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 Interpretation
Regarding claims 7 and 12, a water-based adhesive containing chitosan and citric acid implicitly has a solid content. Accordingly, “the solid content” has implicit antecedent basis.
Claim Objections
Claims 7-8 and 11-13 are objected to because of the following informalities. Appropriate correction is required.
Regarding claims 7 and 12, the examiner suggests --wherein has a solid content of 30 wt% to [[-]] 50 wt% and a viscosity of 467 mPa·s to [[~]] 72500 mPa·s-- to correct the grammar and improve the readability.
Regarding claim 11, line 3, --of-- should be inserted after “consisting” to correct the grammar.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 7-8 and 12 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claims 7 and 12, a viscosity range of 467~72500 mPa·s is recited. The specification does not recite this range, but does teach inventive examples of 467, 14700 and 72500 mPa·s (Applicant’s specification, paragraphs 60-64). The specification also teaches viscosities below 1000 mPa·s are desirable for spray coating and viscosities above 5000 mPa·s are suitable for roller coating (paragraph 20). The specification also teaches the viscosity is controllable (paragraph 30). The examiner’s position is that values below 1000 mPa·s and above 5000 mPa·s are supported, but there is no clear indication that values in the range of 1000 to 5000 mPa·s were in Applicant’s possession at the time the application was filed. A mere 3 examples does not support an entire range over more than 2 orders of magnitude, particularly with no examples in the above noted range of 1000 to 5000 mPa·s. Accordingly, Applicant was not in possession of the claimed viscosity range at the time the application was filed.
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 6-8 and 11-13 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.
Regarding claims 6 and 11, there is insufficient antecedent basis for “the water-based chitosan/citric acid adhesive” in the first line of these claims. The examiner suggests --a [[the]] water-based chitosan/citric acid adhesive--.
Regarding claims 6 and 11, in claim 6, line 7, a wood-based unit is previously recited, but there is no positive recitation of the wood-based unit combined with the water-based chitosan/citric acid adhesive. Accordingly, there is insufficient antecedent basis for “the wood-based unit with the water-based chitosan/citric acid adhesive”. The phrase “adhesive for a wood-based unit” in lines 2-3 does not provide antecedent basis for this term because this phrase indicates an intended use of the adhesive rather than a positive recitation of the adhesive with the wood-based unit. A similar issue is found in claim 11.
Regarding claims 7 and 12, it is unclear how the “~” affects the scope of the recited range. This symbol is often used to indicated “about” or “approximately”. However, it is unclear if the entire range is modified by “about” or just 72500 is modified by “about.
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 6 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Wennman (WO 2022/235189 A1) in view of Mun (US 2021/0403766 A1), and optionally further in view of Hampson (US 2017/0210952 A1).
Regarding claim 6, Wennman teaches a method of preparing a water-based chitosan/citric acid adhesive comprising, by mass, about 54 to 66 parts water (Table 3, page 14), about 0.005 to 10 parts chitosan (paragraph 27), about 0.01 to 30 parts acid (paragraph 17), wherein the acid may be citric acid or citric acid monohydrate (paragraph 30), and 0 to 30 parts filler (paragraph 31). There is no indication of adding formaldehyde containing components, and accordingly a formaldehyde free adhesive is indicated or suggested. As to the limitations of “for a wood-based unit” and “the wood-based unit with the water-based chitosan/citric acid adhesive”, claim 6 is drawn to a method of preparing an adhesive. These limitations are only directed to an intended use of the adhesive which does not distinguish the adhesive composition indicated by claim 6 over that of Wennman.
Wennman differs from claim 6 in that:
i. Wennman does not recite weighing the components.
ii. Wennman does not recite mixing and dissolving at room temperature to obtain the adhesive.
iii. The wood-based unit intended use limitations are alternatively addressed here.
