DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of the Claims
2. Claims 13-14, 16, 19-21, 24, 28-29, 35-36, 38-39 are currently pending. This office action is in response to the amendment 11/24/2025. This office action is a second action non final rejection.
Claim Objections
3. Claim 35 is objected to because of the following informalities: The claim ends with a comma instead of a period. Appropriate correction is required.
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.
4. Claims 35, 20, 29, 36, 39 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.
Concerning claim 35 the claim recites “a solid composition consisting of a copolymer of” and then lists components a), b), c), d), and e), however e) is indicated to be “e) optionally one or more emulsifiers and/or protective colloids”. Additionally the claim recites “wherein the wt.%s of monomer a) through d) are based on the total weight of the copolymer and total 100 wt%”. This renders the claim indefinite as it is not clear if the component e) is a part of the copolymer or not as the indication of “a solid composition consisting of a copolymer of” would indicate that the component e) is reacted with the monomers and is part of the copolymer but the indication of wt.% would indicate that the component e) is not part of the copolymer.
Claims 20, 29, 36, 39 are rejected as being dependent from a rejected base claim.
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 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.
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.
5. Claim(s) 24, 13-14, 16, 19-21, 28, 38 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tsurumi (JP 2000-198821 A; all citations refer to the English machine translation provided unless otherwise stated).
Concerning claim 24, 13-14,16 28 Tsurumi teaches a vinyl chloride vinyl acetate copolymer which comprises an unsaturated carboxylic acid and a long chain fatty acid vinyl ester component having 4 or more carbon atoms in a molar ratio of 1.0x10-4 to 1.6x102 (paragraph 0001 and original Japanese document paragraph 0001). The unsaturated carboxylic acids include ethylenically unsaturated dicarboxylic acids such as fumaric acid, maleic acid, itaconic acid, and citraconic acid as well as ethylenically unsaturated monocarboxylic acids such as vinyl benzoic acid (paragraph 0007) and examples of the vinyl ester of long chain fatty acids having 4 or more carbon atoms include vinyl neodecanoate and vinyl laurate (paragraph 0008). The total amount of the unsaturated carboxylic acid and the long chain fatty acid vinyl ester component in the vinyl chloride vinyl acetate copolymer is from 1 to 50% by weight (paragraph 0010).
Tsurumi further teaches a copolymer made from 25 parts of vinyl acetate, 0.8 parts of maleic acid , 5 parts of neodecanoic acid vinyl ester of Veova 10, and 70 parts of vinyl chloride which has a molar ratio of maleic acid to vinyl neodecanoate of 0.27 (paragraph 0014). This copolymer is indicated to be used to obtain a paint (paragraph 0017) which is then sprayed onto a stainless steel plate and dried at room temperature for 168 hours (paragraph 0018). This would result in the copolymer being present in in the form of a solid resin as the paint composition was dried to remove solvents leaving behind the solid resin and other solid additives.
It should be noted that applicants specification pg 4 lines 1-10 indicates that VeoVo10 is a vinyl ester of alpha branched carboxylic acids, which would indicate that the neodecanoic acid vinyl ester of Veova 10 in the example of Tsurumi would be a vinyl ester of alpha branched alkyl monocarboxylic acid having 10 carbon atoms.
This example of Tsurumi would have weight % values based on the total weight of the copolymer of approximately 24.8 wt% of vinyl acetate, 0.79 wt% of maleic acid, 4.96 wt% of neodecanoic acid vinyl ester, 69.44 wt% of vinyl chloride.
This example differs from the claimed copolymer only in that it includes too small an amount of neodecanoic acid vinyl ester.
It should be noted that the total amount of the unsaturated vinyl acid and the vinyl ester of a long chain fatty acid are present in a total amount of 5.75 wt%, while the broad teaching of Tsurumi teaches that this value can be between 1 to 50 wt%.
It should be noted that if the amount of by weight of the unsaturated vinyl acid and the vinyl ester of a long chain fatty acid are multiplied by 2.5 times while the parts by weight of the other components are kept the same would result in wt% values of 64.16 wt% of vinyl chloride, 22.91wt% of vinyl acetate, 11.46 wt% of vinyl ester of neodecanoic acid and 1.47 wt% of maleic acid . This polymer has an total amount of the unsaturated vinyl acid and the vinyl ester of a long chain fatty acid are present in a total amount of 12.93 wt% while the broad teaching of Tsurumi teaches that this value can be between 1 to 50 wt%.
