DETAILED ACTION
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Election/Restrictions
Claims 10, 11, 14-16, 18, 19, 22, and 25-26 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 21 April 2025.
In response to the applicant's request for rejoinder, MPEP 821.04 notes that, where a restriction was required between a product and a process of making the product and the product was elected and subsequently found allowable, all claims to a nonelected process invention must depend from or otherwise require all the limitations of an allowable claim for the claims directed to that process invention to be eligible for rejoinder. See MPEP 821.04. Therefore, amending a dependent method claim (e.g., claim 15) would not place the claim in condition for rejoinder unless claim 10 were to include all the limitations of an allowable claim.
Claim Rejections - 35 USC § 103
Claims 1, 2, 5, 6, 9, 23, 24, 27, and 28 are rejected under 35 U.S.C. 103 as being unpatentable over Cruz et al. (US 2018/0282595) in view of Poterie et al. (FR 2,844,998).
Cruz is directed to an adhesive composition comprising a latex derived from guayule (paragraph 0002). The composition comprises about 15-40 wt% of latex derived from guayule and about 0.1 to 20 wt% of a film forming agent (paragraph 0008). The latex derived from guayule is available in either a potassium hydroxide base emulsion or an ammonia base emulsion (paragraph 0012). Since both potassium hydroxide and ammonia are basic compounds and since emulsions are solvent containing liquids, a latex derived from guayule in either a potassium hydroxide base emulsion or an ammonia base emulsion reads on a base-solvent modified guayule resin.
Cruz does not teach the presence of a soy protein in the adhesive composition.
Poterie, directed to a cosmetic composition (paragraph 0006), teaches that soy protein may be used as a film forming polymer in such compositions (paragraph 0014).
It would have been obvious to one of ordinary skill in the art to use a soy protein as the film-forming agent of Cruz since the courts have held the selection of a known material (e.g., soy protein) based on its suitability for its intended use (e.g., film forming component of a cosmetic adhesive) supported a prima facie obviousness determination. See MPEP 2144.07.
Regarding the limitations in claim 1 directed to the manner in which the base-solvent modified guayule resin is formed (i.e., mixing unmodified guayule base resin with a solvent comprising acetone, mixing a base with the resin mixture, reacting the base with the unmodified base resin via saponification, and extracting a bottom phase of the modified guayule resin in acetone), these are product-by-process limitations. The modified guayule resin of Cruz appears to meet all the product limitations of claim 1 since (i) the resin is reacted with a base, (ii) one of ordinary skill in the art would expect the reaction of guayule resin and a base to involve saponification, and (iii) one of ordinary skill in the art would expect the solvent used in the process to be driven off prior to the use of the resin as an adhesive. As such, the burden is on the applicant to conclusively show that the product derived by the recited process claim is patentably distinct from that of the prior art.
Regarding claim 5, since the adhesive composition of Cruz comprising about 15-40 wt% guayule latex and 0.1 to 20 wt% film forming agent (i.e., soy protein), one of ordinary skill in the art would expect the concentration of soy protein to overlap the range recited in claim 5 and the courts have held that a prima facie case of obviousness exists for overlapping ranges. See MPEP 2144.05.
Regarding claims 9, 23, and 24, Cruz teaches that the guayule latex is extracted as set forth in US 7,790,036 (paragraph 0012) - Examples 13-16 of which illustrates extraction processes using a solvent performed at 110 oC.
Claim 27 is rejected under 35 U.S.C. 103 as being unpatentable over Gui et al. (CN 105838304 B) in view of Battistel et al. (US 9,969,818 B2).
Gui is directed to a soybean adhesive for use in particleboard (paragraph 0002). The soybean compound comprises soy protein (paragraph 0010). The adhesive comprises 10 to 30 parts by weight of soybean derivative and 5 to 50 parts by weight of tackifier (paragraph 0010). The tackifier is preferably a terpene resin (paragraph 0016).
Gui do not teach the presence of a modified guayule resin in the adhesive.
Battistel is directed to processing and using guayule plant (column 1, lines 4-10). The plant produces resins mainly composed of terpene compounds (column 1, lines 21-30). When used in applications with wooden materials, resin extracted from guayule increases the resistance to microbiological and atmospheric agents (column 4, lines 14-36). Essential oils are extracted from leaves of the plant by solvent, steam, or supercritical CO2 extraction (column 13, lines 39-42). Components of the essential oils may be used as tackifiers when polymerized with other components (column 15, lines 9-13).
