DETAILED ACTION
This Office Action is in response to Applicant’s Amendment and Remarks filed on 12 February 2026 in which claim 3 was canceled, and claims 1 and 2 were amended to change the scope and breadth of the claims.
Claims 1, 2 and 4 are pending in the current application and are examined on the merits herein.
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 .
Withdrawn Rejection(s)
Applicant’s amendment, filed 12 February 2026, with respect to the rejection of claim 2 under 35 U.S.C. § 112(b), second paragraph, for indefiniteness, has been fully considered and is persuasive because claim 2 has been amended to recite “wherein the hexamethylene diisocyanate-type crosslinking agent is at least one selected from the group consisting of a trimethylolpropane adduct of hexamethylene diisocyanate, an isocyanurate of hexamethylene diisocyanate, and an allophanate of hexamethylene diisocyanate”. The recitation “tolylene diisocyanate-type crosslinking agent” and “xylylene diisocyanate-type crosslinking agent” have similarly been defined.
The claim as amended more specifically claims the subject matter disclosed and supported in Applicant’s Specification. The rejection is hereby withdrawn.
Response to Arguments
Applicant's arguments filed 12 February 2026 have been fully considered but they are not persuasive.
Applicant contends the Specification demonstrates the specific features recited in claim 1 achieved improved adhesive strength and holding power. Applicant has pointed to Table 4, where examples 10 to 14 having 0.5-10 pbw isocyanate-based crosslinking agent achieved both improved adhesive strength and holding power compared to example 9 (having 0.1 pbw) and example 15 (having 20 pbw).
Table 4 has been reviewed, however, the adhesive strength to polypropylene plate and stainless steel plate of example 9 seems similar to that of examples 2, 10, 11 and 12. The holding power of example 9 was the highest tested. However, it resulted in contamination of adherend, while examples 2 and 10-13 did not. Thus, it appears that examples 2 and 10-13 have better adhesive properties than example 9.
Example 14, drawn to an embodiment that falls within the scope of claim 1, also resulted in contamination of adherend. Thus, the claimed invention does not appear to be commensurate in scope with the results of Table 4. Furthermore, Applicant has not shown whether the results are statistically significant.
Applicant also contends Table 5 of the Specification shows Examples 2 and 18, which use a myristoyl group or a palmitoyl group as the acyl group, showed improved adhesive strength and holding power compared to example 16 (octanoyl group) and example 17 (lauroyl group).
While the adhesive strength to polypropylene of example 16 seemed significantly lower than examples 2 and 18, its adhesive strength to stainless steel plate did not. Furthermore, its holding power was the same as that of examples 2 and 18. The adherend for example 16 was not contaminated.
The adhesive strength of example 17 does not seem significantly different than example 18. It is unclear if the holding power of example 17 is significantly lower than examples 2 and 18. The adherent for example 17 was not contaminated.
It is further noted Shibaue et al. expressly prefer the acyl group preferably has 13 or more carbon atoms and 17 or less carbon atoms. Thus, Shibaue et al. expressly prefer where the acyl group is a myristoyl or palmitoyl group (see para [0027] and para [0040]).
Thus, there is clear preference for the acyl groups claimed and Applicant has not clearly shown whether the results are statistically significant.
Turning to the type of crosslinking agent, Table 3 suggests this may be critical. The trimethylol-propane adduct of hexamethylene diisocyanate (see example 4), and the allophanate of hexamethylene diisocyanate resulted in contamination of the adherent, even though it had similar adhesive strength and holding power as the other examples within the scope of the present claims.
See MPEP 716.02(b), “The evidence relied upon should establish "that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance."
Thus, it is not clear if the scope of the claims are commensurate in scope with the data presented in the tables of the Specification. And the data presented in the Specification do not clearly demonstrate a statistically significant difference in adhesive strength and/or holding power.
The rejection is hereby maintained.
Modified Rejections
The following are new ground(s) or modified rejections necessitated by Applicant's amendment, filed on 12 February 2026, where the limitations in pending claims 1 and 2 as amended now have been changed. Therefore, rejections from the previous Office Action, dated 14 November 2025, have been modified and are listed below.
