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 .
The amendment of 12/22/25 has been entered. Claims 1, 2, 5, 7, 11, 13, 16, 18, 20-22, 27, 30, 33, 35, 37-38, 41-42, and 58 are pending.
Rejections
Double Patenting
1. 35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
2. 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.
3. Claims 1, 2, 5, 7, 11, 13, 16, 18, 20-22, 27, 30, 33, 35, 37-38, 41-42, and 58 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4, 6, 8, 10-13, 15, 22, 25-26, 30, 35-36, 38, 40, 42, 44, and 50 of copending Application No. 17/904555 in view of US Pat. Application Publication No. 2019/0144727 Anderson et al., WO 2009/080697 Rodrigues et al., WO 2009/080696 Trksak et al., Noulis et al., “Sodium Trimetaphosphate Crosslinked Starch Films Reinforced with Montmorillonite”, Polymers, 2023, 15, 3540, https://doi.org/10.3390/polym15173540, pages 1 to 12, and US Pat. Application Publication No. 2018/0371309 Chan et al.
The copending claims recite all of the limitations of the instant claims except for the 0.1 to 10 wt% of sodium trimetaphosphate according to the instant claims. See the copending claims for all of the limitations of the instant claims except for the 0.1 to 10 wt% of sodium trimetaphosphate.
Anderson shows the desirability of crosslinking similar compositions to those of the instant claims and the copending claims in order to improve their properties, including wet and dry tensile strengths, noting Anderson, paragraphs [0081] and [0082] and Table 3. Anderson, paragraph [0036], discloses using 4 to 20% dry weight of the poly(glycidyl ether) crosslinker. Anderson, paragraph [0010], teaches that the cured adhesive allows the composition to adhere to itself and the wood substrate more effectively than uncured composition. This crosslinking would have been expected to improve the lack of durability and poor water resistance mentioned in Anderson, paragraph [0003], due to the presence of the covalent crosslinking bonds. The results of Anderson’s examples and comparative examples are noted, such as those of Anderson, paragraph [0081] and Table 3 and paragraph [0082].
Rodrigues teaches that sodium trimetaphosphate is a crosslinker for hydroxy containing polymers generally at the abstract, page 3, lines 28-31, page 4, lines 3-5, noting the sodium trimetaphosphate of line 5, and page 5, lines 7-14, noting the sodium trimetaphosphate of line 14. Rodrigues, page 5, line 30 to page 6, line 7 describes crosslinking conditions for their polymers and crosslinkers. The entirety of Rodrigues, such as page 1, lines 13-21, teaches that their crosslinkers are replacements for formaldehyde due to the concerns about toxicity and environmental damage due to formaldehyde containing resins. This implies that the sodium trimetaphosphate is safer than formaldehyde.
Rodrigues teaches amounts of crosslinker which include amounts falling within the scope of the instantly claimed amounts of sodium trimetaphosphate at page 6, lines 15-19.
Rodrigues shows their crosslinkers to function at higher pHs, noting page 4, lines 19-25 and page 6, lines 8-10.
Rodrigues shows sodium trimetaphosphate and poly(glycidyl ethers) to be functionally equivalent as crosslinkers for polymers having OH groups at page 4, lines 3-5 and 13-15.
Trksak teaches the use of sodium trimetaphosphate for crosslinking polysaccharides generally at the abstract, page 2, lines 15-19, page 4, lines 6-7, noting “wood”, page 4, lines 25-27, noting the cellulose of line 27, page 7, lines 24-31, noting the sodium trimetaphosphate of line 31, page 9, lines 28-30, noting the formation of non-reversible bonds and the sodium trimetaphosphate of lines 29-30, and page 10, lines 15-19, noting the amounts of crosslinker which fall within the scope of the instantly claimed amounts of sodium trimetaphosphate. Trksak, page 11, lines 16-22, particularly line 17, shows that Trksak’s crosslinkers can crosslink at high pHs.
