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 .
Election/Restrictions
Applicant’s election of group I invention (claim 1-4) in the reply filed on 01/05/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claim 5 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 01/05/2026.
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.
Claims 1-4 are rejected under 35 U.S.C. 103 as obvious over Shibaue (JP2018/154723) in view of Fan (WO2014/179550)(for applicant’s convenience, Machine translations of these documents have been used for citations).
Shibaue teaches an adhesive comprising a β-1,3-glucan derivative in which an acyl group has been introduced into β-1,3-glucan (claims 1-3, examples).
Regarding claim 1, Shibaue does not teach a rosin-based resin.
Fan teaches a “hydrocolloid" (i.e. a viscous adhesive) composition comprising
a hydrocolloid layer which contains 5-55 by weight of a gel forming agent (can be polysaccharide-type polymers), 10-90% by weight of an adhesive base, and 0-50% of tackifying resin, wherein the tackifying resin is selected from a group consisting of a
aliphatic petroleum resins, alicyclic petroleum resins, aromatic copolymer petroleum resins, terpene resins, terpene-styrene resins, coumarone-terpene resins, rosin resins, and hydrogenates thereof (claim 1, 5-7 and 16, description page 3 lines 19-25, 42-43, page 4 lines 21-31, 36).
It would have been obvious for one of ordinary skill in the art to “obvious to try” a rosin resin as tackifying resin to modify the adhesive composition of Shibaue because choosing from a finite number of identified, predictable solutions of tackfing resin would have a reasonable expectation of success (see MPEP § 2143 KSR). It would have been obvious for one of ordinary skill in the art to adopt such rosin resin as tackifying resin as shown by Fan to modify the adhesive composition of Shibaue because by doing so can help provide an adhesive composition with desired tackiness as suggested by Fan (description page 4 lines 21-22). Furthermore, adopting such well-known rosin resin as tackifying resin to modify an well-known adhesive comprising β-1,3-glucan derivative comprising an acyl group for improvement would have predictable results (see MPEP § 2143 KSR).
Regarding claim 2, Fan further teaches the tackifying resin can be and Sylvalite RE80HP Rosin Ester from Arizona Chemicals (USA) which has a softening point within the claimed range (see https://kraton.com/wp-content/uploads/2024/06/SYLVALITE-RE-80HP.pdf).
Regarding claim 3, Shibaue further teaches the acyl group is RCO and the carbon number of the hydrocarbon in the acyl group is being 8 or more and 17 or less (para. [0020], [0031], [0040]). Shibaue also teaches the acyl group include octanoyl group, nonanoyl group, decanoyl group etc. (para. [0021]), all these are aliphatic hydrocarbon having 5 or more and 16 or less carbon atoms.
Regarding claim 4, Fan already teaches the tackifying resin amount based on the total hydrocolloid composition (adhesive composition) being 0 -50 wt.%. It would have been obvious for one of ordinary skill in the art to adopt similar rosin content being 0 -50 wt.% regarding to the total weight of adhesive composition, i.e. β-1,3-glucan derivative being 50 wt% to less than 100 wt% for help obtaining a desired adhesive composition because adopting such well-known rosin resin as tackifying agent to modify a well-known β-1,3-glucan derivative for improvement would have predictable results (see MPEP § 2143 KSR).
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 1-4 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-2 of copending Application No. 18/039 531 in view of Fan (WO2014/179550). Co-pending application’531 teaches a substantially the same adhesive composition except the rosin resin, but such limitation is taught by Fan as discussed above. It would have been obvious for one of ordinary skill in the art to substitute a petroleum-based resin with a rosin resin as tackifying resin to modify the adhesive composition of co-pending application’531 because substituting equivalents known for the same purpose is prima face of obviousness (see § MPEP 2144. 06).
This is a provisional nonstatutory double patenting rejection.
Claims 1-4 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-4 of copending Application No. 18/039 562 in view of Fan (WO2014/179550). Co-pending application’562 teaches a substantially the same adhesive composition except the rosin resin, but such limitation is taught by Fan as discussed above. It would have been obvious for one of ordinary skill in the art to substitute a terpene-based resin with a rosin resin as tackifying resin to modify the adhesive composition of co-pending application’562 because substituting equivalents known for the same purpose is prima face of obviousness (see § MPEP 2144. 06).
This is a provisional nonstatutory double patenting rejection.
Claims 1-4 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-2 of copending Application No. 18/273,088. Co-pending application’088 teaches a substantially the same adhesive composition comprising a β-1,3-glucan derivative in which an acyl group has been introduced into β-1,3-glucan and a rosin resin as that of instantly claimed.
This is a provisional nonstatutory double patenting rejection.
Conclusion
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/JUN LI/ Primary Examiner, Art Unit 1732
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