DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Drawings
The drawings of Figs. 6a, 6b, 7a and 7b are objected to because the resolutions of the drawings are not high enough such that many of the labels are fuzzy and unclear. It is noted that any colors including grey need to be printed as pure black and white, not greyscale. 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.
Election/Restriction
Claims 1-4 of Group I, and claims 28-31 of Group III, are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Election of claims 5-10,15-19 of Group II, was made without traverse in the reply filed on June 4, 2026.
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.
Claims 8, 18 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 8 contains the trademarks/trade names of MMT-K10, MMT-DDA, MMT-amine, MMT-TSA, MMT-am and Laponite RD. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademarks/trade names are used to identify/describe different derivatives of montmorillonite and, accordingly, the identifications/descriptions are indefinite. Furthermore, it is unclear whether the brackets are further limiting, or just identifying examples.
Claim 18 contains the trademark/trade name of Avicel pH-10. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe a cellulose derivative and, accordingly, the identification/description is indefinite.
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.
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.
Claims 5, 7-8, 10, 15-19 are rejected under 35 U.S.C. 103 as being unpatentable over Schmidt (US 2020/0032121) in view of Grigsby (US 2016/0333240).
Regarding claim 5, Schmidt teaches an adhesive composition ([0022]) that is formulated for water resistance ([0022]) and comprises{ (i) a zein, which is a plant protein ([0044]) and (ii) a tannic acid, which is a phenolic material ([0044]). Schmidt does not disclose mixing the formulation with an inorganic filler, a natural polymer or both.
However, Grigsby teaches that an adhesive composition which is formulated for water resistance ([0107]), comprising: (i) a zein, which is a plant protein ([0067]) and (ii) a tannic acid, which is a phenolic material (polyphenol [0096]), further includes (iii) an inorganic filler, for the purpose of enhancing the water resistance (calcium carbonate [0107]) and (iii) a natural polymer, for the purpose of providing the desired structural framework (framework element comprises a polysaccharide [0326]).
Therefore, it would have been obvious to one of ordinary skill in the art at the time, to have further included (iii) an inorganic filler and a natural polymer in the adhesive composition of Schmidt, in order to obtain the desired enhancement in water resistance, and the desired structural framework, as taught by Grigsby.
Although Schmidt, as modified by Grigsby, fails to teach that the adhesive composition is an underwater adhesive composition, this is a recitation of intended use. A recitation of the intended use of the claimed invention must result in a structural or compositional difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure or composition is capable of performing the intended use, then it meets the claim. In the instant case, Schmidt, as modified by Grigsby, teaches the presently claimed adhesive composition that is formulated for water resistance, as described above.
Regarding claims 7-8, Grigsby teaches that the inorganic filler is calcium carbonate ([0107]), for the purpose of enhancing the water resistance, as described above.
Regarding claim 10, Grigsby teaches that the composition further comprises water and alcohol and is viscous (ethanol [0046]).
Regarding claims 15, 17, Grigsby teaches that the natural polymer is a polysaccharide ([0326]) which is a cellulose derivative (modified cellulose [0331]), for the purpose of providing the desired structural framework, as described above.
Regarding claims 15-16, Grigsby teaches that the natural polymer can also be a protein which is soy ([0268]) or casein ([0269]), for the purpose of providing the desired structural framework (framework element [0268]).
Regarding claim 18, Grigsby teaches that the cellulose derivative can be a methyl cellulose (carboxymethyl cellulose [0331]) for the purpose of providing the desired structural framework, as described above.
Regarding claim 19, Grigsby is silent regarding a wt/wt ratio of the inorganic filler and the natural polymer.
However, the simplest and most obvious ratio to try is 1:1 wt/wt. Furthermore, Grigsby teaches that the inorganic filler is included for the purpose of enhancing the water resistance (calcium carbonate [0107]), and that the natural polymer is included for the purpose of providing the desired structural framework (framework element comprises a polysaccharide [0326]), thus establishing the wt/wt ratio of the inorganic filler and the natural polymer, as a result-effective variable, resulting in the desired combination of enhancement to water resistance and structural framework.
Therefore, in the absence of a clear showing to the contrary, it would have been a result of routine experimentation, and hence obvious to one of ordinary skill in the art at the time, to have tried and arrived at a ratio of 1:1 wt/wt for the inorganic filler and the natural polymer, in the adhesive composition of Schmidt, as modified by Grigsby, for the purpose of providing the desired combination of enhancement to water resistance and structural framework, as taught by Grigsby.
Claims 6, 9 are rejected under 35 U.S.C. 103 as being unpatentable over Schmidt in view of Grigsby, as applied to claims 5, 7-8, 10, 15-19 above, and further in view of Killilea (US 2023/0112633).
Schmidt, as modified by Grigsby, teaches the adhesive composition that is capable of being an underwater adhesive composition, as described above.
Regarding claim 6, Schmidt, as modified by Grigsby, fails to teach that the adhesive composition further comprises ferric chloride (FeCl3).
However, Grigsby teaches that iron ([0039]) forms a polyvalent ion ([0037]) which forms a metal chelate ([0036]), for the purpose of providing the desired crosslinking.
Killilea teaches that ferric chloride is a good polyvalent metal crosslinking agent (PMCA [0123, 0007]) for an adhesive composition ([0240]).
Therefore, it would have been obvious to one of ordinary skill in the art at the time, to have further comprised ferric chloride in the adhesive composition of Schmidt, as modified by Grigsby, in order to obtain the desired crosslinking, as taught by Killilea.
Regarding claim 9, Schmidt, as modified by Grigsby, is silent regarding an amount of the inorganic filler, as described above.
However, Grigsby teaches that the inorganic filler is calcium carbonate which is included for the purpose of enhancing the water resistance (calcium carbonate [0107]).
Killilea teaches that calcium carbonate ([0120], PMCA [0132]) can be present in an amount of between 3 wt% and 7 wt% of dry solid composition (non-volatile weight of the coating composition ([0132]) which contains the claimed range of about 6 wt%.
Therefore, it would have been obvious to one of ordinary skill in the art at the time, to have provided the inorganic filler in the adhesive composition of Schmidt, as modified by Grigsby, in an amount of about 6 wt%, in order to obtain the desired enhancement in water resistance, as taught by Killilea, in light of Grigsby.
Any inquiry concerning this communication should be directed to Sow-Fun Hon whose telephone number is (571)272-1492. The examiner is on a flexible schedule but can usually be reached during a regular workweek between the hours of 10:00 AM and 6:00 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Aaron Austin, can be reached at (571)272-8935. The fax phone number for the organization where this application or proceeding is assigned is (571)273-8300.
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/Sophie Hon/
Sow-Fun Hon
Primary Examiner, Art Unit 1782
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