Trksak, page 12, lines 11-15, teaches that the amount of crosslinker is a function of the type of crosslinker and the application in which the binder is used. The amounts therein include the amounts of sodium trimetaphosphate of the instant claims. The lack of further guidance shows that it is within the ability of the ordinary skilled artisan to determine how much crosslinking agent they need to give their desired end-use properties.
Noulis teaches that sodium trimetaphosphate is suitable for food packaging. See the abstract of Noulis. Noulis, page 2 of 12, third paragraph teaches sodium trimetaphosphate to be safe and non-toxic. It would have been expected that a crosslinker suitable for food contact is safer and less toxic than many chemical crosslinkers.
Chan, paragraphs [0076] and [0077], shows poly(glycidyl ethers) and sodium trimetaphosphate to be functional equivalents as crosslinkers for biopolymers.
It would have been obvious to one of ordinary skill in the art to use the instantly claimed amounts of sodium trimetaphosphate to crosslink the adhesives of the copending claims because Anderson teaches the crosslinking of adhesive compositions which are similar to those of the copending claims in order to improve the adhesive properties, including wet and dry tensile strengths, Rodrigues and Trksak teach sodium trimetaphosphate in amounts including those of the instantly claimed amounts of sodium trimetaphosphate to be crosslinkers for polymers, including polysaccharides including cellulose and starch, Noulis teaches sodium trimetaphosphate to be safe for contact with food and to be non-toxic, and Rodrigues and Chan teach sodium trimetaphosphate to be functionally equivalent to poly(glycidyl ether) for crosslinking OH containing polymers such that it would have been obvious to the ordinary skilled artisan to substitute the prior art sodium trimetaphosphate for Anderson’s poly(glycidyl ether) crosslinker and to expect similar crosslinking properties in the adhesives of the copending claims (MPEP 2144.06 paragraph II) as well as the lower toxicity taught by Noulis, the benefits of crosslinking adhesives like those of the instant claims as taught by Anderson, and the benefits of crosslinking polyols, including cellulose and starch, with sodium trimetaphosphate, as taught by Rodrigues and Trksak, in proportion to the amount of sodium trimetaphosphate used in the copending claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 103
4. 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.
5. Claims 1, 2, 5, 7, 11, 13, 16, 18, 20-22, 27, 30, 33, 35, 37-38, 41-42, and 58 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2021/168114 Anderson et al. (Anderson (114)) in view of US Pat. Application Publication No. 2019/0144727 Anderson et al. (Anderson (727)), WO 2009/080697 Rodrigues et al., WO 2009/080696 Trksak et al., Noulis et al., “Sodium Trimetaphosphate Crosslinked Starch Films Reinforced with Montmorillonite”, Polymers, 2023, 15, 3540, https://doi.org/10.3390/polym15173540, pages 1 to 12, and US Pat. Application Publication No. 2018/0371309 Chan et al.
Anderson (114) teaches all of the limitations of the instant claims except for the 0.1 to 10 wt% of sodium trimetaphosphate according to the instant claims. See the entirety of Anderson (114) for all of the limitations of the instant claims except for the 0.1 to 10 wt% of sodium trimetaphosphate. Particularly note Anderson (114), the abstract and paragraphs [0003], [0004], [0005], [0021], [0025], [0026], [0027], [0028], [0029], noting the reaction between the carbohydrate, polypeptide component, and wood substrate, noting that at least the cellulose, starch, and carbohydrate have OH groups that can react with sodium trimetaphosphate to give crosslinking according to Rodrigues and Trksak, [0030], [0031], [0032], [0033], which falls within the scope of the instant claim 33, [0036], [0042], noting the curing, [0043], which falls within the scope of the instant claim 58, [0045], noting the exemplified ingredients in the table, and the remainder of the document.
