DETAILED ACTION
On Office Action was mailed on 06/24/2025.
Applicant filed a Response on 12/22/2025. Claims 1-2, 9-11 and 19 were amended. Claims 3, 5-6, 12 and 14-15 were canceled.
Claims 1-2, 4, 7-11,13, and 16-19 are pending.
Claims 1-2, 4, 7-9, and 19 are rejected.
Claims 10-11, 13, and 16-18 are withdrawn from consideration.
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 .
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-2, 4, 7-9 and 19, in the reply filed on 12/22/2025 is acknowledged. The traversal is on the ground(s) that the claims, as amended, share a special technical feature that makes a contribution over the applied references, i.e., Yu et al, CN 109627984A, and Nishigaki et al, JP H07286139. This is not found persuasive because the requirement for unity of invention is determined based on the claimed invention at the time the requirement was made. Further, Examiner maintains the special technical feature of the presently claimed invention does not make a contribution over the prior art for the reasons set forth in the below 35 U.S.C. §103 rejection over Yu in view of Matsuda.
The requirement is still deemed proper and is therefore made FINAL.
Claims 10-11, 13, and 16-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 12/22/2025.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-2, 4, 7-9 and 19 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.
Claim 1 has been amended to claim “wherein the fatty alcohol is a long-chain alcohol having from 4 to 40 carbon atoms (emphasis added).” Original claim 2 claimed “wherein the fatty alcohol is a long-chain alcohol having from 6 to 40 carbon atoms (emphasis added).” Further, the specification discloses that the long-chain alcohols have from 6 to 40 carbon atoms (see page 4, lines 29-20, and page 5, lines 29-31). Therefore, basis for the presently claimed long-chain alcohols having from 4-5 carbon atoms does not exist in the specification as originally filed.
Regarding dependent claims 2, 4, 7-9 and 19, these claims do not remedy the deficiencies of parent claim 1 noted above, and are rejected for the same rationale.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-2, 4, 7-9 and 19 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 1, 2, 4, 7-9 and 19 recite, the term “wax-like formulation” (emphasis added). However, it is unclear what the structure of the formulation, e.g., texture, viscosity, etc., must be in order to encompass being “wax-like”. The examiner interprets the term as a formulation comprising the claimed amounts of the claimed components. It is advised to delete “wax-like” in the claims.
Claim 1 contains the trademark/trade names “UNILINTM 350” and “UNILINTM 425.” Claims 8 and 9 contain the trademark/trade name “Irganox B-225.” Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe the fatty alcohol or polyol in claim 1, and the antioxidant in claims 8 and 9, and accordingly, the identification/description is indefinite.
The term “lesser quantities” in claim 2 is a relative term which renders the claim indefinite. The term “lesser quantities” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention, i.e., lesser than what quantity, e.g., lesser than 1 wt.%, 5 wt.%, 10 wt.%?
The term “longer-chain primary alcohols” in claim 2 is a relative term which renders the claim indefinite. The term “longer-chain primary alcohols” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Although the claim recites that such “longer-chain primary alcohols” may have up to 58 carbon atoms, it is unclear what lower limit falls within the claimed “longer-chain,” e.g., 10, 20, 30, or 40 carbon atoms?
Claim 2 has been interpreted as further requiring a quantity of a long-chain primary alcohol having up to 58 carbon atoms for this office action.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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 nonobviousness.
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 1-2, 4, 7-9 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Yu et al, CN 109627984A (Yu) in view of Matsuba et al, JP H08-311409A (Matsuba), taken in view of evidence by BASF, “Irganox® B 255” (BASF) and PubChem “Neopentanetetrayl 3-(dodecylthio)propionate” (PubChem).
The Examiner has provided machine translations of Yu and Matsuba with this office action. The citation of the prior art in this rejection refers to the machine translations.
Regarding claims 1 and 7, Yu teaches a tackifying resin composition (i.e., a wax-like formulation) comprising the following raw materials by weight:
100 parts rosin resin,
to 80 parts hydroxyl-containing silane,
0 to 50 parts of alcohol,
0.2 to 0.4 parts catalyst, and
0.3 to 0.6 parts antioxidant (Yu; page 2, lines 26-36).
The tackifying resin composition comprises a total of 100.6 to 231.0 parts by weight (100+0.1+0+.2+0.3=100.6 parts; 100+80+50+0.4+0.6=231 parts).
