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 § 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 1-15 and 17-20 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.
Claim 1 is vague and indefinite, because it is unclear what is being claimed, since it recites a composition with a substrate, which seems to be a product claim, but recites another composition, a coating composition, and it is unclear if the claim is actually drawn to a composition or to a coated product and thus the metes and bounds of patent protection desired cannot be ascertained. Claims 10-13 seem to evidence that the independent claims is actually drawn to a product as oppose to a composition. Note that the newly added limitation and applicants arguments and Affidavit/Declaration suggest that the unexpected results are in the coating composition rather than the claimed composition, i.e., the coating and the substrate.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-15 and 17-20 are rejected under 35 USC §103 over Behabtu, in view of Kim et al., (hereinafter Kim). This rejection is set forth in the prior Office action mailed on January 28, 2026. Note that in view of the addition of claim 16 into claim 1, the obviousness rejection applies for all of the claims. The rejection is maintained for the reason(s) discussed below. Note that the primary reference teaches the same alpha-glucan with degree oof polymerization in the claimed range; see ¶-[0044], which teaches degree of polymerization in the claimed range and thus the crystallinity index in the range of claim 20 would be inherent to the reference.
Response to Arguments
Applicant’s arguments and Affidavit/Declaration filed on April 27, 2026 have been fully considered but they are not persuasive.
Applicants argue that one of ordinary skill in the art would not combine the references, since he/she would not expect that the tackiness of the rubber would be removed, decreased, by the use of the claimed water-insoluble alpha-glucan and that the properties of the composition of the claimed cannot be considered inherent. The arguments and Affidavit/declaration by applicants are deemed not convincing for the following reason(s):
The primary reference, Behabtu, teaches a blend of water-insoluble alpha-glucan having degree of polymerization falling within the claimed range (¶-[0044]) and as indicated in the response that water-insoluble alpha-glucan having degree of polymerization above 300 would have amorphous regions, reading in the newly added limitation, and teaches the use of elastomers, e.g. diene latex, (¶-[0091]) and it is well-known that alpha-glucans are not as sticky as rubbers and latexes (dienes) and thus it would be expected that the stickiness of the alpha-glucan would be less and inherently less than 100% rubber or dienes. The claimed coating composition is unbound, i.e., not amount/proportions of the components is/are recited and thus the scope of the claimed composition includes 99.9 wt.% of the alpha-glucan and 0.1 wt.% of the rubber/diene and vice versa and the comparing composition includes up 100 of the rubber and/or dienes. Therefore, comparing the compositions could not be done without more data, since as claimed there are ranges that the claimed relationship does not hold and it has to be assumed that the primary reference which teaches the same components would have the same properties. Note that the secondary reference was used only for the use of rubbers instead of dienes as binders and the independent claim does not require the use of the combination. Moreover, it is well-known that rubbers and dienes have been used as binder and considered equivalents and it has been held that “[W]here two equivalents are interchangeable for their desired function, substitution would have been obvious and thus, express suggestion of desirability of the substitution of one for the other is unnecessary.” In re Fout 675 F. 2d 297, 213 USPQ 532 (CCPA 1982); In re Siebentritt, 372 F.2d 566, 152 USPQ 618 (CCPA 1967).
As to the unexpected results. While this might be true, the scope of the claims is broader than the unexpected results, since the claims are, as indicated above, unbound and the unexpected results were shown for specific amount/proportions of the components of the coating composition. Applicants must also explain why the showing is commensurate in scope with the claimed subject matter. See In re Boesch, 617 F.2d 272, 276, 205 USPQ 215, 219 (CCPA 1980). Applicants have not directed us to evidence that establishes why the relatively few examples presented in the specification would have been representative of the scope of the claimed invention. Applicants have not explained why the results achieved in the specification would have been unexpected by one of ordinary skill in the art, see In re Freeman, 474 F.2d 1318, 1324, 177 USPQ 139, 143 (CCPA 1973); In re Klosak, 455 F.2d 1077, 1080, 173 USPQ 14, 16 (CCPA 1972). This is especially significant in this case where the cited reference discloses the preparation of similar paper coating compositions that have related properties.
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSE A FORTUNA whose telephone number is (571)272-1188. The examiner can normally be reached MONDAY- FRIDAY 11:30 PM- 9:00 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Abbas Rashid can be reached at 571-270-7457. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSE A FORTUNA/Primary Examiner, Art Unit 1748
JAF
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