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
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 03/18/2026 was filed after the mailing date of the non-final rejection on 09/18/2025. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Status of claims
The amendment filed on 03/18/2026 is acknowledged. Claims 4, 24-28, 32, and 33 have been canceled, claims 6, 9-11, 14, 15, 18-23, 29, 30 have been withdrawn, and new claims 34 and 35 have been added. Claims 1-3, 5, 7, 8, 12, 13, 16, 17, 31, 34, and 35 are under examination in the instant office action.
Rejections withdrawn
Applicant’s amendments, arguments, and affidavit filed on 03/18/2026 are acknowledged and have been fully considered. Any rejection and/or objection not specifically addressed below is herein withdrawn. 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.
Rejections maintained
The following rejection of the claims is remained for reasons of record and the following. New claims are hereby included in the rejection and the rejection is modified for clarity without changing the thrust of the previous rejection and based on the amendments and new claims (newly underlined).
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, 34, and 35 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, 17, and the solvent not being water in the new claim 35; 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.
Chen et al. do not specify the same particle size (about 0.1-10 μm vs the claimed about 15-500 μm in the instant claim 1 and about 20-200 μm in the new claim 34).
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 ranges of particle size are about 15-500 μm and about 20-200 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 since about 1-500 μm was previously claimed (dated 08/07/2024). Thus, the criticality of now claimed about 15-500 μm and about 20-200 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 in the instant claim 1 (13,500-1,100,000 cP with ± 10% deviation) and about 30,000-1,000,000 cP in the new claim 34 (27,000-1,100,000 cP with ± 10% 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. Also, Chen et al. teach the bio-based prepolymer having viscosity of 2,000-10,000 cP (paragraph 110) with 10,000 cP being close enough to 13,500 cP and 27,000 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 ± 10% deviation) being suitable in the instant specification (paragraph 60). Thus, the criticality of the claimed about 15,000-1,000,000 cP and about 30,000-1,000,000 cP over 2,000-10,000 cP taught by Chen et al. is not established.
With regard to the specifics of measurements of particle size and viscosity in the instant claims 1 and 34, as a practical matter, the Patent Office is not equipped to manufacture products by the myriad number of processes put before it and then obtain prior art products and make physical comparisons therewith.” In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972). Please note that the Patent and Trademark Office is not equipped to conduct experimentation in order to determine whether Applicants’ indented material differs and, if so, to what extent, from that of the discussed reference. Therefore, with the showing of the reference, the burden of establishing non-obviousness by objective evidence is shifted to the Applicants.
Response to Applicants’ arguments:
Applicant’s arguments based on the amendments are addressed in the Response to applicants’ 37 CFR 1.132 declaration below.
Response to applicants’ 37 CFR 1.132 declaration:
The affidavit under 37 CFR 1.132 filed 03/18/2026 is insufficient to overcome the rejection of pending claims as set forth in the last Office action because:
First of all, in the experiment the particle sizes in three samples are expressed as D10, D50, and D90 while the instant claim 1 recites particle size of from about 15 μm to about 500 μm and instant claim 34 recites particle size of from about 20 μm to about 200 μm which is not expressed as D10, D50, and D90. Thus, the examiner can’t correlate the claimed particle sizes with the particle sizes in the experiment. MPEP 716.02(b)II:
“[A]ppellants have the burden of explaining the data in any declaration they proffer as evidence of non-obviousness.”
Second, assuming – purely arguendo –the claimed particle sizes correlate with the particle sizes in the experiment, the experiment is not a true side-by-side closest to prior art. In the prior art the particle size is about 0.1-10 μm; in the experiment the particle sizes are three samples with D10, in μm, of 15, 24, and 26, respectively, D50, in μm, of 23, 36, and 45, respectively, and D90, in μm, of 36, 54, and 104, respectively while about 1-500 μm was previously claimed (dated 08/07/2024) and is disclosed in the instant specification (paragraph 61) having the same properties. Thus, the results from the experiment are not convincing.
Third, the instant specification discloses the claimed prepolymer functioning as delivery systems for oil and water-soluble substances such as vitamins (paragraph 131), suspending particulate additives for prolonged period (paragraph 132), and providing high viscosity cream with good feel characteristics and high absorbance of volatile solvents (paragraph 133), not as the only ingredients for providing matte effect in the experiment in the affidavit (example 8 in the instant specification).
Lastly, the samples in the experiments are EVO based elastomers (in non-polar emollient) without specifying the crosslinker. Thus, the examiner can’t assess the scope of the samples in the experiment with regard to the crosslinker. Also, the scope of the instant claims is much broader than the scope the samples in the experiments with regard to the epoxidized molecule (species EVO vs the claimed genus). Assuming – purely arguendo – there is criticality of the now claimed particle size ranges, there is no adequate basis for reasonably concluding that the great number and variety of compositions included by the claims would behave in the same manner as the single tested composition. In other words, Applicant has not shown that based on this single example, it is reasonable to expect that other embodiments falling within the scope of the claims will behave similarly. MPEP 716.02(b) III:
Evidence of unexpected properties may be in the form of a direct or indirect comparison of the claimed invention with the closest prior art which is commensurate in scope with the claims.
Conclusion
No claims are allowed.
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 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 mailing date of this final action.
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.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ali Soroush can be reached on 571-272-9925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HONG YU/
Primary Examiner, Art Unit 1614
Prosecution Insights