The rosin resin comprises 43.3% to 99.4% by weight of the total composition (100 parts rosin/100.6 parts total *100=99.4% rosin; 100 parts rosin/231 parts total * 100=43.3% rosin).
The alcohol comprises 0% to 49.7% by weight of the total composition (0 parts alcohol/231 parts total *100=0% by alcohol; 50 parts alcohol/100.6 parts total * 100=49.7% alcohol).
Using the same calculation methods, the tackifying composition of Yu comprise the following raw material weight percentages, based on the total weight of the tackifying composition:
43.3% to 99.4% by weight rosin resin,
0.04% to 79.5% by weight hydroxyl-containing silane,
0.0% to 49.7% by weight alcohol,
0.1% to 0.4% by weight catalyst, and
0.1 to 0.6% by weight antioxidant.
The rosin resin can be gum rosin as claimed (Yu; page 2, line 38). The catalyst can be phosphoric acid as claimed (Yu; page 2, lines 50-51).
Given that Yu discloses rosin resins and catalysts that overlap the presently claimed rosins and catalysts, including gum rosin and phosphoric acid, it therefore would have been obvious to one of ordinary skill in the art to use a gum rosin and a phosphoric acid catalyst, which are both disclosed by Yu and encompassed within the scope of the present claims.
Examples of the antioxidants include wherein the antioxidant is one or more of Irganox 1010 and Irgafos 168 (Yu; page 2, lines 51-52). As is evidenced by Applicants’ specification at page 5, lines 5-8, a blend of tris(2,4-ditert- butylphenyl)phosphite and pentaerythritol tetrakis[3-[3,5-di-tert-butyl-4- hydroxyphenyl]propionate] is commercially available as Irganox B-225 from BASF. As is evidenced by BASF, Irganox B 255 is a blend Irgafos 168 and Irganox 1010 (BASF, “Chemical formula,” page 1). Irgafos 168 comprises tris(2,4-ditert- butylphenyl)phosphite as claimed, and Irganox 1010 comprises pentaerythritol tetrakis[3-[3,5-di-tert-butyl-4-hydroxyphenyl]propionate] as claimed (BASF, “Chemical formula,” page 1).
Given that Yu discloses tackifying compositions that overlap the presently claimed wax-like formulations, including the antioxidant being a combination of Irganox 1010 and Irgafos 168, which comprises pentaerythritol tetrakis[3-[3,5-di-tert-butyl-4- hydroxyphenyl]propionate] and tris(2,4-ditert- butylphenyl)phosphite respectively as claimed, it therefore would have been obvious to one of ordinary skill in the art to use the tackifying composition comprising Irganox 1010 and Irgafos 168, which are both disclosed by Yu and encompassed within the scope of the present claims.
43.3% to 99.4% by weight gum rosin overlaps in scope with the claimed about 20% to 86% gum rosin, based on the weight of the total formulation.
0.0% to 49.7% by weight alcohol overlaps in scope with the claimed about 12% to about 80% fatty alcohol or polyol, based on the weight of the total formulation.
0.1% to 0.4% by weight phosphoric acid catalyst overlaps in scope with the claimed about 0.1 to about 4% phosphoric acid, based on the weight of the total formulation.
0.1 to 0.6% by weight blend of tetrakis[3-[3,5-di-tert-butyl-4- hydroxyphenyl]propionate] and tris(2,4-ditert- butylphenyl)phosphite antioxidant overlaps in scope with the claimed about 0.1% to about 3% of said antioxidant blend.
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).
The preparation method comprises adding rosin resin, antioxidant, catalyst and alcohol to a reaction kettle, i.e. a one-pot process as claimed (Yu; page 4, lines 33-42). The hydroxysilane is added to start the esterification reaction (Yu; page 3, line 6 and page 4, line 44).
Other antioxidants suitable for use include Sumilizer TP-D (Yu; page 2, line 53).
The alcohol is one or more selected from isotridecyl alcohol (i.e., a long-chain primary fatty alcohol having 13 carbon atoms as claimed), n-butanol, polyester polyol, polyether polyol and pentaerythritol (i.e., a polyol having 5 atoms as claimed) (Yu; page 2, lines 47-48).
