RESPONSE TO AMENDMENT
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 .
Application Status
Amendments to the specification, abstract, and claims 1-12, filed on 27 March 2026, have been entered in the above-identified application. Claims 1-12 are pending.
WITHDRAWN REJECTIONS
The objections to claims 8 and 11 made of record on page 3 paragraph 5 of the office action mailed 07 January 2026 have been withdrawn due to Applicant’s amendments in the response filed 27 March 2026.
The 35 U.S.C. § 112(b) rejection of claims 1-12, made of record on page 3, paragraph 7 of the office action mailed 07 January 2026 have been withdrawn due to Applicant’s amendments in the response filed 27 March 2026.
REPEATED REJECTIONS
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 1-7, 11, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Yatagai (U.S. Pub. 2009/0186221) in view of WO 2021/054215 A1. A machine translation of WO ‘215 was relied upon for analysis.
Regarding claim 1, Yatagai discloses an aqueous dispersion pressure-sensitive adhesive composition with a rubber base, see p. 1, [0009]. The adhesive comprises both natural rubber latex and styrene-butadiene rubber (SBR) latex in a mass ratio range of 90:10 to 10:90, preferably 70:30 to 30:70, see p. 2, [0031]. In Example 1 at p. 7, [0086], the natural latex and SBR latex are mixed in a 50:50 mass ratio. The Example uses 50 parts of natural rubber latex, 50 parts of SBR latex, and 174 parts wet weight of a resin emulsion which includes 92 parts of toluene and water. Thus the amount of natural rubber latex and SBR latex is each 50 parts of each latex out of (50 + 50 + 174 – 92 parts total solids) = 27.5 wt. % of each of natural rubber latex and SBR latex on a solids basis. These amounts are within the claimed range of the natural latex and SBR latex.
Yatagai teaches that the adhesive may be applied to a paper substrate, reading on an adhesive suitable for application to wood. See p. 2, [0018].
The adhesive includes a polycarboxylic acid salt in which the cation is preferably a quaternary ammonium ion, see p. 3, [0044] and p. 4, [0051]. The amount of this material is preferably about 2 to 8 parts by mass based on 100 parts by mass of rubber latex, see p. 4, [0056]. Dispersants A and B used in the Examples are quaternary ammonium salt polymers, see Table 2 on p. 7 and description at p. 6, [0075-0077]. This reads on the claimed curing agent.
Yatagai also teaches that am aqueous polymer additive such as polyvinyl alcohol may be included, see p. 5, [0063], however Yatagai does not specify the amount of this material.
WO ‘215 describes a pressure-sensitive adhesive tape with an aqueous emulsion rubber component and polyvinyl alcohol, see p. 2, second paragraph of the translation. The rubber may be a blend of natural rubber and synthetic rubber latex in a blend of preferably 70:30 to 30:70 or even 60:40 to 40:60, see p. 2, fifth paragraph. Polyvinyl alcohol is also included, see p. 3, first paragraph, and is present in the amount of 5 to 30 parts by mass with respect to 100 parts by mass of rubber component, see p. 3, sixth paragraph. This substantially overlaps the claimed range of 2-30 weight percent of polyvinyl alcohol as claimed.
WO ‘215 teaches including the polyvinyl alcohol within this range to obtain an emulsion adhesive which has excellent adhesive strength and holding power with little adhesive residue. See p. 3, first and sixth paragraphs.
By using 100 parts by mass of a combination of natural rubber latex and SBR latex and 15 parts by mass of polyvinyl alcohol (the midpoint of the preferred range disclosed in WO ‘215 at p. 3, sixth paragraph), the main agent comprises 115 parts by mass and the quaternary ammonium salt reading on the curing agent is 2 to 8 parts by mass. Thus the ratio of main agent to curing agent is about 115:2 to 115:8, or about 57.5:1 to 14.3:1. This is within the claimed range of 200:1 and 1:1.
Yatagai and WO ‘215 are analogous as they each disclose emulsion pressure-sensitive adhesives with a blend of natural and synthetic rubber latex, thus they are similar in composition and function.
