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 .
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 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.
Application Status
This is a first action on the merits. A preliminary amendment was filed on 30 August 2023 amending claim 5. Claims 1-5 are pending.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 30 August 2023, 12 October 2023, and 24 February 2025 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Specification
The disclosure is objected to because of the following informalities. Appropriate correction is required.
The specification describes the symbols 1, 2, 3, and 10 as being used in the drawing figures. However, “10” which designates the release sheet (see, e.g., p. 10, [0068] of the original specification) is not present in the description of reference numerals at p. 40, [0186] of the original specification. Additionally, “1” is not used in the figures as noted in paragraph 6 below.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign mentioned in the description:
“1” is used in the specification at paragraph [0186] to designate the pressure-sensitive adhesive sheet, but is not present in the drawings.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1 and 5 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-2 of copending Application No. 18/273,088. The claims filed on 19 July 2023 were considered for analysis. This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented. Although the conflicting claims are not identical, they are not patentably distinct from each other because of the following reasons:
Regarding claim 1, claim 1 of the ‘088 application recites a film comprising a β-1,3-glucan derivative obtained by introducing an acyl group into a β-1,3-glucan, and also at least one resin which is a rosin-based resin, terpene-based resin, or a petroleum-based resin. The acyl group is represented by RCO- in which the R group has 1 or more or 5 or less carbon atoms. This reads on the substrate of claim 1.
Claim 2 of the ‘088 application further recites a pressure-sensitive adhesive tape comprising the film of claim 1 with a pressure-sensitive adhesive layer disposed on one surface in a thickness direction of the film.
Claim 2 of the ‘088 application thus overlaps the same scope as claim 1 of the present application.
Regarding claim 5, claim 1 of the ‘088 application also recites that the amount of resin is 90 parts by weight or less based on 100 parts by weight of the β-1,3-glucan derivative. This overlaps the claimed range of 10 to 300 parts by mass of the resin based on 100 parts by weight of the β-1,3-glucan derivative.
Allowable Subject Matter
Claims 2-4 are 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 an examiner's statement of the reasons for allowance:
The base claim is claim 2.
The present claims are deemed allowable over the references since the references do not disclose or render obvious a substrate film comprising a combination of a β-1,3-glucan derivative with a resin as specified used with a pressure-sensitive adhesive layer which contains a biomass-derived component.
While JP 2017-193667 A discloses an acylated β-1,3-glucan derivative derived from an algae material, this glucan derivative is not combined with one of the specified resins and used as a support film for an adhesive layer as claimed.
JP 2018-154723 A discloses an acylated β-1,3-glucan derivative which is formulated into an adhesive composition. This adhesive includes a biomass component because the biomass is the raw material for the β-1,3-glucan derivative. The adhesive is disposed on a polyethylene terephthalate (PET) film and thus is not used with a substrate that also contains a β-1,3-glucan derivative and resin as claimed.
Shibakami (U.S. Pub. 2015/0299339) describes acylation of hydroxyl groups of β-1,3-glucan to produce a β-1,3-glucan derivative. The derivative can be combined with a resin and used to form a molded body. However, Shibakami does not specify using a rosin-based resin, terpene-based resin, or petroleum-based resin as the added resin component. Furthermore, Shibakami does not teach or suggest using this material in combination with an adhesive.
Conclusion
Claims 1 and 5 are rejected. Claims 2-4 are objected to as being dependent on a rejected base claim.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Scott R. Walshon whose telephone number is (571)270-5592. The examiner can normally be reached Mon-Fri from 9am - 6pm.
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/Scott R. Walshon/ Primary Examiner, Art Unit 1759