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 .
Response to Arguments
In response to the Office Action dated 9 October 2025, the Applicant submits the following:
-- Claims 3-5, 12, 13 & 15-20 have been canceled.
-- Claims 7, 10, 11 & 14 have been withdrawn.
-- Independent base claim 1 has been amended to incorporate limitations previously established by the now canceled claim 4.
-- Claims 6, 7 & independent base claim 1 have been further amended for clarity.
-- No new matter has been entered.
Applicant challenges the Restriction/Election requirement set forth in the Office Action dated 14 July 2025 (Remarks, p. 5 & 6).
Examiner points to the previous Office Action (dated 14 July 2025) where it was demonstrated that the restriction requirement was deemed proper and made final.
The Applicant’s previous traversal was sufficient to preserve the right to petition from the requirement for restriction. Because the restriction requirement has been made final, the Applicant may petition the Director to review the requirement under 37 C.F.R. 1.144. Petition may be deferred until after final action on or allowance of claims to the invention elected, but must be filed not later than appeal. See MPEP § 818.01(c).
The rejection of claims 1, 2, 4, 6, 8, 9, 13 & 19 under 35 U.S.C. § 103 as being unpatentable over Krysiak (US 3,419,452) in view of Parker et al. (US 2013/0065012 A1) is traversed by the Applicant (Remarks, p. 7). Applicant points to Krysiak (col. 3, lines 18-23) stating, formaldehyde will be present in the adhesive layer even if the formaldehyde donor (hexamethylenetetramine) is used. Applicant reasons that hexamethylenetetramine decomposes into formaldehyde and ammonia, and therefore formaldehyde will be present (Remarks, p. 8, top two paragraphs).
Examiner points to the modification of Krysiak in view of Parker which teaches the use of an aldehyde donor in tandem with a formaldehyde scavenger. Employing a donor rather than formaldehyde along with a formaldehyde scavenger will result in a composition free of formaldehyde. Additionally, the Applicant has not provided any evidence to support the assertion that hexamethylenetetramine will decompose into formaldehyde and ammonia under the indicated conditions.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
The Applicant identifies four unique independent groups/inventions detailed by Parker (Remarks, p. 8 & 9). Applicant states the Office Action focused on the hydroxyaromatic-aldehyde adhesive composition pertaining to claims 35-82 in Parker (Remarks, p. 9, bottom paragraph), arguing the rejection relied on what Parker claimed as their invention in the claims (Remarks, p. 10). Applicant points to alleged deficiencies in Parker (Remarks, p. 10 & 11).
Examiner notes the rejection relied on disclosures within Krysiak (US 3,419,452) and Parker et al. (US 2013/0065012 A1). Said disclosures encompass the entirety of both documents. Pertaining to the aforementioned alleged deficiencies in Parker, the polyisocyanates taught by Parker utilized in the rejection were polymethylene polyphenyl polyisocyanates and methylenediphenyl polyisocyanates, both of which are provided as suitable examples of compounds for use as compound (C) in [0028] of the instant specification (p. 27, line 28 – p. 28, line 1).
Applicant concludes with traversal of the Double Patenting rejections of claims 1, 4 & 6 over claims 1, 6 & 7 of copending application 18/257,100 (hereinafter ‘100). Applicant states that gelatin is employed as a protein, pointing to [0052] of the Specification & IUPAC definitions for support, and reasons this differentiates gelatin from polypeptides (Remarks, p. 11).
Examiner highlights that regardless whether or not gelatin is employed as a protein, it is still a polypeptide. Polypeptides having a large molecular weight may trigger a classification of certain polypeptides as proteins, but this does not nullify the fact that they are polypeptides. The provided IUPAC definition acknowledges that all proteins are polypeptides.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 2, 8 & 9 are rejected under 35 U.S.C. § 103 as being obvious over Krysiak (US 3,419,452) in view of Takeno et al. (US 2018/0282574 A1) & Parker et al. (US 2013/0065012 A1).
