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.
Claims 1-7, 10-11 and 40-44 are rejected under 35 U.S.C. 103 as being unpatentable over Ceulemans et al (9000073) in view of in view of Gill (5776242).
Ceulemans teaches adhesive compositions.
Ceulemans, col. 7, teaches adhesive composition comprising at least 7% and at most 30% by weight, based on the total adhesive composition, of adhesive component, the adhesive component comprising at least one polyvinyl alcohol and/or at least one dextrin and/or at least one starch, the adhesive composition further comprising a carbomer and optionally a boron compound.
Ceulemans, col. 9, teaches the composition can be an aqueous composition.
Ceulemans, col. 11, teaches the carbomer is preferably present in an amount of at least 5 ppm by weight based on the total adhesive composition and optionally not more than 2.5% by weight. The carbomer preferably is primarily or entirely a homopolymer of (meth)acrylic acid or methacrylic acid, or a copolymer of mixtures thereof, and which may be cross-linked.
Ceulemans, col. 24, teaches mineral fillers such as kaolin clay, calcium carbonate, titanium dioxide, etc. are often used in starch and dextrin adhesives at concentrations of 5-50%.
Although Ceulemans, col. 17 teaches fillers, this reference does not teach the filler to be a metasilicate.
Gill teaches sodium metasilicate is well-known and used commercially and is described.
Gil, col. 2, teaches a silicate-dextrin-clay based adhesive composition having increased penetration into paper and set time, increased shelf life and other desirable characteristics for use in the paper industry.
Gill, col. 4, teaches a silicate-dextrin clay adhesive wherein sodium metasilicate is present in the amount of .05-.5 weight %. Sodium silicate in dry form of Na2 SiO3, having a 2.0 to 5.5 ratio of SiO2 to Na2O is preferred for use in the adhesive compositions.
It 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 pertain to use sodium metasilicate as taught by Gil as the filler as taught by Ceulemans to increase penetration into paper and set time and to increase shelf life.
Therefore, the weight ratio of the carbomer to metasilicate is .0001-50
As set forth in MPEP 2144.05, in the case where the claimed range “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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claims 2-3, the references teach sodium silicate in dry form of Na2SiO3, having a 2.0 to 5.5 ratio of SiO2 to Na2O is preferred
Regarding claim 4, Ceulemans, col. 11, teaches the carbomer is preferably present in an amount of at least 5 ppm by weight based on the total adhesive composition and optionally not more than 2.5% by weight. The carbomer preferably is primarily or entirely a homopolymer of (meth)acrylic acid or methacrylic acid, or a copolymer of mixtures thereof, and which may be cross-linked.
Regarding claim 5, Ceulemans, col. 18, teaches a carbomer may be added, either as a powder or a liquid.
Regarding claim 6, Ceulemans, example 8, teaches a dry powder filler.
It 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 pertain that all fillers be present as powders to ensure the similar final composition.
Regarding claim 7, Ceulemans, col. 18, teaches a carbomer may be added, either as a powder or a liquid.
Ceulemans, example 8, teaches a dry powder filler.
It 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 pertain that all fillers be present as powders to ensure the similar final composition.
Regarding claim 10, Ceulemans, abstract, teaches the composition comprising a boron compound.
Regarding claim 11, Ceulemans, col. 9, teaches a suspension of a boron containing compound in water containing a carbomer.
Ceulemans, col. 9, teaches the adhesive composition of the present invention further comprises carboxymethyl cellulose (CMC) or cellulose gum, or xanthan gum.
Regarding claim 40, Ceulemans, col. 7, teaches adhesive composition comprising at least 7% and at most 30% by weight, based on the total adhesive composition, of adhesive component, the adhesive component comprising at least one polyvinyl alcohol and/or at least one dextrin and/or at least one starch, the adhesive composition further comprising a carbomer and optionally a boron compound.
Ceulemans teaches an aqueous adhesive.
Regarding claim 41, Ceulemans, col. 7, teaches more than 91.0% of all the starches in the composition are in a cold water insoluble form.
Regarding claim 42, Ceulemans, col. 19, teaches the starch may also be provided in a less pure form, such as the flour obtained from the dry processing of natural feedstocks, as explained above.
Regarding claim 43, Ceulemans, col. 15, teaches the adhesive composition of the present invention has a refractometer reading in % Brix of at most 15%.
Regarding claim 44, Ceulemans, col. 16, teaches the composition is substantially free of boron or a boron-containing compound and/or of free NaOH.
Claims 1, 3-7, 10-11 and 40-44 are rejected under 35 U.S.C. 103 as being unpatentable over Ceulemans et al (9000073) in view of in view of Appley et al (20140323618).
Ceulemans teaches adhesive compositions.
