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 .
Election/Restrictions
Applicant's election with traverse of Group I and the species encompassed by claims 1, 3-8, 11, and 13 in the reply filed on February 17, 2026 is acknowledged. The traversal is on the ground(s) that the Office has not provided any reasons or examples to support patentable distinctness of the species. This is not found persuasive because in this national stage application species are deemed to lack unity of invention when they are not so linked as to form a single general inventive concept under PCT Rule 13.1, as listed. (See Office action, 4, Dec. 23, 2025.) In other words “patentable distinctness” considered under the US practice does not apply here.
Applicant further traverses on the ground(s) that the Office has not established a serious burden, per MPEP § 803. (Remarks, 3, 4.) This is not found persuasive because the cited MPEP section and the issue of serious burden again does not apply to this national stage application.
Applicant further traverse on the ground(s) that the Office has not “provided any indication that the content of the claims interpreted in light of the description was considered in making the assertion of a lack of unity”, and “there is a technical relationship that involves the same special technical feature”. (Remarks, 4 (emphases in original).) This is not found persuasive because Applicant has not “distinctly and specifically point[ed] out” (37 CFR 1.111(b)) how the Office’s interpretation differs from “claims interpreted in light of the description”, and what the alleged “technical relationship that involves the same special technical feature” is to the extent it differs from the Office’s position (See Office action, 5, Dec. 23, 2025.)
The requirement is still deemed proper and is therefore made FINAL.
Claims 2, 9, and 10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species, there being no allowable generic or linking claim. Claims 14 and 15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on February 17, 2026.
Claim Objections
Claim 5 is objected to because of the following informalities: “wherein (B)” should include “component” in the middle for consistency. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 3-8, 11, and 13 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 1 and 11 recite “wherein (B1) a polymer…is contained as the component (B)” and “wherein a mass content ratio of the component (B) to the component (B), ((B1)/(B)), is 0.5 or more”. As written, (B1) is (B). Therefore the only possible mass ratio of (B1)/(B) is 1.
Perhaps the intended meaning is that (B) comprises polymer (B1). In this case however “0.5 or more” does not make sense because the maximum possible (B1)/(B) is 1.
For the purposes of examination now the claim phrase is construed as “wherein (B) comprises polymer (B1) …”.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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, 3-8, 11, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Mukai (WO 2018/194132 A1; citations are to US 2021/0196613) as evidenced by Polyvinyl Acetal Resin S-LEC B / K (KS) (available at https://www.sekisui.co.jp/cs/eng/products/1400626_33175.html, accessed on 3/27/2026).
Mukai teaches “a coating comprising fibers having an excellent adhesivity to the skin,” formed by “directly electrostatically spraying on the skin” (abstract; see title; paras.0018-21, 0027-44, 0148-62). The coating composition comprises, component (a) a volatile substance chosen from an alcohol and ketone; component (b)a water-insoluble polymer for fiber formation; and component (c) water (abstract). Table 1 (p.15) shows Example 8 comprising ethanol and water at a total of 90%, and PVB-3 or polyvinyl butyral (S-LEC BH-3 having molecular weight 10.8x104, para.0156; see Polyvinyl Acetal Resin S-LEC B / K (KS), “Grades and properties“, available at https://www.sekisui.co.jp/cs/eng/products/1400626_33175.html, accessed on 3/27/2026) at 10.0%. Ethanol and water comprise component (A) in instant claim 1, and polyvinyl butyral comprises component (B). The mass ratio of component (B) to component (A) is 0.11 (10.0/90.0).
Example 8 does not comprise a polyol. However Mukai teaches “[t]he spraying composition A may contain only the above components (a) to (c), or may contain other components in addition to the components (a) to (c)” and “[e]xamples of the other components include a polyol, a liquid oil, …”. “When the spraying composition contains other component(s), the content ratio of the other components is … more preferably 0.5 mass % or more and 20 mass % or less.” (Para.0043.) The mass ratio of component (B) to component (C) or the polyol therefore ranges from 20 to 0.5 (e.g., 20) which range overlaps that in claim 1. For result-effective variables, in the case where claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP § 2144.05 (citations omitted). Also optimization within prior art conditions or through routine experimentation does not support patentability absent comparative evidence of criticality of the claimed range. See MPEP § 2144.05 (II) (citations omitted).
Furthermore here the skilled person would have been motivated to include glycerol or a polyol such that the ratio is 5, because Mukai’s Examples 2, 4, and 6 comprise 2.0% glycerol which yields the ratio (B)/(C) of 5. Examples 2, 4, and 6 differ in composition from Example 8 solely in comprising polyvinyl butyral, PVB-1, having a lower molecular weight than the PVB-3 of Example 8.
Regarding claim 8, as noted above Mukai teaches including “other components” including a liquid oil, in its coating compositions (para.0043; see para.0109).
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to H. S. PARK whose telephone number is (571)270-5258. The examiner can normally be reached on weekdays.
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/H. SARAH PARK/Primary Examiner, Art Unit 1614