Regarding claims 1, 2 & 8, Krysiak teaches adhesive compositions for fibrous materials with improved adhesion to rubber (col. 1, lines 22-23). Said composition comprises a rubber latex containing an unsaturated diene, like synthetic butadiene/styrene/vinyl pyridine latex, a polypeptide, and an epoxylated novolak resin comprising at least 2 epoxy groups (col. 1, line 60 – col. 2, line 2). The polypeptide may be gelatin (col. 2, line 70 – col. 3, line 3). The adhesive mixture is aqueous (col. 3, lines 4-6). The inventive composition includes formaldehyde, or a formaldehyde donor such as hexamethylenetetramine (col. 3, lines 18-23). Using a donor, (i.e., hexamethylenetetramine) results in a composition absent of formaldehyde. Hexamethylenetetramine will incorporate the same methylene group that would result via formaldehyde crosslinking, but no formaldehyde will be present.
Krysiak does not teach a compound comprising the isocyanate group as required by claim 1.
In the same field of endeavor, Takeno teaches compositions comprising a blocked polyisocyanate (Abstract) suitable for use in adhesives (p. 17, [0215]). Suitable blocking agents for said polyisocyanates include oximes, phenols, alcohols and lactams (p. 1, [0003]). The blocked polyisocyanate composition preferably contains a blocked isocyanate wherein the blocking agent is malonic acid diester (p. 5, [0062]).
Examples of preferred alcohols include methanol and ethanol (p. 4, [0052]). Examples of other compounds suitable for use as the blocking agent include methyl cellosolve, ethyl cellosolve, butyl cellosolve and cyclohexanol (p. 10, [0114]). All of the examples provided by Takeno disclosed herein read on the blocking agents provided by the Applicant (Specification; p. 19, line 5 – p. 21, line 15).
Takeno expressly states the storage stability and compatibility of the adhesive composition are improved when anyone of the aforementioned alcohols (methanol, ethanol, cellosolves) are employed as the blocking agent of the blocked isocyanate (p. 11, [0124]).
It would have been obvious to one of ordinary skill in the art at the time of filing to select any one of the blocked isocyanates taught by Takeno and incorporate into the adhesive composition taught by Krysiak, as Takeno expressly discloses this will improve the storage stability and compatibility of the inventive composition.
Both Krysiak and Takeno are silent on the presence of resorcin or formaldehyde.
In the same field of endeavor, Parker teaches adhesives comprising polypeptides (Abstract). Parker teaches adhesives comprising a protein component, a urea compound/aldehyde component and a prepolymer (p. 6, [0069], [0070]). Exemplary prepolymers suitable for use as said prepolymer include isocyanate-based prepolymers, epoxy-based prepolymers, and latex prepolymers (p. 12, [0136]).
Parker teaches the use of formaldehyde but only to the extent of establishing an aldehyde source. Examples of suitable compounds establishing an aldehyde source that may be used in place of formaldehyde are provided (p. 6, [0072]). Use of any one of these would result in a composition free of formaldehyde. Additionally, Parker also teaches the use of formaldehyde scavengers, further optimizing the performance of the adhesive composition (p. 19-20, [0211], [0215]). Simultaneously employing a donor (rather than formaldehyde itself) in tandem with a formaldehyde scavenger to eliminate formaldehyde, will result in a composition free of formaldehyde.
It would have been obvious to one of ordinary skill in the art at the time of filing to incorporate an aldehyde donor in tandem with a scavenger taught by Parker, when making the modification of Krysiak in view of Takeno, as Parker discloses the benefits thereof and demonstrates the compatibility thereof in similar compositions comprising similar (if not identical) constituents. It is prima facie obvious to substitute equivalents where the equivalence is recognized by the prior art. See MPEP § 2144.06. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
Modification of Krysiak in view of Takeno & Parker as detailed above results in a composition reading on all limitations established by instant claims 1, 2 & 8.