It would have been obvious to one of ordinary skill in the art at the time of the invention to combine the teachings of Yatagai and WO ‘215 by employing polyvinyl alcohol in the range disclosed in WO ‘215 in order to arrive at the claimed invention, as WO ‘215 teaches using polyvinyl alcohol in this amount to provide suitable adhesive strength and holding power while reducing adhesive residue. A reasonable expectation of success is present as Yatagai also teaches that polyvinyl alcohol may be employed in the adhesive composition, and both references use a blend of rubber latexes in the adhesive composition.
Regarding claim 2, By using 100 parts by mass of a combination of natural rubber latex and SBR latex and 15 parts by mass of polyvinyl alcohol (the midpoint of the preferred range disclosed in WO ‘215 at p. 3, sixth paragraph), the main agent comprises 115 parts by mass and the quaternary ammonium salt reading on the curing agent is 2 to 8 parts by mass. Thus the ratio of main agent to curing agent is about 115:2 to 115:8, or about 57.5:1 to 14.3:1. This is within the claimed range of 100:1 and 10:3 (about 3.33:1).
Regarding claim 3, WO ‘215 teaches using from 5-30 parts by mass of the polyvinyl alcohol, more preferably 10-20 parts by mass, based on 100 parts by mass of rubber latex. See p. 3, sixth paragraph.
Regarding claim 4, WO ‘215 teaches that the degree of saponification of the polyvinyl alcohol is 70-99.9 mol. %, most preferably 80-95 mol. %, see p. 3, third paragraph.
Regarding claim 5, Considering Example 1 of Yatagai at p. 7, [0086], the example uses 50 parts of natural rubber latex, 50 parts of SBR latex, and 174 parts wet weight of a resin emulsion which includes 92 parts of toluene and water. Thus the amount of synthetic rubber latex is 50 parts out of (50 + 50 + 174 – 92 parts total solids) = 27.5 wt. % of SBR latex on a solids basis.
Regarding claims 6 and 7, Considering Example 1 of Yatagai at p. 7, [0086], the example uses 50 parts of natural rubber latex, 50 parts of SBR latex, and 174 parts wet weight of a resin emulsion which includes 92 parts of toluene and water. Thus the amount of natural rubber latex is 50 parts out of (50 + 50 + 174 – 92 parts total solids) = 27.5 wt. % of natural rubber latex on a solids basis.
Regarding claim 11, Yatagai teaches including a cellulose derivative in the adhesive composition, see p. 5, [0063].
Regarding claim 12, Yatagai teaches including an antioxidant in the adhesive composition, see p. 5, [0063]. WO ‘215 also teaches including a thickener, see p. 3, bottom paragraph.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Yatagai (U.S. Pub. 2009/0186221) in view of WO 2021/054215 A1 and Honda (U.S. Pub. 2021/0261834). A machine translation of WO ‘215 was relied upon for analysis.
Regarding claim 8, Yatagai and WO ‘215 are relied upon as described above. Neither reference teaches or suggests using an epoxidized natural latex or deproteinized natural latex as the natural latex.
However, Honda similarly discloses an emulsion-based adhesive comprising a styrene-butadiene rubber and a natural rubber, see abstract. The natural rubber may include a natural rubber modified with a functional groups including an epoxidized natural rubber latex, see p. 2, [0029].
Yatagai, WO ‘215, and Honda are analogous as they each disclose adhesive emulsions formulated with a combination of natural rubber and styrene-butadiene rubber latexes. Thus they are similar in composition and function.
It would have been obvious to have used an epoxidized natural rubber latex as the natural rubber of Yatagai to arrive at the claimed invention as Honda teaches that functionalized natural rubbers are suitable natural rubber components to include in a rubber blend adhesive emulsion composition, see Honda at p. 2, [0029].
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Yatagai (U.S. Pub. 2009/0186221) in view of WO 2021/054215 A1 as applied above, and further in view of Watanabe (U.S. Pub. 2020/0339842).
Regarding claim 9, Yatagai and WO ‘215 are relied upon as described above. Neither reference teaches or suggests using an isocyanate curing agent as claimed.
