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 .
DETAILED ACTION
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1, 2, 4 6, and 8-13 in the reply filed on August 3, 2026 is acknowledged.
Claims 14-23 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on August 3, 2026.
Preliminary Amendment
Claims 1, 2, 4, 6, 8-23 submitted with the reply filed on August 3, 2026 were submitted in the preliminary amendment filed on February 4, 2025 (“PA”). The PA was filed after the filing of the application (application filing date November 4, 2024). Claims 2 and 23 were amended in the PA. Support for the amendment to claim 2 can be found in the original claim 3 and support for the amendment to claim 23 can be found in the original claim 6. Accordingly, the PA does not introduce new matter.
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.
Claim 10 is 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.
As to claim 10, this claim recites “wherein the solvent is ethanol or methanol”. This claim depends from claim 9 and recites “wherein the solvent is selected from alcohol, water…and dimethyl formamide.” Claim 10 is indefinite, because it is unclear whether “ethanol or methanol” is additional solvent or further refers to the solvent (e.g. alcohol) recited in the parent claim 9.
For purpose of the examination, claim 10 is interpreted as the alcohol is ethanol or methanol.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 12 and 13 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 12 fails to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends (i.e. claim 1). Because, the parent claim 1 recites adhesive composition comprising EO, nucleophile, and phenolic compound, whereas claim 12 recites the adhesive composition comprises epoxidized soy oil, malic acid, tannic acid, and ethanol.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
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 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) 1, 2, 4, 6, and 8-10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ortiz (EP 3632949 A1).
As to claim 1, Ortiz teaches process for production of epoxy resins that are used in e.g. adhesives (0001 and 0059). Ortiz further teaches that the process includes (a) providing lignin (phenolic compound-see applicant’s claim 6), an epoxidized vegetable oil (EO), optionally solvent, and optionally catalyst to form a reactive mixture, and (b) mixing and curing the mixture in the presence of a curing agent such as succinic acid (nucleophile-see applicant’s claim 4) (0012, 0047 of Ortiz).
As to claim 2, Ortiz teaches that the EO is epoxidized soybean oil (0039).
As to claim 4, Ortiz as set forth previously teaches succinic acid (0047).
As to claim 6, Ortiz as set forth previously teaches lignin (0012).
As to claims 8-10, Ortiz teaches solvent, wherein the examples of solvents include chloroform, methanol, and ethanol (0051).
Based on the above, Ortiz anticipates the claimed invention.
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) 11-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ortiz (EP3632949 A1) and as evidenced by Duchesne et al. (US 4427468).
As to claim 11, Ortiz as set forth previously discloses adhesive comprising EO, nucleophile, and phenolic compound. Ortiz does not explicitly disclose the claimed mass ratio. However, give that Ortiz discloses general conditions of a claim, absent any new and unexpected results discovering the optimum or workable range of the EO, nucleophile, and phenolic compound would be obvious to one of ordinary skill in the art, motivated by the purpose of formulating the epoxy resin such that it can be used e.g. as adhesive. See MPEP 2144.05(II)(A).
Ortiz does not explicitly mention malic acid. However, Ortiz discloses that the curing agent is diacid comprising 4-40 carbon atoms. While Ortiz does not explicitly mention malic acid, however, a person having ordinary skill in the art would recognize that malic acid is a diacid (see column 5, line 65 to column 6, line 1 of Duchesne (“…dibasic acids such as…malic acid…). Further, a person having ordinary skill in the art would recognize that malic acid has 4 carbo atoms. Thus, it falls within the diacid comprising 4-40 carbon atoms disclosed by Ortiz.
As to claim 12, Ortiz as set forth previously discloses ESO (0039), malic acid, tannic acid (0047), and ethanol (0051). Further, as to the transitional phrase “consisting essentially of”, the transitional phrase is interpreted as comprising, because at present, there is no factual evidence on the record showing that the ingredients other than the ESO, malic acid, tannic acid, and ethanol present in the adhesive of Ortiz will materially affect the basic and novel characteristics of the claimed invention. See MPEP 2111.03 (III). As such, “consisting essentially of” is interpreted as “comprising”. The examiner respectfully submits that if applicant intends to limit the claimed adhesive to the ESO, malic acid, tannic acid, and ethanol, the transitional phrase “consisting essentially of” should be replaced with “consisting of”. See MPEP 2111.03 (II).
As to claim 13, Ortiz as set forth previously discloses adhesive comprising ESO, malic acid, tannic acid, and ethanol. Ortiz does not explicitly disclose the claimed mass ratio. However, give that Ortiz discloses general conditions of a claim, absent any new and unexpected results discovering the optimum or workable range of the EO, malic acid, tannic acid, and ethanol would be obvious to one of ordinary skill in the art, motivated by the purpose of formulating the epoxy resin such that it can be used e.g. as adhesive. See MPEP 2144.05(II)(A).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. CN 103833307A discloses high temperature resistant adding air brick, US 3857830 discloses process for preparation of lignin epoxide composition.
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/ANISH P DESAI/Primary Examiner, Art Unit 1788 August 21, 2026
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