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 .
Claim Rejections - 35 USC § 112
Claims 1-16 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The claims recite, “An environmentally friendly non-toxic adhesive composition,” there is a lack of adequate support for the phrase “An environmentally friendly,” in the present specification.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-3, 10, and 14-16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2017/108865A (hereinafter, JINGJID).
Regarding claim 1, JINGJID teaches a cementitious adhesive composition comprising b) 20-90 wt% of aggregates (i.e., silica sand) (Abstract; p. 3, lines 1-6; p. 3, lines 20-24; p.10, line 22), 0.1-10 wt% of a polymer (p. 6, lines 21-24 and p. 10, line 26 to p. 11, lines 1-2), 0.001-5 wt% of starch (i.e., polysaccharide) (p. 9, lines 1-3), and etc. All the amounts are with respect to the total weight of the adhesive composition. The polymer is a water soluble or water redispersible polymer including polyvinyl esters, polyvinyl alcohols, polyacrylates, and etc. (p. 6, line 25 to p. 7, line 8).
The combined amount of polymer (0.1-10 wt%) and starch (0.001-5 wt%) is from 0.101 wt% to 15 wt% which is within the claimed range of 4 wt% to 70 wt% of an overall weight of the adhesive composition.
With regard to the claim limitations, “configured to adhere toy components together and to be disassembled in water,” which is intended use and it is the Examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that JINGJID disclose a cementitious adhesive composition comprising as presently claimed, it is clear that the composition of JINGJID would be capable of performing the intended use, i.e. adhere toy components and to be disassembled in water, presently claimed as required in the above cited portion of the MPEP, and thus, one of ordinary skill in the art would have arrived at the claimed invention.
Regarding claims 2 and 3, JINGJID teaches the composition comprises the polymer is a water soluble or water redispersible polymer in an amount of 0.1-10 wt% and starch is in the amount of 0.001-5 wt%.
Regarding claim 10, JINGJID teaches the composition comprises starch (i.e., polysaccharide) (p. 9, line 1-3). Polysaccharide is a well-known natural starch.
Regarding claim 14, JINGJID teaches the composition comprises aggregates (i.e., silica sand) in the amount of 20-90 wt% (Abstract; p. 3, lines 1-6; p. 3, lines 20-24).
Regarding claims 15 and 16, JINGJID teaches the composition comprises aggregates3 that have a grain size of at most 1 mm (p. 6, lines 15-18). “At most 1 mm” has a range of 0 to 1 mm which is within the claimed mesh sizes of the present invention.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 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 non-obviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-3, 10, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over CEULEMANS et al. (U.S. Publication No. 2012/0289628, hereinafter CEULEMANS) in view of SCHUMACHER et al. (U.S. Publication No. 2011/0247746, hereinafter SCHUMACHER).
Regarding claims 1 and 14, CEULEMANS teaches an adhesive composition including at least 7% and at most 30% by weight of adhesive component, wherein the adhesive component includes at least one polyvinyl alcohol and/or at least one starch (Abstract; [0033 and 0054-0056]; Claim 1). The composition comprises a filler including sand or silicon fillers [0092 and 0096] which provides very high and fast adhesive power and is able to also dry very fast [0096]. The composition and articles wherein any of these are employed to form an adhesive bond with a substrate (Abstract), more specifically, for corrugated paper or card board [0143].
However, CEULEMANS does not teach wherein a weight of the sand accounts for 30 wt% to 96 wt% of the overall weight of the adhesive composition.
In the same field of endeavor of adhesive composition for corrugated fiberboard, SCHUMACHER teaches the adhesive dispersion comprises inorganic fillers in the range from 1% to 90% by weight based on the solids content [0039] which includes silica [0040]. Silica reads on sand.
Given CEULEMANS teaches the adhesive composition comprises fillers including silica [0092 and 0096], it would have been obvious to a person of ordinary skill to have provided the 1 to 90% by weight of silica of SCHUMACHER for its art recognized function as taught by CEULEMANS (i.e., sand or silicon fillers provides very high and fast adhesive power and is able to also dry very fast). It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose, see In re Kerkhoven, 626 F.2d 846,850,205 USPQ 1069, 1072 (CCPA 1980).
