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 in the reply filed on 06/01/2026 is acknowledged. The traversal is on the ground(s) that structure comprising a water based coldseal cohesive composition on a substrate. The election is made with traverse because the examination of these claims at the present time will not result in any added burden of search and consideration. Said argument is noted but is not persuasive as restriction practice under 371 practice does not require a showing of “added burden of search and consideration.”
In addition, Applicant argues restriction is improper because there was no lack of unity in the International Preliminary Report on Patentability and the Written Opinion of the International Search Authority. Said argument is noted but is not persuasive as the examiner is not aware of any obligation for the national stage offices to concede the determination of unity of invention to the international search authority.
Furthermore, applicant argues Examiner has mis-characterized the technical feature of the present invention, which applicant argues is " the improvement of the biodegradability/compostability of the structure (substrate +coldseal composition) while maintaining good sealing/adhesion properties, or even improving them (cf. examples 1-3 versus comparative example 4 in tables 2 and 3, and example 7 in tables 8 and 9)." Said argument is noted but is not persuasive as said argument is not commensurate in scope with the pending claims; none of the independent claims require improved and/or maintained/improved adhesion properties.
Moreover, applicant argues Horrocks does not deal with the biodegradable/compostable aspect of the present invention and discloses the use of several non-biodegradable and/or non- compostable ingredients, including the substrate used by Horrocks. Said argument is noted but is not persuasive as said argument is not commensurate in scope with the pending claims; the claims do not require the structure to be biodegradable; rather, only the “resinous material” is claimed as biodegradable.
Thus, applicant’s argument is not found persuasive because of the reasons noted above.
The requirement is still deemed proper and is therefore made FINAL.
Claims 61-70 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 6/1/2026
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosures statement filed 5/8/2024 are accepted.
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 52, 53, 57, and 60 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.
With regards to claims 52 and 57, said claim is held to be indefinite because it is unclear what is meant by “non-compostable material” and “compostable” material and how one of ordinary skill in the art would make said determination. Said term is a subjective term and there is no objective standard set forth in the original disclosure on how to determine what materials are/are not compostable.
With regards to claim 53, said claim is held to be indefinite because it is unclear how a composition must comprise at least 50wt% water, but can have a solids content up to 60wt%. If 50wt% water is present, it seems like the highest solids content will be 50wt%.
With regards to claim 60, said claim is held to be indefinite because it is unclear what is meant by a “printer layer.” For examination purpose, said limitation is understood to be “printed layer.”
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 49, 50, 51, 53- 57, and 59 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by GB 1,080,441 (Horrocks).
Horrocks teaches a structure comprising a water-based coldseal cohesive composition (page 2, lines 17+)on a substrate; wherein the water-based coldseal composition comprises;
between 30 and 90wt% of natural rubber latex (examples); (b) 4.5wt% casein-herein understood to anticipate the claimed “between 1 and 30wt% of a biodegradable resinous material,” ; and (c)
between 30 and 90 wt% water (see examples wherein the weight of the water and the water in the latex read on the claimed water). Horrocks further teaches the substrate may be cellulose (page 1, line 19). The cold seal is in direct contact with said cellulose and is, therefore, understood to read on the claimed “wherein the coldseal cohesive composition is applied directly to the substrate.” Alternatively, said limitation is understood to be a method limitation which does not patentability distinguish the claimed invention from the prior art. Specifically, the courts have held product by process limitations do not patentably distinguish a claimed product from a product taught in the prior art unless the method of making the product inherently results in a materially different product. In the present application, no such showing has been made.
While Horrocks teaches the composition may contain styrene rubber, said component is optional (page 2, lines 38+). Thus, the closest embodiments of Horrocks are understood to “comprises less than 10wt% of non-compostable material, wherein the non-compostable material is selected from the group consisting of acrylics, styrene acrylics, shellac-modified polystyrene, ethylene vinyl acetate, styrene butadiene, vinyl acetate, including emulsions thereof, and combinations thereof.”
With regards to claim 50, Horrocks teaches the composition may comprise casein, herein understood to read on the claimed “biodegradable resinous material”.