Anderson (727) shows the desirability of crosslinking similar compositions to those of the instant claims and the copending claims in order to improve their properties, including wet and dry tensile strengths, noting Anderson (727) , paragraphs [0081] and [0082] and Table 3. Anderson (727) , paragraph [0036], discloses using 4 to 20% dry weight of the poly(glycidyl ether) crosslinker. Anderson (727), paragraph [0010], teaches that the cured adhesive allows the composition to adhere to itself and the wood substrate more effectively than uncured composition. This crosslinking would have been expected to improve the lack of durability and poor water resistance mentioned in Anderson (727), paragraph [0003], due to the presence of the covalent crosslinking bonds. The results of Anderson’s (727) examples and comparative examples are noted, such as those of Anderson (727), paragraph [0081] and Table 3 and paragraph [0082].
Rodrigues teaches that sodium trimetaphosphate is a crosslinker for hydroxy containing polymers generally at the abstract, page 3, lines 28-31, page 4, lines 3-5, noting the sodium trimetaphosphate of line 5, and page 5, lines 7-14, noting the sodium trimetaphosphate of line 14. Rodrigues, page 5, line 30 to page 6, line 7 describes crosslinking conditions for their polymers and crosslinkers. The entirety of Rodrigues, such as page 1, lines 13-21, teaches that their crosslinkers are replacements for formaldehyde due to the concerns about toxicity and environmental damage due to formaldehyde containing resins. This implies that the sodium trimetaphosphate is safer than formaldehyde.
Rodrigues teaches amounts of crosslinker which include amounts falling within the scope of the instantly claimed amounts of sodium trimetaphosphate at page 6, lines 15-19.
Rodrigues shows their crosslinkers to function at higher pHs, noting page 4, lines 19-25 and page 6, lines 8-10.
Rodrigues shows sodium trimetaphosphate and poly(glycidyl ethers) to be functionally equivalent as crosslinkers for polymers having OH groups at page 4, lines 3-5 and 13-15.
Trksak teaches the use of sodium trimetaphosphate for crosslinking polysaccharides generally at the abstract, page 2, lines 15-19, page 4, lines 6-7, noting “wood”, page 4, lines 25-27, noting the cellulose of line 27, page 7, lines 24-31, noting the sodium trimetaphosphate of line 31, page 9, lines 28-30, noting the formation of non-reversible bonds and the sodium trimetaphosphate of lines 29-30, and page 10, lines 15-19, noting the amounts of crosslinker which fall within the scope of the instantly claimed amounts of sodium trimetaphosphate. Trksak, page 11, lines 16-22, particularly line 17, shows that Trksak’s crosslinkers can crosslink at high pHs.
Trksak, page 12, lines 11-15, teaches that the amount of crosslinker is a function of the type of crosslinker and the application in which the binder is used. The amounts therein include the amounts of sodium trimetaphosphate of the instant claims. The lack of further guidance shows that it is within the ability of the ordinary skilled artisan to determine how much crosslinking agent they need to give their desired end-use properties.
Noulis teaches that sodium trimetaphosphate is suitable for food packaging. See the abstract of Noulis. Noulis, page 2 of 12, third paragraph teaches sodium trimetaphosphate to be safe and non-toxic. It would have been expected that a crosslinker suitable for food contact is safer and less toxic than many chemical crosslinkers.
Chan, paragraphs [0076] and [0077], shows poly(glycidyl ethers) and sodium trimetaphosphate to be functional equivalents as crosslinkers for biopolymers.
It would have been obvious to one of ordinary skill in the art to use the instantly claimed amounts of sodium trimetaphosphate to crosslink the adhesives of Anderson (114) because Anderson (727) teaches the crosslinking of adhesive compositions which are similar to those of the Anderson (114) in order to improve the adhesive properties, including wet and dry tensile strengths, Rodrigues and Trksak teach sodium trimetaphosphate in amounts including those of the instantly claimed amounts of sodium trimetaphosphate to be crosslinkers for polymers, including polysaccharides including cellulose and starch, Noulis teaches sodium trimetaphosphate to be safe for contact with food and to be non-toxic, and Rodrigues and Chan teach sodium trimetaphosphate to be functionally equivalent to poly(glycidyl ether) for crosslinking OH containing polymers such that it would have been obvious to the ordinary skilled artisan to substitute the prior art sodium trimetaphosphate for Anderson’s (727) poly(glycidyl ether) crosslinker and to expect similar crosslinking properties in the adhesives of Anderson (114) (MPEP 2144.06 paragraph II) as well as the lower toxicity taught by Noulis, the benefits of crosslinking adhesives like those of the instant claims as taught by Anderson (727), and the benefits of crosslinking polyols, including cellulose and starch, with sodium trimetaphosphate, as taught by Rodrigues and Trksak, in proportion to the amount of sodium trimetaphosphate used in the copending claims.