The molar mass of vinyl chloride is 62.50 g/mol , that of vinyl acetate is 86.09 g/mol, that of vinyl ester of neodecanoic acid is 198.306 g/mol, and that of maleic acid is 116.072 g/mol which allows for calculation of the molar ratio of unsaturated vinyl acid and the vinyl ester of a long chain fatty acid as indicated by Tsurumi.
If the molar ratio of is maintained at 0.27 as indicated by the example of Tsurumi but the total molar amount of the unsaturated vinyl acid and the vinyl ester of a long chain fatty acid are multiplied by 2.5 with the molar amounts of vinyl chloride and vinyl acetate staying the same this would result in a polymer having 63.92705 wt% of vinyl chloride 22.83 wt% of vinyl acetate 11.42 wt% of the vinyl ester of neodecanoic acid and 1.83 wt% of maleic acid. This polymer has an total amount of the unsaturated vinyl acid and the vinyl ester of a long chain fatty acid are present in a total amount of 13.25 wt% while the broad teaching of Tsurumi teaches that this value can be between 1 to 50 wt%.
As such the broad teaching of Tsurumi would provide an overlapping range with the claimed range of the claimed vinyl ester.
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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05.
It would have been obvious to one of ordinary skill in the art at the time of filling to alter the example of Tsurumi to use the claimed amount of the monomers in the polymer to give the claimed copolymer because Tsurumi teaches an overlapping range with the claimed range of the vinyl ester of an alpha branched alkyl monocarboxylic acid having 10 carbon atoms.
Concerning claims 19-20 Tsurumi teaches the copolymer of claim 24 as is stated above. Tsurumi teaches that the copolymer is used to obtain a paint which comprises titanium oxide (paragraph 0017) which is then sprayed onto a stainless steel plate and dried at room temperature for 168 hours (paragraph 0018). As such the copolymer is used as a binder for paint which is a coating material that coats a metal surface. As such Tsurumi teaches the claimed limitations.
Concerning claim 21 Tsuruim teaches the copolymer of claim 24 as is stated above. Tsurumi teaches that the copolymer is used to obtain a paint which comprises titanium oxide (paragraph 0017) which is then sprayed onto a stainless steel plate and dried at room temperature for 168 hours (paragraph 0018). The coating on the stainless steel plate would be a coated film and so a coating material.
Tsurumi does not specifically teach that the coating material is for producing a heat sealable and RF weldable film.
"[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.I.
There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the relevant time, but only that the subject matter is in fact inherent in the prior art reference. Schering Corp. v. Geneva Pharm. Inc., 339 F.3d 1373, 1377, 67 USPQ2d 1664, 1668 (Fed. Cir. 2003). See MPEP 2112.II
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP 2112.01.I.
As such since Tsurumi teaches a coating material that has the claimed copolymer present it would teach that the material can be for producing a heat sealable and RF weldable film. As such Tsurumi teaches the claimed limitations.
Concerning claim 38 Tsurumi teaches the copolymer of claim 24 as is stated above.
Tsurumi teaches that the copolymer has excellent adhesion (paragraph 0006) and further teaches that vinyl chloride vinyl acetate copolymers are widely used as resin composition for adhesives (paragraph 0002).
It would have been obvious to one of ordinary skill in the art at the time of filling to use the copolymer of Tsurumi as a hot melt adhesive because Tsurumi teaches that the copolymer has excellent adhesion and that the class of polymers it is a part of are often used for adhesives.
Allowable Subject Matter
6. Claims 35, 20, 29, 36, 39 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter: None of the prior art of record fairly teach or suggest the claimed composition which consists of the claimed copolymer. Tsurumi particularly teaches that the composition that comprises the copolymer can be suitably used as a coating material by further adding pigments dyes colorants, filler antioxidants, ultraviolet absorbers ect (paragraph 0012) which indicates that the composition will not consist of the copolymer.
Response to Arguments
7. Applicant’s arguments with respect to claim(s) 13-14, 16, 19-21, 24, 28-29, 35-36, 38-39 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
8. Claims 13-14, 16, 19-21, 24, 28-29, 35-36, 38-39 are rejected. Claims 35, 20, 29, 36, 39 are rejected over 112(b) but are allowable over the prior art of record. This office action is a second action non final rejection due to the new grounds of rejection which is provided.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID L MILLER whose telephone number is (571)270-1297. The examiner can normally be reached M-F 9:30-6:00.
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/DAVID L MILLER/Examiner, Art Unit 1763
/JOSEPH S DEL SOLE/Supervisory Patent Examiner, Art Unit 1763