It would have been obvious to one of ordinary skill in the art to use essential oils extracted from guayule plants and reacted with other components (i.e., modified) as the tackifier of Gui to provide the resulting adhesive with increased resistance to microbiological and atmospheric agents. One of ordinary skill in the art would have an expectation of success since Gui teach the use of terpene tackifier and Battistel teach both that the essential oils may be used as tackifiers (column 15, lines 9-13) and that the essential oils comprise terpene components (column 20, lines 30-36).
Allowable Subject Matter
Claim 8 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter.
The invention of claim 8 is directed to the adhesive composition of claim 1 further comprising an unmodified guayule base resin obtained in a rubber extraction process of guayule at a solvent removal temperature of 104 to 166 oC. The unmodified guayule base resin is included in an amount of 0.1 to 50% by weight of the total weight of the soy protein.
Cruz et al., Poterie et al., and Tardiff et al. (US 2020/0308375) represent the closest prior art. In view of the amendment to claim 8 included in the response filed 08 December 2025, the examiner agrees with the applicant that the prior art does not teach or fairly suggest incorporating an unmodified guayule base resin in an amount of 0.1 to 50% by weight of the total weight of the soy protein.
Response to Arguments
Applicant's arguments filed 08 December 2025 have been fully considered but they are not persuasive.
Regarding the rejection over Cruz in view of Poterie, the applicant argues that these references represent non-analogous art since they are directed to cosmetic adhesive compositions for application to human integument which is not the same field of endeavor as the claimed adhesive composition for coupling two substrates together.
This is not persuasive for the following reasons. First, since there is nothing in the claims limiting the substrates, the teaching by Cruz that their adhesive may be used to adhere a false eyelash to a person's eyelid (paragraph 0010) explicitly satisfies this limitation with the false eyelash representing one substrate and the person's eyelid representing another substrate. As such, the adhesive of Cruz is in the same field of endeavor of the adhesive as claimed since it is intended to be used for coupling together substrates. Additionally, the limitation that the claimed adhesive is "for coupling together substrates" represents an intended use of the adhesive and the courts have held that a recitation with respect to the manner in which a claimed product is intended to be employed does not differentiate the claimed product from a prior art product satisfying the claimed structural limitations. See MPEP 2114.
The applicant further argues that the Examples illustrate that the base-solvent modified guayule resins in combination with soy protein provide similar dry adhesion strength and significantly higher wet adhesion strength compared with standard soy protein adhesives as well as other different and improved properties, solving a long-felt need to decrease reliance on non-renewable petroleum products.
This is not persuasive since establishing long-felt need requires objective evidence that an art recognized problem existed in the art for a long period of time without solution. See MPEP 716.04. The applicant has not demonstrated that this need has been persistent and recognized by those of ordinary skill in the art and the results set forth in the Examples (and illustrated in Figures 2 and 4) do not appear to be commensurate in scope with the claims (see MPEP 716.02(d)). Moreover, the applicant has the burden of explaining proffered data to establish that the results are unexpected and significant (see MPEP 716.02(b)), a burden that is not met simply by referring to figures and passages in the specification.
The applicant further argues that the product-by-process limitations newly added to claim 1 distinguish it from the prior art because of differences between a latex/emulsion and a modified resin formed by a process involving mixing the guayule resin with an organic solvent such as acetone.
This is not persuasive since it is known that a guayule latex can be produced by using acetone to extract guayule resin (e.g., see Example 2 in US 4,435,337). Thus, the use of acetone in the process of forming the modified guayule resin does not preclude the resulting product from being a latex.
Regarding the rejection over Gui in view of Battistel, the applicant notes that Gui requires the presence of a mildew inhibitor and argues that, as such, there would be no need to provide the composition with the teachings of Battistel as there would be no need for increased resistance to microbial or atmospheric agents.
This is not persuasive for at least the reason that one of ordinary skill in the art would expect the increased resistance provided by Battistel to extend beyond mildew. Mildew is a fungus and one of ordinary skill in the art would expect the microbes to which increased resistance is provided by Battistel to also encompass bacteria (see column 15, lines 39-42).
The applicant further asserts that the presence of a cross-linker would materially affect the basic and novel characteristics of the adhesive since it specifically functions to create chemical bonds in polymer chains and there would be no reason to include it in the composition.
This is not persuasive because it does not offer any reason as to why one of ordinary skill in the art would expect the presence of crosslinks to detract from the ability of the adhesive to couple substrates together. That the claimed adhesive can couple substrates together without crosslinking is not an indication that the adhesive would fail if crosslinks were present.
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RAMSEY E ZACHARIA whose telephone number is (571)272-1518. The best time to reach the examiner is weekday afternoons, Eastern time.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho, can be reached on 571 272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RAMSEY ZACHARIA/Primary Examiner, Art Unit 1787