With regards to claim 52, Horrocks teaches the composition comprises between 1 and 20 wt% of the biodegradable resinous material (see examples). Furthermore, the composition is understood to contain less than 5wt% non-compostable material since the composition of Horrocks anticipates the claimed cold seal adhesive and does not require any components which are listed as non-compostable.
With regards to claim 53, Horrocks teaches the composition comprises between 40 and 80 wt% of the nature rubber latex, and wherein the natural rubber latex has a solids content between 20 and 90 wt% (see examples).
With regards to claim 54, Horrocks teaches the composition comprises between 10 and 70 wt% of natural rubber solids (examples, page 2, lines 59+), between 50 and 75 wt% water (see all, including examples wherein the water and the water component of the latex are understood to read on the claimed water), and wherein the composition comprises a solids content of between 10 and 60 wt% (examples, page 2, lines 59+).
With regards to claim 55, Horrocks teaches the composition may further contain fungicide (page 2, line 73), which is understood to read on the claimed, biocides, and antifoaming agents (see examples).
With regards to claim 56, Horrocks teaches the antifoaming agent is present in the composition in an amount of less than 10 wt% (see examples).
With regards to claim 57, Horrocks teaches the structure is a packaging (page 2, lines 104+) Furthermore, given the materials utilized in the cold seal adhesive disclosed in Horrocks and that Horrocks anticipates the claimed invention and does not contain any of the listed non-compositable materials, the structure is understood to be compostable to >90%.
With regards to claim 59, Horrocks teaches the substrate may be cellulose (page 1, line 18)..
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.
Claim(s) 51 is/are rejected under 35 U.S.C. 103 as being unpatentable over GB 1,080,441 (Horrocks), as applied to claims above, and further in view of Fujiwara et al (US 5,648420)
Horrocks is relied upon as above, but does not teach that the albumin may be utilized in place of the casein thickening agent disclosed therein. However, Fujiwara teaches that albumin and casein are functionally equivalent as thickening agents in latexes (col 9, lines 49+). Thus, it would have been obvious to one of ordinary skill in the art at the time eth invention was filed to utilize albumin in place of the casein thickening agent disclosed in Horrocks. The motivation for doing so would have been albumin and casein are taught to be functionally equivalent to one another. The courts have held it is prima facie obvious to substitute one compound for another when the prior art teaches said components to be functionally equivalent.
Claim(s) 58 is/are rejected under 35 U.S.C. 103 as being unpatentable over GB 1,080,441 (Horrocks), as applied to claims above, and further in view of Harada (US 2013/0345341)
Horrocks is relied upon as above. Specifically, Horrocks teaches the substrate may comprise cellulose but does not teach it is derived from corn, sugar cane, or bamboo, and combinations thereof. However, Harada teaches cellulose from bamboo is commonly used in packaging materials (0002). Thus, it would have been obvious to one of ordinary skill in in the art at the time the invention was made to utilize cellulose derived from bamboo as the cellulose material disclosed in Horrocks. The motivation for doing so would have been that bamboo is traditionally used as a source of cellulose material for packaging materials.
Claim(s) 60 is/are rejected under 35 U.S.C. 103 as being unpatentable over GB 1,080,441 (Horrocks), as applied to claims above, and further in view of Chick (US 2005/0058815)
Horrocks is relied upon as above. Specifically, Horrocks teaches the claimed invention comprising a cellulose substrate wherein the structure is used for packaging. Horrocks does not teach said cellulose may comprise a printed layer. However, Chick teaches package materials commonly have printed graphics on their surface to identify the goods within the package (0007). Thus, it would have been obvious to one of ordinary skill in the at the time the invention was filed to print the cellulose layer of the structure disclosed in Horrocks. The motivation for doing so would have been to provide consumer appeal and information about the product inside.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN R KRUER whose telephone number is (571)272-1510. The examiner can normally be reached M-F 8am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached at (571) 272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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KEVIN R. KRUER
Examiner
Art Unit 1787
/KEVIN R KRUER/ Primary Examiner, Art Unit 1787
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