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 .
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 4 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. In this case, claim 4 recites “the amount of
rosin-based resin being relative to 100 parts by mass by weight of the β-1,3-glucan derivative is 100 parts by weight or less”, wherein 100 parts by weight or less encompasses weight content being less than 20 parts by weight or less and such amount does not seem further limit its parent claim 1 recited “the amount of
rosin-based resin being relative to 100 parts by mass by weight of the β-1,3-glucan derivative is 20 parts by weight or more” limitation. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-4 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 being 20 parts by weight or more and 120 parts by weight or less relative to 100 parts by mass by weight of the β-1,3-glucan derivative.
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, e.g. dextran-- β-1,3-glucan derivative), 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 an 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 is noted that Fan disclosed rosin-based resin weight relative to dextran (gel forming agent) being overlapping with that of instantly claimed rosin-based resin content, which is 20 parts by weight or more and 120 parts by weight or less relative to 100 parts by mass by weight of the β-1,3-glucan derivatives, therefore, renders a prima facie case of obviousness (see MPEP §2144. 05 I).
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 tackifying 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 0 -50 wt.% of rosin resin as tackifying resin relative to 5-55 wt.% of dextran 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 content of rosin resin as tackifying resin to modify a 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 such limitation as discussed above.
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 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 1-3 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.
Response to Arguments
Applicant's arguments filed on 07/08/2026 have been fully considered but they are not persuasive. In response to applicant’s arguments about “the amount of
rosin-based resin being relative to 100 parts by mass by weight of the β-1,3-glucan derivative is 20 parts or more and 120 parts by weight or less” leading to improvement of adhesive strength and reduction in the viscosity because instant example the examiner would like to kindly reminder the applicant that evidence of unexpected properties may be in the form of a direct or indirect comparison of the claimed invention with the closest prior art which is commensurate in scope with the claims. In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range (see MPEP § 716.02(d)). In the instant case, example 1 and 11-14 (30-120 parts by weight of the rosin based resin) showing significant reduction in the viscosity as compared with example 9 and 10 (10 parts by weight or less of the rosin-based resin), and example 1 and 11-14 achieving a significant improvement in the adhesive strength as compared with example 15 (150 parts by weight of the rosin-based resin), it is noted that example 1 and 11-14 all use a specific β-1,3-glucan derivative, i.e. myristoylated β-1,3-glucan and example 14 adopted 120 parts by weight of specific rosin-based resin, e.g. PENSEL D-125 shows same adhesive strength as comparative example 10, while example 6 and 7 adopted 30 by weight of rosin-based resin showing very high viscosity, even worse than comparative example 9 and 10, therefore, such arguments are not found convincing because when rosin based resin being within the claimed range, such alleged improved adhesive strength improvement and/or viscosity decrease does not occur over the entire claimed range, for any rosin based resin or for any β-1,3-glucan derivatives. To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range (see MPEP § 716.02(d)).
In response to applicant’s arguments about Fan only listing a rosin resin as an option or teaching rosin resin being optional, it is noted that Fan expressly teaches the Sylvalite RE80HP Rosin Ester from Arizona Chemicals being one of several available commercial tackifying agent (description page 4 33-36), therefore, it would have been obvious for one of ordinary skill in the art obvious to try” such rosin resin, e.g. Sylvalite RE80HP Rosin Ester from Arizona Chemicals as tackifying resin to modify the adhesive composition of Shibaue because choosing from a finite number of identified, predictable solutions of tackifying resin would have a reasonable expectation of success (see MPEP § 2143 KSR). In response to applicant’s arguments about Shibaue or Fan not teaching the claimed rosin ester content, it is noted that Fan already teaches such limitations as set forth in the rejections.
Similar reasons to sustaining the double patenting rejections.
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 JUN LI whose telephone number is (571)270-5858. The examiner can normally be reached IFP.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ching-Yiu (Coris) Fung can be reached at 571-270-5713. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JUN LI/Primary Examiner, Art Unit 1732
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