Response to Applicant’s Arguments
6. The following response is in reply to the applicant’s arguments regarding the rejection of paragraph 3 above:
In their arguments of 12/22/25, the applicant argues that they request the obviousness-type double patenting rejection be held in abeyance until the claims are otherwise found to be allowable. See MPEP 804 I. B. 1., particularly “1. Provisional Nonstatutory Double Patenting Rejections
A complete response to a nonstatutory double patenting (NSDP) rejection is either a reply by applicant showing that the claims subject to the rejection are patentably distinct from the reference claims, or the filing of a terminal disclaimer in accordance with 37 CFR 1.321 in the pending application(s) with a reply to the Office action (see MPEP § 1490 for a discussion of terminal disclaimers). Such a response is required even when the nonstatutory double patenting rejection is provisional.
As filing a terminal disclaimer, or filing a showing that the claims subject to the rejection are patentably distinct from the reference application’s claims, is necessary for further consideration of the rejection of the claims, such a filing should not be held in abeyance. Only compliance with objections or requirements as to form not necessary for further consideration of the claims may be held in abeyance until allowable subject matter is indicated. Replies with an omission should be treated as provided in MPEP § 714.03. Therefore, an application must not be allowed unless the required compliant terminal disclaimer(s) is/are filed and/or the withdrawal of the nonstatutory double patenting rejection(s) is made of record by the examiner. See MPEP § 804.02, subsection VI, for filing terminal disclaimers required to overcome nonstatutory double patenting rejections in applications filed on or after June 8, 1995.”
7. The following response is in reply to the applicant’s arguments regarding the rejection of paragraph 5 above:
In their arguments of 12/22/25:
The applicant argues that sodium trimetaphosphate is a required functional critical component. Its presence is required in the above rejection. The applicant argues that the amounts thereof of the instant claims give unique and unexpected improvements including increased internal bond strength and improved thickness swell% values. The applicant argues that these values are not taught or suggested. There is no probative showing of any unexpected result stemming from any difference between the above cited prior art and the instant claims which is commensurate in scope with the instant claims and which compares the closest prior art with the instant claims See MPEP 716.02(d) Unexpected Results Commensurate in Scope With Claimed Invention [R-08.2012].
Furthermore, crosslinking is expected to increase internal bond strength and to reduce thickness swell% because the covalent bonds of crosslinking tie the crosslinked composition together thereby giving greater internal bond strength and reducing ability to swell as would have been readily understood by the ordinary skilled artisan. It is noted that even soluble polymers become less soluble upon crosslinking them due to increased internal bonding. The argued results are therefore not unexpected of the prior art crosslinked compositions. The amounts of crosslinker are not seen as providing an unexpected result for the reasons stated above.
The applicant argues that the secondary references lack features of the instant claims. They are not recited for such features. The primary reference teaches those features. The secondary references are not required to anticipate the claims. There would be no need for obviousness rejections if secondary references were required to teach all of the limitations of the claims. 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’s arguments have been fully considered but are not persuasive for the reasons stated above, the reasons stated in the above rejection, and for the full teachings of the above cited prior art as they would have been understood by the ordinary skilled artisan prior to the instantly claimed invention. The above rejection is therefore maintained.
Conclusion
8. Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
9. Any inquiry concerning this communication or earlier communications from the examiner should be directed to PATRICK D NILAND whose telephone number is (571)272-1121. The examiner can normally be reached on Monday to Friday from 10 to 5.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert S Jones, can be reached at telephone number (571)272-1121. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PATRICK D NILAND/Primary Examiner, Art Unit 1762