Ceulemans, col. 7, teaches adhesive composition comprising at least 7% and at most 30% by weight, based on the total adhesive composition, of adhesive component, the adhesive component comprising at least one polyvinyl alcohol and/or at least one dextrin and/or at least one starch, the adhesive composition further comprising a carbomer and optionally a boron compound.
Ceulemans, col. 9, teaches the composition can be an aqueous composition.
Ceulemans, col. 11, teaches the carbomer is preferably present in an amount of at least 5 ppm by weight based on the total adhesive composition and optionally not more than 2.5% by weight. The carbomer preferably is primarily or entirely a homopolymer of (meth)acrylic acid or methacrylic acid, or a copolymer of mixtures thereof, and which may be cross-linked.
Ceulemans, col. 24, teaches mineral fillers such as kaolin clay, calcium carbonate, titanium dioxide, etc. are often used in starch and dextrin adhesives at concentrations of 5-50%.
Although Ceulemans, col. 17 teaches fillers, this reference does not teach the filler to be a metasilicate.
Appley teaches carbohydrate polyamine binders.
Appley, paragraph 72 of the PGPUB, teaches a binder of the present invention may include one or more corrosion inhibitors such as sodium metasilicate. These corrosion inhibitors prevent or inhibit the eating or wearing away of a substance, such as, metal caused by chemical decomposition brought about by an acid. When a corrosion inhibitor is included in a binder of the present invention, the binder's corrosivity is decreased as compared to the corrosivity of the binder without the inhibitor present. In one embodiment, these corrosion inhibitors can be utilized to decrease the corrosivity of the mineral fiber-containing compositions described herein. When included in a binder of the present invention, corrosion inhibitors are typically present in the binder in the range from about 0.5 percent to about 2 percent by weight based upon the dissolved binder solids.
It 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 pertain to use sodium metasilicate as taught by Appley as the filler as taught by Ceulemans so the binder's corrosivity is decreased as compared to the corrosivity of the binder without the inhibitor present.
Therefore, the weight ratio of the carbomer to metasilicate is .001-.8
As set forth in MPEP 2144.05, in the case where the claimed range “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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 3, the references teach sodium silicate in dry form of Na2SiO3, having a 2.0 to 5.5 ratio of SiO2 to Na2O is preferred
Regarding claim 4, Ceulemans, col. 11, teaches the carbomer is preferably present in an amount of at least 5 ppm by weight based on the total adhesive composition and optionally not more than 2.5% by weight. The carbomer preferably is primarily or entirely a homopolymer of (meth)acrylic acid or methacrylic acid, or a copolymer of mixtures thereof, and which may be cross-linked.
Regarding claim 5, Ceulemans, col. 18, teaches a carbomer may be added, either as a powder or a liquid.
Regarding claim 6, Ceulemans, example 8, teaches a dry powder filler.
It 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 pertain that all fillers be present as powders to ensure the similar final composition.
Regarding claim 7, Ceulemans, col. 18, teaches a carbomer may be added, either as a powder or a liquid.
Ceulemans, example 8, teaches a dry powder filler.
It 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 pertain that all fillers be present as powders to ensure the similar final composition.
Regarding claim 10, Ceulemans, abstract, teaches the composition comprising a boron compound.
Regarding claim 11, Ceulemans, col. 9, teaches a suspension of a boron containing compound in water containing a carbomer.
Ceulemans, col. 9, teaches the adhesive composition of the present invention further comprises carboxymethyl cellulose (CMC) or cellulose gum, or xanthan gum.
Regarding claim 40, Ceulemans, col. 7, teaches adhesive composition comprising at least 7% and at most 30% by weight, based on the total adhesive composition, of adhesive component, the adhesive component comprising at least one polyvinyl alcohol and/or at least one dextrin and/or at least one starch, the adhesive composition further comprising a carbomer and optionally a boron compound.
Ceulemans teaches an aqueous adhesive.
Regarding claim 41, Ceulemans, col. 7, teaches more than 91.0% of all the starches in the composition are in a cold water insoluble form.
Regarding claim 42, Ceulemans, col. 19, teaches the starch may also be provided in a less pure form, such as the flour obtained from the dry processing of natural feedstocks, as explained above.
Regarding claim 43, Ceulemans, col. 15, teaches the adhesive composition of the present invention has a refractometer reading in % Brix of at most 15%.
Regarding claim 44, Ceulemans, col. 16, teaches the composition is substantially free of boron or a boron-containing compound and/or of free NaOH.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Ceulemans et al (9000073) in view of in view of Appley et al (20140323618) as applied to claim 1 and further in view of Gill (5776242).
Although the references teach sodium metasilicate, the references do not teach the molar ratio of sodium metasilicate.