Regarding claim 9, maintaining the modification of Krysiak in view of Takeno & Parker previously detailed, Parker teaches the epoxide component may come from a reaction of epichlorohydrin and polyols or polyphenols, resulting in diglycidyl ethers. Examples of these are diglycidyl ethers of bisphenol-A, bisphenol-F, and epoxidized novolac resins (p. 14, [0154],[0155]). It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
Claim 6 is rejected under 35 U.S.C. § 103 as being obvious over Krysiak (US 3,419,452) in view of Takeno et al. (US 2018/0282574 A1) & Parker et al. (US 2013/0065012 A1) in further view of Goto et al. (US 4,433,017).
Regarding claim 6, maintaining the modification of Krysiak in view of Takeno & Parker previously detailed, neither Krysiak nor Takeno nor Parker teach the (C-2) aqueous urethane compound as required by the claim.
In the same field of endeavor, Goto teaches a thermally reactive water-soluble urethane prepolymer having a plurality of masked isocyanate groups, said prepolymer having the formula (I) (Abstract). This urethane prepolymer corresponds to the aqueous compound (C) of the instant application. Goto details polyisocyanate compounds having 3 to 5 isocyanate groups (col. 2, lines 33-42), compounds having 2-4 active hydrogen groups (col. 2, line 57 – col. 3, line 10). Examples thereof provided as polybutadiene-polyols, or polychloroprene-polyols, and copolymers thereof with other vinyl monomers, both polyols are provided in the instant specification for this purpose as well (p. 24, [0074]). Goto states all of these ‘active hydrogen compounds’ should have a molecular weight less than 5,000 & preferably less than 2,000 (col. 3, lines 14-24). Goto teaches phenols as masking agents (col. 3, lines 26-30). Goto teaches the use of a compound with a hydrophilic group or a polyoxyethylene chain (col. 1, lines 14-20).
It would have been obvious to one of ordinary skill in the art at the time of filing to further modify Krysiak in view of Takeno & Parker, by applying teachings from Goto to the blocked isocyanates taught by Takeno, as Goto details compounds suitable for these similar end uses and further teaches processes to enable one to do so. A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
Additionally, claim 6 is a product-by-process limitation, with the claimed mixing ratios relating to the process rather than the final product. As such, these limitations need not be taught by the prior art.
Modification of Krysiak in view of Takeno & Parker in further view of Goto as detailed above reads on all the product limitations of claim 6.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1 & 6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6 & 7 of copending Application No. 18/257,100 (hereinafter ‘100). Although the claims at issue are not identical, they are not patentably distinct from each other for the following reasons.
Regarding claims 1 & 6 of the instant application, ‘100 claims the following:
An adhesive composition for organic fibers comprising:
(A) rubber latex having unsaturated diene,
(B) polypeptide, and at least one compound selected from the group consisting of the following (C) and (E),
(C) an aqueous compound having a (thermal dissociative blocked) isocyanate group, and
(E) polyphenol, wherein the (E) polyphenol is a plant-derived compound having a plurality of phenolic hydroxy groups in a molecule, and the adhesive composition for organic fibers contains no resorcin (p. 1, claim 1).
This reads on all the limitations of the instant claim 1. The adhesive composition for organic fibers according to claim 1, wherein the (C) aqueous compound having a (thermal dissociative blocked) isocyanate group is (C-2) an aqueous urethane compound having a (thermal dissociative blocked) isocyanate group (p. 2, claim 6).
The (C-2) an aqueous urethane compound having a (thermal dissociative blocked) isocyanate group defined in claim 6 is further limited by claim 7 (p. 2, claim 7), which is identical to the instant claim 6. As the instant claim 6 depends from the instant claim 1, and all limitations of instant claims 1 & 6 are established in claims 1, 6 & 7 of ‘100, respectively, claim 7 reads on all limitations established by the instant claim 6.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 CHRISTIAAN ROELOFSE whose telephone number is (571)272-2825. The examiner can normally be reached Monday-Friday 8:00-4:00 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, Robert Jones can be reached at (571)270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/CHRISTIAAN ROELOFSE/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
Prosecution Insights