With regard to the claim limitations, “configured to adhere toy components together and to be disassembled in water,” which is intended use and it is the Examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that CUELELMANS disclose an adhesive composition comprising as presently claimed, it is clear that the adhesive composition of CUELEMANS would be capable of performing the intended use, i.e. adhere toy components and to be disassembled in water, presently claimed as required in the above cited portion of the MPEP, and thus, one of ordinary skill in the art would have arrived at the claimed invention.
Regarding claims 2 and 3, CEULEMANS teaches the adhesive composition including at least 7% and at most 30% by weight of adhesive component, wherein the adhesive component includes at least one polyvinyl alcohol and/or at least one starch (Abstract; [0033 and 0054-0056]; Claim 1). The weight ratio of PVA to starch is 1/20 to 1 [0103]. In Example 8 [0168], the amount of polyvinyl alcohol is 200 parts and the total amount of components is 998 parts, 200 parts/998 parts x 100 wt% = 20 wt% of PVA. If the ratio of PVA to starch is 1 to 1, the composition comprises 20 wt% of PVA and 20 wt% of starch.
The amounts of PVA and starch within the 1/20 to 1 ratio can be varied/adjusted in order to arrive at the claimed range, it would have been obvious to one of ordinary skill in the art at the time the invention was made to select the portion of the prior art's range which is within the range of applicant's claims because it has been held to be obvious to select a value in a known range by optimization for the best results. As to optimization results, a patent will not be granted based upon the optimization of result effective variables when the optimization is obtained through routine experimentation unless there is a showing of unexpected results which properly rebuts the prima facie case of obviousness. See In re Boesch, 627 F.2d 272,276,205 USPQ 215,219 (CCPA 1980). See also In re Woodruff 919 F.2d 1575, 1578,16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990), and In re AIIer, 220 F.2d 454,456,105 USPQ 233,235 (CCPA 1955).
Regarding claim 10, CEULEMANS teaches the composition comprises starch including rice, wheat, corn, potato, tapioca, or pea starch. The starch may be used in natural form [0125].
Response to Arguments
Applicant's arguments filed 11/18/2025 have been fully considered but they are not persuasive. The response is insufficient to rebut the anticipation and obviousness rejection. Despite the applicant’s arguments in view of the teachings of the prior art, the position is maintained.
The applicant argues that the amendments would overcome the current prior art (JINGJID and CUELEMANS). More specifically, amended claim 1 explicitly distinguishes from other chemical adhesive compositions containing toxic additives. Amended claim 1 comprises a water-soluble adhesive, starch, and sand each of which is safe, non-toxic material.
The examiner has considered the applicant’s arguments, however, the examiner disagrees. The claims reciting the claim limitations, “An environmentally friendly non-toxic adhesive composition, configured to adhere toy components together and to be disassembled in water, the environmentally friendly non-toxic adhesive composition,” the phrase “an environmentally friendly non-toxic adhesive composition” lacks adequate support in the present specification. More specifically, there is no mention of the adhesive composition being “environmentally friendly,” therefore, clarification is needed.
Furthermore, with regard to the claim limitations, “configured to adhere toy components together and to be disassembled in water, the environmentally friendly non-toxic adhesive composition,” is merely intended use. The adhesive compositions of JINGJID and CUELEMANS would be capable because it has the same/similar components as the present invention. Also, the composition recites “comprising” leaves the claim open for the inclusion of unspecified ingredients even in major amounts, see Ex parte Davis et al., 80 USPQ 448 (PTO Ed. App. 1948). Also, the broad “comprising” and “containing” terminology do not exclude the presence of other ingredients in the composition, unlike the narrow “consisting of” language, see Swain v. Crittendon, 332 F 2d 820,14 1 USPQ 8 11 (CCPA 1964).
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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEVE V HALL whose telephone number is (571)270-7738. The examiner can normally be reached M-F, 9 am-5 pm, EST.
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 at (571) 272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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DEVE V. HALL
Primary Examiner
Art Unit 1763
/DEVE V HALL/Primary Examiner, Art Unit 1763