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, 2 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Shibaue (JP2018-154723, cited in previous Office Action) in view of Nagakura et al. (JP2014001332, cited in previous Office Action).
Shibaue teaches a pressure-sensitive adhesive, wherein the adhesive is made from naturally occurring polysaccharides (para [0006]). The polysaccharide is a β-1,3 glucan derivative, in which an acyl group has been introduced (para [0008]). The β-1,3 glucan is from paramylon (para [0015]). The degree of substitution of the acyl groups ranges from 1.0 to 3.0, preferably 1.5-3.0, and even more preferably 2.0-3.0 (para [0033]; [0041]). Examples of acyl groups include myristoyl and palmitoyl (para [0027]). The number of carbon atoms in the hydrocarbon group is preferably 13 or more, and 17 or less (i.e. myristoyl and palmitoyl; para [0040]). These adhesives had excellent thermoplasticity and exhibited adhesiveness at room temperature (para [0045]). The acyl groups weakens the interactions between the β-glucan molecular chains by disrupting the arrangement of the chains and reducing the formation of hydrogen bonds between main chains from the hydroxy groups, thereby improving adhesiveness (para [0016]). The composition can be used as a member that requires transparency, such as optical films (para [0037]).
Shibaue does not expressly disclose an isocyanate-based crosslinking agent (present claim 1).
Nagakura et al. teach a pressure-sensitive adhesive composition comprising a polymer prepared from (B) a hydroxyl-group containing monomer and (F) a trifunctional or higher isocyanate compound (para [0012]). Compared to traditional acrylic pressure-sensitive adhesives, Nagakura et al. found an adhesive made with the aforementioned chemical agents improved the balancing strength, prevented adhesive residue from remaining on the adherend, and improved the adhesive’s reworkability (para [0004]-[0012]). The pressure-sensitive adhesive layer is formed on one or both sides of a resin film (para [0023]). The isocyanate compound is selected from (F-1) aliphatic isocyanate and (F-2) an aromatic isocyanate compound. The total amount of isocyanate is 0.5 to 5.0 parts by weight per 100 parts by weight of the copolymer (para [0018]). With respect to the aliphatic isocyanate, the isocyanate includes an isocyanurate of a hexamethylene diisocyanate compound, an isocyanurate of an isophorone diisocyanate compound and an adduct of an isophorone diisocyanate compound (para [0013]). Nagakura et al. teach preparing an adhesive film of the isocyanurate crosslinked polymer (para [0053]). The crosslinked composition should have an adhesive strength of 0.05 to 0.1 N/25 mm at a low peel speed of 0.3 m/min, and an adhesive strength of 1.0 N/25 mm or less at a high peel speed of 30 m/min (para [0046]). The resultant adhesive performance is about the same regardless of peeling speed. The surface protection film can also be easily removed from the adherend without requiring excessive force. Nagakura et al. found insufficient amounts of hydroxyl-group containing monomer and isocyanate crosslinker gave adhesives with poor reworkability and durability (para [0067]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to crosslink an acylated β-1,3 glucan with an isocyanate-based crosslinking agent.
Starting from Shibaue et al., the ordinary artisan would have looked to the teaching of Nagakura et al. because they are both concerned with preparing pressure-sensitive adhesives from hydroxyl-group containing polymers.
Nagakura et al. found adhesives prepared by crosslinking a hydroxyl-group containing polymer with an isocyanate crosslinking agent improved the strength of the adhesive whether it was removed slowly or quickly. The adhesives of Nagakura et al. also minimized the transference of the adhesive composition to the adherend. Thus, one having ordinary skill in the art would have been motivated to apply a known solution of using isocyanate crosslinking agents for hydroxyl-group containing polymers to β-1,3-glucans (hydroxyl-group containing polymers) in the same way, with an expectation of success.