However, Watanabe also describes a natural rubber based emulsion adhesive, see abstract and p. 4, [0033]. The adhesive composition includes a crosslinking agent to increase the cohesive strength of the adhesive, see p. 6, [0047]. Suitable crosslinking agents are isocyanate compounds such as those having a plurality of isocyanate groups such as tolylene diisocyanate or xylene diisocyanate or polyether polyisocyanates, see p. 6, [0050-0052].
Yatagai, WO ‘215, and Watanabe are analogous because they are similar in composition and function, as each describes adhesive emulsions formulated with natural rubber.
It would have been obvious to one of ordinary skill in the art at the time of the invention to have included an isocyanate based crosslinking agent in the adhesive composition of Yatagai in order to arrive at the claimed invention. One of ordinary skill in the art would have been motivated to include the isocyanate because Watanabe teaches that a crosslinking agent is employed to increase the cohesive strength of the adhesive (see p. 6, [0047]) and that isocyanate based crosslinking agents are preferred (see p. 6, [0050-0052]).
Claims 9 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Yatagai (U.S. Pub. 2009/0186221) in view of WO 2021/054215 A1 as applied above, and further in view of Rashid (U.S. Pub. 2020/0171698).
Regarding claims 9 and 10, Yatagai and WO ‘215 are relied upon as described above. Neither reference teaches or suggests using isocyanate compounds or polyaminoamide-epichlorohydrin resin (PAE) as a curing agent.
However, Rashid describes binder materials for natural materials such as glycan and starch, see abstract and p. 1, [0002]. The binder preferably includes a crosslinking agent such as polyamidoamine epichlorohydrin (PAE) up to 40% by weight, see paragraphs [0187] and [0219]. This reads on the curing agent of claim 10. The binding agent may include isocyanate materials such as polymethylene diphenyl diisocyanate, see paragraph [0221]. This reads on the curing agent of claim 9.
Yatagai, WO ‘215, and Rashid are analogous because they are similar in composition and function, as each describes binding compositions formulated with natural materials.
It would have been obvious to one of ordinary skill in the art at the time of the invention to have included either one or both of a PAE curing agent or an isocyanate-functional binding agent in the adhesive composition of Yatagai in order to arrive at the claimed invention. One of ordinary skill in the art would have been motivated to include the PAE and/or isocyanate to increase the structural stability of the natural material, see Rashid at paragraphs [0217] and [0221].
RESPONSE TO APPLICANT’S ARGUMENTS
Applicant’s arguments in the response filed 27 March 2026 regarding the 35 U.S.C. § 103 rejection of claims 1-7 and 11-12 of record over Yatagai (U.S. Pub. 2009/0186221) in view of WO 2021/054215 A1 have been carefully considered but are deemed unpersuasive.
Applicant argues on p. 9 of the remarks that the references are not analogous the present invention, as the claims are directed to a structural water-based adhesive composition formulated for wood and bamboo whereas the references relied upon for the rejection are for formulations directed to reducing adhesive residue in tapes (WO ‘215) or improving the mechanical processing stability of latex compositions (Yatagai) to address the problem of delamination resistance and structural strength of wood under extreme environmental conditions.
In order for a reference to be proper for use in an obviousness rejection under 35 U.S.C. § 103, the reference must be analogous to the claimed invention. A reference is analogous if (1) the reference is from the same field of endeavor as the claimed invention, even if it addresses a different problem, or (2) the reference is reasonably pertinent to the problem faced by the inventor even if it is not in the same field of endeavor as the claimed invention. See MPEP 2141.01(a) and In re Bigio, 381 F.3d 1320, 1325 72 USPQ2d 1209, 1212 (Fed. Cir. 2004).
In this case, Yatagai and WO ‘215 are analogous as they each disclose emulsion pressure-sensitive adhesives with a blend of natural and synthetic rubber latex, thus they are similar in composition and function and reasonably pertinent to the problem faced by the inventor of formulating an adhesive composition with a blend of natural and synthetic rubber latex. Accordingly, the references are considered to be analogous art.
