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 § 103
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 1 is rejected under 35 U.S.C. 103 as being unpatentable over Shibaue (JP 2018-154723) in view of Uchida et al. (JP 2005-314290). Note: Machine translations are being used for JP 2018-154723 and JP 2005-314290.
Considering Claim 1: Shibaue teaches a film (pg. 5) comprising a β-1,3-glucan derivative having acyl groups such as acetyl, propionyl, butyryl or pentanoyl groups (pg. 3).
Shibaue does not teach the claimed resin. However, Uchida et al. teaches adding a rosin based, terpene based, or petroleum based tackifier (pg. 6) to an adhesive comprising a β-1,3-glucan (pg. 3). Shibaue and Uchida et al. are analogous art as they are concerned with the same field of endeavor, namely β-1,3-glucan adhesives. It would have been obvious to a person of ordinary skill in the art to have added the tackifier of Uchida et al. to the composition of Shibaue, and the motivation to do so would have been, as Uchida et al. suggests, to increase the adhesion of the adhesive to the substrate.
Shibaue does not teach the amount of the resin. However, a tackifier provides initial tack to the adhesive, and thus the amount of the tackifier would be considered to be a result effective variable. It would have been obvious to a person of ordinary skill in the art to have optimized the amount of the resin through routine experimentation, and the motivation to do so would have been, as Uchida et al. suggests, to increase the adhesion of the adhesive to the substrate.
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.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of copending Application No. 18/039,179 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Considering Claim 1: Claim 5 of application ‘179 teaches a tape/film comprising a glucan derivative with an acyl group incorporated into a β-1,3-glucan, and a rosin based resin. Claim 4 of application ‘179 teaches the rosin based resin as being present in an amount of 10 to 100 parts by weight of the β-1,3-glucan.
Claim 3 of application ‘179 teaches the acyl group as comprising 5 to 16 carbon atoms. This overlaps with the claimed range of 1 to 5 carbon atoms. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05. It would have been obvious to a person of ordinary skill in the art to have prepared a glucan with an acyl group of 5 carbon atoms, and the motivation to do so would have been, as application ‘179 suggests, it is suitable for the composition.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
Claim 2 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: The prior art of record does not teach the claimed adhesive tape comprising a film having the claimed composition and a pressure sensitive adhesive layer disposed on the surface of the film. The closest prior art is Shibaue, discussed above. Shibaue teaches the glucan derivative as being part of an adhesive itself, and there is no suggestion in the prior art to apply an adhesive layer onto the adhesive layer of Shibaue. As such, the claimed adhesive tape is non-obvious in view of the prior art of record.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LIAM J HEINCER whose telephone number is (571)270-3297. The examiner can normally be reached M-F 7:30-5:00.
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/LIAM J HEINCER/Primary Examiner, Art Unit 1767