Yu does not explicitly teach wherein the alcohol is at least one selected from the group consisting of cetyl alcohol, stearyl alcohol, UNILINTM 350, UNILINTM 425, 1,4-butanediol, 1,6-hexanediol, or 1,10-decanediol as presently claimed.
With respect to the difference, Matsuba teaches a method for improving the color stability of a rosin ester which may be used as a tackifier (Matsuba; page 1, lines 43-46). The resin can be gum rosin, wherein the rosin is heated in the presence of pentaerythritol tetrakis (beta-laurylthiopropionate) (Matsuba; page 2, lines 21-25). As is evidenced by PubChem, pentaerythritol tetrakis (3-laurylthiopropionate) is the antioxidant Sumilizer TP-D as taught by Yu (PubChem; page 25, “Depositor-Supplied Synonyms,” item# 2 and 11-12). Phosphoric acid can be used as an esterification catalyst (Matsuba; page 2, lines 47-48). Where a high degree of stability is required, a blocked phenolic antioxidant can be added (Matsuba; page 2, lines 53-54).
The polyol and monohydric alcohol components used for esterifying the rosin include polyethylene glycol and polypropylene glycol (i.e., polyether polyols) and pentaerythritol as taught by Yu, as well as stearyl alcohol as claimed (Matsuba; page 2, lines 56-59).
Matsuba is analogous art as it teaches formulations comprising gum rosin, fatty alcohols and/or diols, phosphoric acid, and a blocked phenolic antioxidant.
In light of the disclosure of Matsuba of the equivalence and interchangeability of using pentaerythritol and polyether polyols (such as polyethylene glycol and polypropylene glycol) as disclosed in Matsuba, with stearyl alcohol as presently claimed, it would therefore have been obvious to one of ordinary skill in the art to use stearyl alcohol as the gum rosin esterifying alcohol in Yu, and thereby arrive claimed invention.
With respect to claim 2, Yu in view of Matsuba are relied upon as teaching the limitations of claim 1 as discussed above. Yu teaches primary “longer-chain” primary alcohols such as isotridecyl alcohol (i.e., a long-chain primary fatty alcohol having 13 carbon atoms as claimed) and n-butanol (i.e., a C4 primary alcohol) for use in the esterification reaction with gum rosin.
Matsuba teaches, e.g., n-octyl alcohol, decyl alcohol, laurel alcohol and stearyl alcohol (i.e., long-chain primary alcohols) for esterifying gum rosin (Matsuba; page 2, lines 56-57).
Based on the teachings and Yu in view Matsuba of the various alcohols suitable for the esterification of gum rosin, it would have been obvious to one of ordinary skill in the art to use a combination of alcohols, such as a combination of stearyl alcohol and another long-chain primary alcohol as claimed, because the combination of known substances for the same purpose has been held to have been prima facie obvious. "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.... [T]he idea of combining them flows logically from there having been individually taught in the prior art." In re Kerhoevn, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
With respect to claim 4, Yu in view of Matsuba taken in view of evidence by BASF are relied upon as teaching the limitations of claim 1 as discussed above, wherein the antioxidant comprises a blend of tetrakis[3-[3,5-di-tert-butyl-4- hydroxyphenyl]propionate] and tris(2,4-ditert- butylphenyl)phosphite as claimed (Yu; page 2, lines 51-52 and BASF, “Chemical formula,” page 1).
Given that the antioxidant of Yu is substantially identical to the antioxidant as used in the present invention, as set forth above, it is clear that the antioxidant of Yu would inherently prevent or minimize oxidation or color darkening of the formulation as presently claimed.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
With respect to claim 8, Yu in view of Matsuba taken in view of evidence by BASF are relied upon as teaching the limitations of claim 1 as discussed above, wherein the antioxidant comprises a blend of Irgafos 168 and Irganox 1010 (Yu; page 2, lines 50-52). As evidenced by BASF, the claimed Irganox B-225 comprises a blend of Irgafos 168 and Irganox 1010 (BASF; page 1, “Chemical formula”). Therefore, the antioxidant of Yu is substantially identical to the antioxidant Irganox B-225 as used in the present invention.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
Regarding claim 9, Yu in view of Matsuba taken are relied upon as teaching the limitations of claim 1 as discussed above, wherein the compositions comprise:
43.3% to 99.4% by weight gum rosin resin (Yu; page 2, line 38),
0.04% to 79.5% by weight hydroxyl-containing silane,
0.0% to 49.7% by weight alcohol, wherein the alcohol is stearyl alcohol (Matsuba; page 2, lines 56-57),
0.1% to 0.4% by weight phosphoric acid catalyst (Yu; page 2, lines 50-51), and
0.1 to 0.6% by weight antioxidant comprising Irganox 1010 and Irgafos 168 (see Yu; page 2, lines 26-36 and 50-52. See also page 8 above for calculations).
