure in the instant claim 1) (paragraph 7, 73, 75, 110, and 111 and claims 1, 8, 21, and 22);
wherein the bio-based prepolymer particulates have an average particle size of about 0.1-10 μm (paragraph 67).
Chen et al. are silent about the reaction product being an elastomer, in form of a gel, and having the claimed viscosity; the reaction product taught by Chen et al. is reacted from the same reactants as claimed thus would have the same property as being elastomer, in form of a gel, and having the claimed viscosity as evidenced by Li et al. (abstract and the paragraph under “Prepolymerization of ESO and a Dicarboxylic Acid” on page 2091 and page 2092).
Chen et al. teach reaction without solvent (paragraph 110), which is different from the solvent recited in the instant claims 12, 13, 16, and 17; the recited reaction solvent in the instant claims is a product-by-process limitation. The determination of patentability of a product-by-process claim is based on the product itself, not its method of production. If the product in the product-by-process claim is the same or obvious from a product of the prior art, the claim is unpatentable even though the prior art product was made by a different process. The reaction product disclosed by prior art and reaction product recited in the instant claims both from the reaction of the same reactants, thus the product disclosed by prior art would necessarily be the same as the product recited in the instant claim. The burden is shifted to the applicant to provide evidence to demonstrate that the structure of the claimed reaction product resulted from the said process is different from that of reaction product disclosed in the prior art. See MPEP 2113.
With respect to the claim 33, it is noted that the reference does not teach that the composition is suitable for (capable of-type language) being used in the manner instantly claimed, [personal care]; please note that the claim element that uses capable of-type language does not impose any requirement that the device or composition actually perform the function. A claim that uses “capable of”-type language covers devices/compositions that have the recited components and which are capable of performing the recited functions. MPEP 2114.IV.
Chen et al. do not specify the same particle size (about 0.1-10 μm vs the claimed about 15-500 μm).
This deficiency is cured by the rationale that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties.
The claimed range of particle size is about 15-500 μm and the range of particle size taught in the prior art is about 0.1-10 μm and therefor, close enough that one skilled in the art would have expected them to have the same properties while about 1-500 μm was previously claimed (dated 08/07/2024). Thus, the criticality of now claimed about 15-500 μm over about 0.1-10 μm taught by Chen et al. is not established.
Alternatively, to the claimed viscosity discussed above, Chen et al. teach the viscosity of the aqueous-based dispersion being about 5-1500 cP at 20 °C (paragraph 106). Given the viscosity of water being about 1 mPa∙s (cP), the viscosity of the bio-based prepolymer particulates would be > about 5-1500 cP at 20 °C which overlaps with the claimed about 15,000-1,000,000 cP (13,500-1,100,000 cP with ± deviation) and would be obvious based on the rationale that a prima facie case of obviousness typically exists when the range of a claimed composition overlaps with the range disclosed in the prior art, such as in the instant rejection. Chen et al. teach the bio-based prepolymer having viscosity of 2,000-10,000 cP with 10,000 cP being close enough to 13,500 cP that one skilled in the art would have expected them to have the same properties which is supported by the disclosure of about 10-1,000,000 cP (9-1,100,000 cP with ± deviation) being suitable in the instant specification (paragraph 60). Thus, the criticality of the claimed about 15,000-1,000,000 cP over > about 5-1500 cP and 2,000-10,000 cP taught by Chen et al. is not established.
Response to Applicants’ arguments:
Applicant’s arguments, filed on 09/03/2025, have been fully considered but they are moot in view of new ground of rejections.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HONG YU whose telephone number is (571)270-1328. The examiner can normally be reached on 9 am - 5:30 pm.
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/HONG YU/
Primary Examiner, Art Unit 1614