(i, ii) In a method of preparing a similar adhesive composition, Mun suggests these steps for suitably preparing the desired water-based adhesive (paragraphs 78-80 and 90; claim 8). It is clear from Wennman that the adhesive composition is aqueous, i.e. the components are dissolved in water (paragraphs 17-18, 21, 23, 27, 31 and 36-37). As to mixing and dissolving at room temperature, Mun suggests temperatures of 0 to 80°C are suitable, which includes room temperature (paragraph 80). Moreover, Wennman simply indicates diluting to an aqueous binder composition (paragraph 36), which suggests a suitable temperature would be readily selected by the person of ordinary skill in the art. It is noted that a prima facie case of obviousness exists when a claimed range overlaps, falls within or is near a prior art range. See MPEP 2144.05. It would have been obvious to one having ordinary skill in the art at the time the application was filed to provide these steps in Wennman because one having ordinary skill in the art would have been motivated to combine the components to form the adhesive composition in a known suitable manner, as suggested by the above noted teachings of Mun and Wennman.
(iii) Above, the examiner took the position that use of the adhesive “for a wood-based unit” as claimed does not distinguish over the adhesive of Wennman. Alternatively, it is clear from Hampson that water-based adhesive compositions containing chitosan may be formulated for bonding nonwoven materials or wood-based units such as particle board or fiberboard (paragraphs 1, 9-10 and 39). Thus Hampson provides evidence that Wennman’s adhesive, which is disclosed for nonwoven materials, can be readily formulated for use in wood-based units such as particle board or fiberboard. It would have been obvious to one having ordinary skill in the art at the time the application was filed to provide this additional limitation in the modified method of Wennman because one having ordinary skill in the art would have been motivated to use Wennman’s adhesive in applications including particle board and fiberboard, as suggested by the teachings of Hampson.
Regarding claim 11, Wennman does not require any additional steps, and thus satisfies the “consisting” transitional phrase. All of the further limitations of claim 11 are satisfied for the reasons provided above.
Claims 7 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Wennman in view of Mun, and optionally further in view of Hampson, as applied to claims 6 and 11 above, and further in view of Floyd (US 5116890).
Regarding claim 7, as noted above, the composition of Wennman may comprise about 54 to 66 parts water. This suggests a solids content of about 34 to 46 wt% ((100 - 66) to (100 - 54)). Alternatively, combining the above noted ranges of chitosan, citric acid and filler, which may all be solids, provides a solids content range which includes values in the claimed range. It is noted that a prima facie case of obviousness exists when a claimed range overlaps, falls within or is near a prior art range. See MPEP 2144.05. As to the viscosity, Wennman indicates a desired viscosity is readily achieved, but does not recite specific values in the claimed range. Wennman teaches a water based adhesive suitable for joining nonwoven materials. In a water based adhesive for nonwovens, Floyd suggests a suitable viscosity of less than 1000 cps (1 cps = 1 mPa·s) to provide an adhesive which readily flows (column 6, lines 19-23). It is noted that a prima facie case of obviousness exists when a claimed range overlaps, falls within or is near a prior art range. See MPEP 2144.05. It would have been obvious to one having ordinary skill in the art at the time the application was filed to provide a viscosity in the claimed range in the modified method of Wennman because one having ordinary skill in the art would have been motivated to provide a known suitable viscosity and/or to provide desired flow characteristics, as suggested by the teachings of Floyd.
Claim 12 is satisfied for the reasons provided above.
Claims 8 is rejected under 35 U.S.C. 103 as being unpatentable over Wennman in view of Mun, Floyd and Hampson.
The references are applied as above in the rejection of claims 7 and 12. Hampson is not optional here in order to address the molecular weight limitation of claim 8.