Additionally, one having ordinary skill in the art would have been motivated to modify the acylated β-1,3-glucan adhesives with an isocyanate-based crosslinking agent because Nagakura et al. found certain adhesive properties could be modulated by the amount of crosslinking agent used (degree of crosslinking). These properties included durability and reworkability. And, Shibaue et al. teach increasing the degree of substitution along the β-glucan was desirable because it weakened the ability of the hydroxyl groups to form hydrogen bonds between the β-chains, thereby improving adhesiveness. Thus, the ordinary artisan would have had a reasonable expectation of success in preparing a pressure-sensitive adhesive wherein acylated β-1,3-glucan chains are further modified with crosslinking agents.
Nagakura et al. teach using 0.5 to 5.0 parts by weight isocyanate crosslinker per 100 parts by weight of the copolymer, which lies within the range recited in claim 3.
While neither Shibaue et al. nor Nagakura et al. expressly use the word “tape”, as discussed above, “tape” is broadly and reasonably interpreted as a layer of the pressure-sensitive adhesive as taught by both references, including a crosslinked pressure-sensitive adhesive as taught by Nagakura et al.
Thus, the claimed invention as a whole is prima facie obvious over the combined teaching of the prior art.
Response to Arguments
Applicant’s arguments, see page 8 of the remarks, filed 12 February 2026, with respect to the rejection(s) of claim(s) 1-4 on the ground of nonstatutory double patenting over the claims of the 18/566,505 application and 18/867,551, have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Shibaue.
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, 2 and 4 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of copending Application No. 18/566,505 (reference application) in view of Shibaue (cited above). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the reference application are directed towards a pressure-sensitive adhesive comprising an acylated β-1,3 glucan (DS 2.6-3.0) and an isocyanate compound.
The claims of the reference application do not expressly disclose wherein the acyl group is a myristoyl or palmitoyl group (present claim 1).
Shibaue et al. teach as discussed above.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to crosslink a myristoyl or palmitoyl acylated β-1,3 glucan with an isocyanate-based crosslinking agent.
In the same field of endeavor as the reference application drawn towards crosslinking acylated β-1,3-glucan with an isocyanate compound, Shibaue teaches a pressure-sensitive adhesive, wherein the adhesive is made from naturally occurring polysaccharides. The polysaccharide is an acylated β-1,3 glucan derivative, having a DS preferably 2.0-3.0. The ordinary artisan would have been motivated to acylate the beta-glucan with a myristoyl or palmitoyl group, because these are expressly preferred fatty acyl moieties having excellent thermoplasticity and adhesiveness at room temperature.
The claims are prima facie obvious over the claims of the reference application in view of Shibaue.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 2 and 4 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of copending Application No. 18/867,551 (reference application) in view of Shibaue (cited above). Although the claims at issue are not identical, they are not patentably distinct from each other because they are drawn towards a pressure-sensitive adhesive including acylated laminarin, a β-1,3-glucan, having a DS of greater than 2.0. The composition further comprises an isocyanate-based crosslinking agent.
The claims of the reference application do not expressly disclose wherein the acyl group is a myristoyl or palmitoyl group (present claim 1).
Shibaue et al. teach as discussed above.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to crosslink an myristoyl or palmitoyl acylated β-1,3 glucan with an isocyanate-based crosslinking agent.
In the same field of endeavor as the reference application drawn towards crosslinking acylated β-1,3-glucan with an isocyanate compound, Shibaue teaches a pressure-sensitive adhesive, wherein the adhesive is made from naturally occurring polysaccharides. The polysaccharide is an acylated β-1,3 glucan derivative, having a DS preferably 2.0-3.0. The ordinary artisan would have been motivated to acylate the beta-glucan with a myristoyl or palmitoyl group, because these are expressly preferred fatty acyl moieties having excellent thermoplasticity and adhesiveness at room temperature.
The claims are prima facie obvious over the claims of the reference application in view of Shibaue.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
In view of the rejections to the pending claims set forth above, no claim is allowed.
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.
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/BAHAR CRAIGO/
Primary Examiner
Art Unit 1699