DETAILED ACTION
Applicant’s amendment dated 2 March 2026 is acknowledged. Claims 1, 2, and 4 as amended are pending.
All outstanding objections and rejections made in the previous Office Action, and not repeated below, are hereby withdrawn.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior office action.
Claim Rejections - 35 USC § 103
Claims 1, 2, and 4 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2018-154723 A (“Motonari”) in view of JP H07-331221 A (“Ota”).
JP 2018-154723 A and machine translation thereof were made of record with applicant’s IDS dated 31 May 2023. A partial machine translation of JP H07-331221 A is enclosed with this action.
As to claim 1, Motonari teaches an adhesive composition containing an acyl group containing beta-1,3-glucan (Motonari, claim 1).
Motonari does not teach the recited petroleum based resin, but is not limiting as to the components of the adhesive. Ota teaches hot melt adhesives (a type disclosed by Motonari, claim 2) having a base polymer, and a tackifier resin, including petroleum resins (para. 0014). Ota teaches the tackifier is added to adjust melt viscosity and improve hot tack property and wettability (para. 0013). Given that Ota teaches the utility of tackifier resins, including petroleum based resin, in hot melt adhesive, the use thereof in the composition of Motonari is an obvious modification known to a person of ordinary skill in the art.
Motonari does not teach any specific amount of petroleum resin. Ota teaches the use of 10 to 80 parts of tackifier resins with respect to 10 to 80 parts of a base polymer (claim 1), which encompasses the recited range and overlaps the recited range (see also, examples, para. 0034, showing equivalent amounts of base polymer and tackifier). Ota teaches the utility of tackifying resin for improving hot tack and wettability, and as such, the use of tackifier, including petroleum resins, including in the recited amounts, is an obvious modification to obtain the recited properties.
As to claim 2, Motonari teaches the recited structure of the acyl group (para. 0020), and teaches the use of aliphatic hydrocarbon in the recited range (para. 0021), exemplifying myristate (C14 hydrocarbon) derivatives (para. 0053).
As to claim 4, Motonari does not explicitly discuss tapes, but teaches forming PTFE backed strips of the adhesive, thus a tape (para. 0051). In addition, Ota teaches that hot melt adhesives may be used in tapes (para. 0002), and as such, adhesive tapes are an obvious end use for the adhesive as disclosed by Ota.
Double Patenting
Claims 1 and 4 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 2 of copending Application No. 18/273,088 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because copending claim 1 recites a beta-1,3-glucan with acyl group, and a resin including petroleum based resin as required by claim 1. While not specifically recited, the composition is the same as that recited, and thus presumed to be adhesive. Copending claim 1 recites 90 parts by less of the resin with respect to the glucan derivative, which substantially overlaps the range of claim 1, and thus appears to be an obvious modification given the strong overlap in range.
As to claim 4, copending claim 2 recites an adhesive tape with the film (layer). Since the composition is the same composition as recited, the film is presumed to be an adhesive layer.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed 2 March 2026 have been fully considered but they are not persuasive.
Applicant argues against the rejections over Motonari in view of Ota because Motonari does not teach the petroleum resin, and Ota does not discuss the glucan derivative resin. 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).
Ota is not limited to the base resin, and as such, the use of the tackifier, including within the range given the ranges taught by Ota with respect to the base resin (which encompass the recited range), is an obvious modification known in the art of adhesives. Moreover, applicant’s assertion of unexpected results is not persuasive, given that petroleum resin is a known tackifier, described by Ota as providing wetting to a substrate, and therefore would be expected, as part of its function, to improve adhesion to a substrate. In addition, applicant’s results are limited to one specific petroleum resin, and is therefore not commensurate in scope with the claims.
The nonstatutory double patenting rejection over 18/273,088. While the copending claims do not recite the same range of the tackifier, which may be petroleum based resin, the range recited by the copending claims is substantially similar such that the recited range is an obvious variant thereof.
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 KREGG T BROOKS whose telephone number is (313)446-4888. The examiner can normally be reached Monday to Friday 9 am to 5:30 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie Reuther can be reached at (571)270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/KREGG T BROOKS/Primary Examiner, Art Unit 1764
Prosecution Insights