Regarding claim 8, Wennman teaches a deacetylation degree of 66 to 100% (paragraph 36), which overlaps with the claimed range. It is noted that a prima facie case of obviousness exists when a claimed range overlaps, falls within or is near a prior art range. See MPEP 2144.05. Wennman does not recite a molecular weight in the claimed range. However, in a water based adhesive suitable for bonding nonwoven materials, Hampson suggests using chitosan with a molecular weight of 500 to 2,000,000. It is noted that a prima facie case of obviousness exists when a claimed range overlaps, falls within or is near a prior art range. See MPEP 2144.05. It would have been obvious to one having ordinary skill in the art at the time the application was filed to provide this limitation in the modified method of Wennman because one having ordinary skill in the art would have been motivated to use a known suitable viscosity as suggested by the teachings of Hampson. As to the recited wood-based units, this additional limitation is satisfied for the reasons provided above. Claim 8 is drawn to a method of preparing an adhesive. The wood-based unit limitations are only directed to an intended use of the adhesive which does not distinguish the adhesive composition indicated by claim 6 over that of Wennman.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Wennman in view of Mun and Hampson.
The references are applied as above in the rejection of claims 6 and 11. Hampson is not optional here in order to address the molecular weight limitation of claim 13.
Regarding claim 13, Wennman teaches a deacetylation degree of 66 to 100% (paragraph 36), which overlaps with the claimed range. It is noted that a prima facie case of obviousness exists when a claimed range overlaps, falls within or is near a prior art range. See MPEP 2144.05. Wennman does not recite a molecular weight in the claimed range. However, in a water based adhesive suitable for bonding nonwoven materials, Hampson suggests using chitosan with a molecular weight of 500 to 2,000,000. It is noted that a prima facie case of obviousness exists when a claimed range overlaps, falls within or is near a prior art range. See MPEP 2144.05. It would have been obvious to one having ordinary skill in the art at the time the application was filed to provide this limitation in the modified method of Wennman because one having ordinary skill in the art would have been motivated to use a known suitable viscosity as suggested by the teachings of Hampson.
Response to Arguments
Applicant's arguments filed 13 November 2025 have been fully considered but they are not persuasive.
Applicant argues Wennman and Mun are not analogous. The examiner respectfully disagrees. Wennman and Mun are in the same field of endeavor as the claimed invention, i.e. water based adhesives. They are also reasonably pertinent to problems faced by the inventor. Wennman provides a water based adhesive composition comprising chitosan, citric acid, water and filler. Mun provides methods of preparing water based adhesives using weighing, mixing and dissolving steps. Thus Wennman and Mun are drawn to problems faced by the inventor including providing an adhesive composition and using steps to prepare it. See MPEP 2141.01(a).
Applicant argues Wennman is drawn to an adhesive for nonwoven materials. In response, the claims are drawn to a method of preparing an adhesive, and are not limited to specific uses of the adhesive. Although wood based units and specific wood based units are recited in the claims, these limitations are written as functions or intended use. The functions or intended use only affect the claims as to implied structural or composition limitations. Here, these functional or intended use limitations do not distinguish over the modified method of Wennman because they do not require any composition components which are not satisfied by the modified method of Wennman, nor has Applicant pointed to any. Additionally, Hampson has been applied to suggest that water-based adhesive compositions containing chitosan may be formulated for bonding nonwoven materials or wood-based units such as particle board or fiberboard.
Applicant argues adhesives for wood based materials will have different considerations than adhesives for nonwoven materials and labels. This argument is not persuasive for the reasons provided above. Applicant has not pointed to any composition differences between Wennman and the claimed method of producing the adhesive.
Applicant argues current adhesives for wood based materials have organic solvent and formaldehyde. This argument is not persuasive because it is clear from Hampson that water based formaldehyde free adhesives may be used for wood-based materials (paragraphs 1, 35 and 39).
Applicant argues that high water resistance and cohesive strength are achieved without curing agents, resin raw materials or high molecular weight biomass, as well as other advantages. In response, it is noted that the claims are drawn to a process of making an adhesive, not a process of using the adhesive. These advantages do not indicate any composition components which distinguish over Wennman or the modified process of Wennman.
With regard to the parent PCT application, it is noted that the U.S. examination of a national stage application is not limited by the international stage examination.
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 MICHAEL A TOLIN whose telephone number is (571)272-8633. The examiner can normally be reached 9:30 am - 6 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, Phillip C. Tucker can be reached at (571) 272-1095. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL A TOLIN/Primary Examiner, Art Unit 1745