Gill teaches sodium metasilicate is well-known and used commercially and is described.
Gil, col. 2, teaches a silicate-dextrin-clay based adhesive composition having increased penetration into paper and set time, increased shelf life and other desirable characteristics for use in the paper industry.
Gill, col. 4, teaches a silicate-dextrin clay adhesive wherein sodium metasilicate is present in the amount of .05-.5 weight %. Sodium silicate in dry form of Na2 SiO3, having a 2.0 to 5.5 ratio of SiO2 to Na2O is preferred for use in the adhesive compositions.
It 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 pertain to incorporate sodium metasilicate having a 2.0 to 5.5 ratio of SiO2 to Na2O as taught by Gil as the sodium metasilicate as taught by the references above as this is a preferred sodium metasilicate to use in adhesive compositions.
Response to Arguments
Applicant’s arguments, filed 8/8/25, with respect to claims 1-7, 10-11 and 40-44 have been fully considered and are persuasive. The rejection of Ceulemans, Swarup and Skuratowiicz has been withdrawn.
Applicant's arguments filed 8/8/25 have been fully considered but they are not persuasive.
Applicant argues, on page 10 and 11 of the arguments, as explained in the background section of the published application (see paragraphs [0019]-[0025], of the US application as published, or from page 6, line 20, to page 8, line 11, in the parent application as originally filed), a person having ordinary skill in the art at the time of filing the present application wanted absolutely to avoid the introduction of sodium metasilicate into the adhesive composition of Ceulemans.
Examiner respectfully traverses.
The above background does not teach the amount of sodium metasilicate present in an adhesive that would cause adverse properties. Additional, information would need to be disclosed discussing what amount of sodium metasilicate would adverse properties.
Further, paragraph 42 of Ceulemans, teaches the curable composition may contain optional ingredients to improve certain properties of the composition upon curing.
Therefore, this composition broadly can comprise additional ingredients beyond fillers.
Applicant argues it was surprisingly found that the above problems of the use of sodium metasilicate do not occur when used in the presence of the carbomer in the adhesive composition, according to present claim 1.
Examiner respectfully traverses.
The data is not commensurate in scope with the scope of the claims.
Specifically, the data only shows an adhesive composition in the form of an aqueous composition, the adhesive composition comprising a specific starch in a specific amount wherein the composition further comprises a specific carbomer in a specific amount and a specific alkali metal metasilicate in a specific amount, wherein the carbomer and the metasilicate are present in the adhesive composition in a specific weight ratio of carbomer over metasilicate and wherein the carbomer is present in a specific amount and the metasilicate is present in a specific amount
While the present claims broadly encompass an adhesive composition in the form of either an aqueous composition or dry powder composition, the adhesive composition comprising at least one adhesive selected from ANY starch, ANY dextrin and ANY polyvinyl alcohol in ANY amount, the composition further comprising ANY crosslinked carbomer and a metasilicate of ANY alkali metal, wherein the carbomer and the metasilicate are present in the adhesive composition in a weight ratio of carbomer over metasilicate which is higher than 0.50 and at most 5.00, wherein the carbomer is present in the adhesive composition in the range of 50 ppm weight to 6.0%wt and wherein the metasilicate is present in the adhesive composition in the range of 0.01% wt to 15%wt.
Additionally, the data does not show using the amount of the carbomer, metasilicate and weight ratio of the carbomer over metasilicate at the lower end value and at the upper end value (i.e., 50 ppm-6 wt%, .01-15wt% and .5-5).
As set forth in MPEP 716.02(d), whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support”. In other words, the showing of unexpected results must be reviewed to see if the results occurred over the entire claimed range, In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). Applicants have not provided data to show that the unexpected results do in fact occur over the entire claimed range of 50 ppm-6 wt%, .01-15wt% and .5-5.
Secondly, there is no proper side-by-side comparison. Therefore, it is unclear if the advantageous properties of the claimed invention are due to the amount of the carbomer, the amount of metasilicate or weight ratio of the carbomer over metasilicate present in the composition.
Applicant argues that the combination of sodium metasilicate with a carbomer in the same adhesive composition is not proposed by any of the prior art, and therefore any argument stating that this combination would be obvious must inevitably be based on hindsight knowledge that has been gained from reading the present patent application, and that would fly against accepted wisdom in the field.
Examiner respectfully traverses.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed.Cir. 2006); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662,1685 (Fed. Cir. 2005); In re Linter, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972) (discussed below); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991). MPEP 2144 IV.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
CN101417319 teaches a starch glue adhesive comprising .5-2% waterglass.
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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/STEFANIE J COHEN/Examiner, Art Unit 1732 10/8/25