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 . 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.
Response to Amendment
The Amendment filed 01/07/2026 has been entered. Claims 1, 3, 5, 7-10, 12-22 remain pending in the application, with claims 15-18 remaining withdrawn as being drawn to a non-elected invention.
Claim Rejections - 35 USC § 112
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.
Claim 5 is 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 5 recites the list of carboxylic acids, however, this limitation is already recited in instant claim 1 upon which claim 5 depends. 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 § 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1,3 ,5, 10, 14, 19-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rashid (U.S PG Pub 20220010138A1).
Regarding claims 1, 3, 5, Rashid, drawn also to the art of a binder for securing wood products together [0002-0003], discloses an adhesive formulation with yeast [0047], carboxylic acids that dicarboxylic or tricarboxylic acid [0218], and an organic solvent as claimed ([0177]; claim 4), and in the weight ranges as instantly claimed ([0027 & 0270]; claims 6-7). the weight range of the solvent as disclosed by Rashid form overlapping and encompassing ranges with the instantly claimed ranges, and the courts have held that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) (MPEP 2144.05(I)). Rashid has disclosed the carboxylic acids as claimed, as Rashid discloses that citric acid (tricarboxylic acid) and oxalic acid (dicarboxylic acid) can be used as the carboxylic acids [0218]. Rashid also discloses that the carboxylic acid is present in the weight range as claimed [0220]. The weight range of the carboxylic acid as disclosed by Rashid forms an overlapping and encompassing range with the instantly claimed range, and as explained above, obviates the range (MPEP 2144.05(I)). Rashid discloses the ratio of the carboxylic acid to be 0.5 to 10 times the weight of the fungi/glucan weight, and given that Rashid has disclosed the dried yeast content to be 25% to 65% by weight, the weight of the acid in the composition would then fall within and overlap/encompass the instantly claimed range.
Regarding claims 10, Rashid discloses that the dried yeast content is at least 25% to 65% by weight [0270 & 0337]. The courts have held that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) (MPEP 2144.05(I)).
Regarding claim 14, Rashid has disclosed the formulation having a pH as claimed [0191]. The courts have held that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) (MPEP 2144.05(I)).
Regarding claims 19-22, Rashid discloses the use of the binder composition for joining sheets/boards of wood (i.e. cardboard and plywood) by curing the adhesive in between [0361-0362].
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rashid (U.S PG Pub 20220010138A1) and Kadimaliev - 'Optimization of the conditions required for chemical and biological modification of the yeast waste from beer manufacturing to produce adhesive compositions' (NPL cited and provided by applicant).
Regarding claim 9, Rashid has not explicitly disclosed the yeast being derived from beer waste, however, this limitation is known from Kadimaliev.
Kadimaliev, drawn also to the art of a yeast adhesive made from beer waste (Abstract; Introduction Section pg. 1984), discloses a yeast adhesive that has glutaric aldehyde as part of the composition (pg. 1988 lines 17-29, Figure 3; pg. 1989 lines 1-2). Kadimaliev also discloses the yeast being derived from beer waste i.e. a waste source (Abstract; Introduction Section pg. 1984).
Kadimaliev has disclosed the yeast being derived from beer waste (Abstract; Introduction Section pg. 1984).
It would have been obvious to an ordinarily skilled artisan to have modified the adhesive formulation of Rashid, to arrive at the instant invention, in order to have a formulation with low costs (Introduction Section pg. 1984, line 7).
Claim(s) 7-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rashid (U.S PG Pub 20220010138A1) and Li (U.S Patent 7393930B2).
Regarding claims 7-8, Rashid has not explicitly disclosed gluten (and as a consequence the moieties as present in instant claim 7 being present) being present in the formulation, however, it is known to have a natural adhesive with gluten present, as disclosed by Li.
Li, drawn also to the art of a natural soy based adhesive (Abstract), discloses that gluten is present in the adhesive (Column 3, lines 35-41). Li also discloses that such an adhesive is inexpensive, abundant, and environmentally acceptable (Column 1, lines 53-54).
It would have been obvious to an ordinarily skilled artisan to have modified the formulation of Rashid, with the gluten being present in the adhesive, as disclosed by Li, to arrive at the instant invention, in order to have an adhesive that is inexpensive, abundant, and environmentally acceptable.
Claim(s) 12-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rashid (U.S PG Pub 20220010138A1) and Schmaus (U.S PG Pub 20160008297A1).
Regarding claims 12-13, Rashid has not explicitly disclosed a colorant and perfume being present in the formulation, however, it is known for a colorant and perfume to be present in a formulation containing yeast, as disclosed by Schmaus.
Schmaus, drawn also to the art of a composition containing yeast [0153], discloses a colorant [0153] and perfume [0128] being present in the composition.
It would have been obvious to an ordinarily skilled artisan to have modified the formulation of Rashid, with the formulation containing a colorant and perfume, as disclosed by Schmaus, to arrive at the instant invention, since as such this would merely involve a combination of known elements according to known methods, and the courts have held that combining known elements in a known manner is obvious (MPEP 2143 I(A)).
Response to Arguments
Applicant's arguments filed 01/07/2026 have been fully considered but they are not persuasive.
Applicant argues that Rashid discloses multiple acid agents and does not disclose a preference for carboxylic acid agents and thus does not disclose the carboxylic acids as claimed in instant claim 1.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Further, Rashid discloses the carboxylic acids as claimed, whether the acids are part of a bigger list of acidic agents, does not take away from the fact that the disclosure of Rashid teaches the carboxylic acids as claimed and it would be in the purview of an ordinarily skilled artisan to select an acidic agent accordingly. Further, while Rashid may disclose a preference for HCL, this is just that, a preference. Rashid has not in any way taught away or indicated any drawback or disadvantage to using other acidic agents. Thus, as instant claim 1 is currently recited, the teachings of Rashid meet the instant limitations of the carboxylic acid, as Rashid teaches the exact carboxylic acids being claimed.
Applicant argues that Rashid does not teach the weight range of the acid as claimed.
The examiner disagrees. As pointed out in the claim 1 rejection above, Rashid discloses that the acidic agent can be 0.5 to 10 times the weight of the fungi/glucan weight, and given that Rashid has disclosed the dried yeast content to be 25% to 65% by weight (see claim 10 rejection above), the weight of the acid in the composition would then fall within and overlap/encompass the instantly claimed range. If the weight of the carboxylic acid is 1 times the weight of the yeast, and the weight of the yeast is 25% by weight, then the weight of the carboxylic acid would also be 25% by weight of the composition, and thus the weight of the acidic agent as disclosed by Rashid meets the instantly claimed weight range.
Applicant argues in regards to cancelled claim 6 that Kadiamliev does not disclose the carboxylic acid having a moiety as claimed since it is formed differently.
The examiner disagrees. Firstly, claim 6 is now cancelled, and thus whether Kadimaliev discloses the carboxylic acid having the moiety as claimed is a moot point. Regardless, Kadimaliev discloses the discloses a yeast adhesive that has glutaric aldehyde as part of the composition (pg. 1988 lines 17-29, Figure 3; pg. 1989 lines 1-2), and the way the glutaric aldehyde is obtained in the composition is irrelevant given the instant claims are drawn to product claims and not process claims.
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 ABHISHEK A PATWARDHAN whose telephone number is (571)272-8431. The examiner can normally be reached Monday to Friday 7:30am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Orlando can be reached at (571)270-5038. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ABHISHEK A PATWARDHAN/Examiner, Art Unit 1746
/MICHAEL N ORLANDO/Supervisory Patent Examiner, Art Unit 1746