Applicant further argues at p. 9 of the remarks that the present claims recite the use of a quaternary ammonium salt polymer (PAE) or isocyanates as a curing agent that chemically crosslinks with PVA and rubber to form a structural bonding layer capable of passing the C4 boiling water test. Yatagai contains no teaching or suggestion that its dispersant could or should function as a curing agent for achieving structural water resistance in wood building.
The Examiner is not persuaded. In response to applicant's argument that the quaternary ammonium component in the prior art is employed for a different purpose, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., being capable of passing a C4 boiling water test) are not recited in the rejected claims. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Accordingly, this 35 U.S.C. § 103 rejection is maintained.
Applicant’s arguments in the response filed 27 March 2026 regarding the 35 U.S.C. § 103 rejection of claims 9-10 of record over Yatagai in view of WO ‘215 and also in view of Rashid (U.S. Pub. 2020/0171698) have been carefully considered but are deemed unpersuasive.
Applicant argues on p. 10 of the remarks that Rashid is directed to bulk binder materials and mentions PAE and MDI only in the context of a binder material used to produce three-dimensional shaped articles, where the binder functions as a bulk matrix for wood particles. The claimed invention is an adhesive composition acting at a thin interface between solid wood surfaces, with materially different kinetics and performance requirements.
The Examiner is not persuaded. The claimed are directed to a water-based adhesive composition which is intended to be used as an adhesive for wood and bamboo, but is not limited to use only at a thin interface between solid wood surfaces. A binder composition for particleboards also serves to bind wood materials. Furthermore, such a composition is capable of acting as a wood adhesive. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., being used as a thin interface between solid wood surfaces) are not recited in the rejected claims. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant further refers to alleged unexpected results to further support the non-obviousness of the claimed invention. Applicant refers specifically to embodiments 1-4 which pass the stringent C4 boiling water resistance test and comparative examples 1 and 2 which fail the C4 test.
The Examiner is not persuaded. MPEP § 716.02 describes the requirements to rebut a prima facie case of obviousness by relying upon unexpected results. In particular, MPEP § 716.02(d) notes that the unexpected results must be commensurate in scope with the claimed invention. To establish criticality of a claimed range, applicant should compare a sufficient number of tests both inside and outside the claimed ranges to show the criticality of the claimed range. See In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960); MPEP § 716.02(d)(II).
In the instant case, the data provided is not commensurate in scope with the claims. The claims have a wide range of weight ratio of the main agent to the curing agent of 200:1 to 1:1, and wide ranges for the components as noted in the table below, whereas the examples use more specific range. There is insufficient evidence to demonstrate applicant’s claim of unexpected results for the entire scope of the claimed invention.
Property
Claimed Range
Values in Examples
Comparative Examples outside range?
Weight ratio of main agent to curing agent
200:1 to 1:1
8:1 for each example
None; all examples and comparative example are 80 parts main agent and 10 parts curing agent
Amount of polyvinyl alcohol
2-30 wt. % (claim 1);
3-25 wt. % (claim 3)
10/90, 20/110,
(approx.. 11 wt.%, 18 wt. %)
Embodiment 3 has 50 parts PVA out of 110 parts, about 45 wt. % which is out of range yet still passes the C4 test; Comparative Example 2 has 40 parts PVA out of 110 parts, about 36 wt%, and fails the C4 test
Amount of synthetic rubber latex
2-60 wt. % (claim 1);
3-55 wt. % (claim 5)
20/90, 50/110 (approx.. 22 wt. % and 45 wt. %)
None
Amount of natural latex
5-90 wt. % (claim 1);
5-85 wt. % (claim 6);
5-75 wt. % (claim 7)
50/80, 10/110
(approx. 63 wt. % and 9 wt. %)
None
As can be seen in the table above, the evidence of unexpected results is not commensurate in scope with the claims. Thus the evidence of nonobviousness is insufficient to overcome the prima facie case of obviousness.
Accordingly, this 35 U.S.C. § 103 rejection is maintained.
Conclusion
All claims are rejected.
THIS ACTION IS MADE FINAL. 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 extension fee 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 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
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