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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-3 and 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shibaue (JP 2018-154723) in view of Uchida et al. (JP 2005-314290). English machine translations of Shibaue (JP 2018-154723) and Uchida et al. (JP 2005-314290) for citation.
Regarding claims 1-3: Shibaue (JP ‘723) discloses adhesives [0001] comprising a β-1,3-glucan derivative obtained by introducing an acyl group into β-1,3-glucan [0008]. Shibaue (JP ‘723) discloses paramylon as a β-1,3-glucan [0014], and myristoyl as an acyl group [0021]. Shibaue (JP ‘723) discloses paramylon myristate (C14; RCO- with R = C13) [Ex. 1; 0053]. Shibaue (JP ‘723) discloses the adhesive can contain additives [0029].
Shibaue (JP ‘723) does not disclose a terpene-based resin. However, Uchida et al. (JP ‘290) discloses adhesives containing β-1,3-glucan [0004], wherein the adhesive can contain a tackifier [0025] such as a terpene resin [0043]. Shibaue (JP ‘723) and Uchida et al. (JP ‘290) are analogous art because they are concerned with a similar technical difficulty, namely the preparation of adhesives containing β-1,3-glucan. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined a terpene resin, as taught by Uchida et al. (JP ‘290) in the invention of Shibaue (JP ‘723), and would have been motivated to do so since Uchida et al. (JP ‘290) discloses the adhesive can contain a tackifier [0025] such as a terpene resin [0043].
Regarding claim 5: Shibaue (JP ‘723) discloses the adhesive sandwiched between PTFE sheets {corresponding to an adhesive tape} [0051].
Claim(s) 1-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shibaue (JP 2018-154723) in view of Möller et al. (EP 1 664 229). English machine translations of Shibaue (JP 2018-154723) and Möller et al. (EP 1 664 229) for citation.
Regarding claims 1-4: Shibaue (JP ‘723) discloses adhesives [0001] comprising a β-1,3-glucan derivative obtained by introducing an acyl group into β-1,3-glucan [0008]. Shibaue (JP ‘723) discloses paramylon as a β-1,3-glucan [0014], and myristoyl as an acyl group [0021]. Shibaue (JP ‘723) discloses paramylon myristate (C14; RCO- with R = C13) [Ex. 1; 0053]. Shibaue (JP ‘723) discloses the adhesive can contain additives [0029].
Shibaue (JP ‘723) does not disclose a terpene-based resin. However, Möller et al. (EP ‘229) discloses adhesives [0001], wherein the adhesive can contain 5 to 45 wt% of a tackifying resin [0035-0036] such as a terpene-phenolic resin [0036]. Shibaue (JP ‘723) and Möller et al. (EP ‘229) are analogous art because they are concerned with a similar technical difficulty, namely the preparation of adhesives. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined 5 to 45 wt% of a terpene-phenolic resin, as taught by Möller et al. (EP ‘229) in the invention of Shibaue (JP ‘723), and would have been motivated to do so since Möller et al. (EP ‘229) discloses the adhesive can contain 5 to 45 wt% of a tackifying resin [0035-0036] such as a terpene-phenolic resin [0036].
Regarding claim 5: Shibaue (JP ‘723) discloses the adhesive sandwiched between PTFE sheets {corresponding to an adhesive tape} [0051].
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 1-3 and 5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 5-8, and 11 of copending Application No. 18/872068 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claimed adhesive compositions overlap in scope. While Application No. 18/872068 does not claim a β-1,3-glucan derivative having an acyl group, and a terpene-based resin in claim 1, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included a β-1,3-glucan derivative having an acyl group, and a terpene-based resin in claim 1, as Application No. 18/872068 claims a β-1,3-glucan derivative having an acyl group [claim 3], and a terpene-based resin [claim 8]. Additionally, “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) [see MPEP 2144.06].
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of copending Application No. 18/039179 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claimed adhesive composition of Application No. 18/039179 comprising a β-1,3-glucan derivative having an acyl group, and a rosin-based resin anticipates the instant clamed adhesive composition comprising a β-1,3-glucan derivative having an acyl group, and a terpene-based resin.
Applicant's attention is drawn to MPEP § 804 where it is disclosed that "the specification can always be used as a dictionary to learn the meaning of a term in a patent claim." In re Boylan, 392 F.2d 1017, 157 USPQ 370 (CCPA 1968). Further, those portions of the specification which provide support for the patent claims may also be examined and considered when addressing the issue of whether a claim in an application defines an obvious variation of an invention claimed in the patent. In re Vogel, 422 F.2d 438,164 USPQ 619,622 (CCPA 1970). Application No. 18/039179 claims a rosin-based resin. Rosin-based resin is defined in the specification as a terpene-phenol resin [0025-0028].
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
See attached form PTO-892.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL F PEPITONE whose telephone number is (571)270-3299. The examiner can normally be reached on 7:00 AM - 3:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached on 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL F PEPITONE/Primary Examiner, Art Unit 1767