43.3% to 99.4% by weight gum rosin overlaps in scope with the claimed about 47% to about 52% gum rosin, based on the weight of the total formulation.
0.0% to 49.7% by weight stearyl alcohol overlaps in scope with the claimed about 46% to about 51% stearyl alcohol, based on the weight of the total formulation.
0.1 to 0.6% by weight blend of Irganox 1010 and Irgafos 168 overlaps in scope with the claimed about 0.5% to about 2% of said Irganox B-255.
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).
The only deficiency of Yu in view of Matsuda is that Yu discloses the use of 0.1% to 0.4% by weight phosphoric acid catalyst, while the present claims require from about 0.5% to about 2% of the phosphoric acid catalyst.
It is apparent, however, that the instantly claimed amount of “about 0.5%” and the 0.4% by weight taught by Yu are so close to each other that the fact pattern is similar to the one in In re Woodruff , 919 F.2d 1575, USPQ2d 1934 (Fed. Cir. 1990) or Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed.Cir. 1985) where despite a “slight” difference in the ranges the court held that such a difference did not “render the claims patentable” or, alternatively, that “a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough so that one skilled in the art would have expected them to have the same properties”.
In light of the case law cited above and given that there is only a “slight” difference between the amount of “0.4%” disclosed by Yu and the amount disclosed in the present claims, and further given the fact that no criticality is disclosed in the present invention with respect to the amount of phosphoric acid, it therefore would have been obvious to one of ordinary skill in the art that the amount of phosphoric acid disclosed in the present claims is but an obvious variant of the amounts disclosed in Yu, and thereby one of ordinary skill in the art would have arrived at the claimed invention.
Regarding claim 19, Yu in view of Matsuba taken are relied upon as teaching the limitations of claim 1 as discussed above wherein the compositions comprise:
43.3% to 99.4% by weight gum rosin resin (Yu; page 2, line 38),
0.04% to 79.5% by weight hydroxyl-containing silane,
0.0% to 49.7% by weight alcohols, including fatty alcohols and polyols (Yu; page 2, lines 47-48 and Matsuba; page 2, lines 56-57),
0.1% to 0.4% by weight phosphoric acid catalyst (Yu; page 2, lines 50-51), and
0.1 to 0.6% by weight antioxidant comprising Irganox 1010 and Irgafos 168 (see Yu; page 2, lines 26-36 and 50-52. See also page 8 above for calculations).
43.3% to 99.4% by weight gum rosin overlaps in scope with the claimed about 47% to about 52%, based on the weight of the total formulation.
0.0% to 49.7% by weight fatty alcohol and/or polyol overlaps in scope with the claimed about 46% to about 51%, based on the weight of the total formulation.
0.1 to 0.6% by weight antioxidant overlaps in scope with the claimed about 0.5% to about 2%, based on the weight of the total formulation.
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).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Kolodny, US 2797167, teaches that the addition of higher monohydric fatty alcohols, such as stearic alcohol, to rosin-wax hot melts results in homogeneous mixtures which are free from any tendency to form two layers.
Jaycock et al, GB 2268941, teaches that by blending 0.5-49% fatty alcohols with gum rosin, the melting point can be significantly reduced.
JP H0264182A and JP S59230072A, teach the esterification of gum rosin with a fatty alcohol or polyol, including stearyl alcohol, wherein phosphoric acid may be used as a catalyst.
Matsushima et al, JP H03212470A, teaches the esterification of gum rosin with a fatty alcohol or polyol, including stearyl alcohol, wherein a phenol type antioxidant may be used.
Xu et al, CN 110577799A, teaches an epoxy modified rosin resin comprising gum rosin, unsaturated acid, alcohol, epoxy compound, catalysts A and B, and an antioxidant. The rosin can be gum rosin, and the antioxidant is preferably BHT.
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/CDL/Examiner, Art Unit 1732
/CORIS FUNG/Supervisory Patent Examiner, Art Unit 1732