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 § 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.
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.
Claims 1-4, 6-14, 17 are rejected under 35 U.S.C. 103 as being unpatentable over Naoki (US6472470, herein Naoki).
Regarding Claims 1-2, Naoki teaches ethylene-modified PVA [C4; L46] which reads on the ethylene-vinyl acetate copolymer, and the polymer is generally applied in the form of an aqueous solution [C13; L19]. Naoki teaches “ethylene unit content of 2 to 19 mole %, polymerization degree of 200 to 2,000, a saponification degree of 80 to 99.99 mole % and a total content of carboxyl group and lactone rings of 0.02 to 0.4 mole %” [C2; L53] wherein, both carboxyl group and lactone rings are terminal groups [C5; L40-43] reads on the claimed end group, i.e., the structure of Naoki matched the claimed structure (I) and the claimed molar ratio R, wherein, upon the degree of polymerization is 200 to 2,000 [C2; L52], the molar concentration of the structures of formula (I) and (II) are 1/200 to 1/2000 or 0.05 to 0.5 mole percent. Hence, the structures of formula (I) and (II) are provided by the initiator which is present on one terminal of the polymer chain, further by copolymerizing the vinyl ester monomer, and then Saponifying the obtained copolymer, which can collectively lead to the formation of the claimed range structure (II) via the initiator of “AMV” [C6; L13], structure see below: [Scifinder], wherein the Z being H, with the concentration fall into the claimed range as structure (II) as copolymerization.
PNG
media_image1.png
710
1164
media_image1.png
Greyscale
Naoki further specifically teaches the structure (I) which is developed from the “example 2” [C25; L45]: PVA obtained by “saponification” [Table 4; C25] been further washed via the two steps where the polymer is washed twice with a mixed solvent of water/methanol; then washed twice with methanol alone. [C25; L65], wherein the washing steps transformed the portion of structure (II) into structure (I), and due to the structure (II) and claimed washing method can collectively lead to the evolution of the claimed structure (I).
Regarding Claims 3, 6, Naoki teaches ethylene-vinyl acetate copolymer, and the polymer is generally applied in the form of an aqueous solution [C13; L19] as set forth above, which and can be used as adhesive.[C14; L19] hence, the adhesive consisting of the ethylene-vinyl acetate copolymer, which generally applied in the form of an aqueous solution [C13; L19].
Regarding Claim 4, Naoki teaches “copolymerizing ethylene and a vinyl ester monomer to obtain a vinyl ester polymer and then saponifying the polymer in an alcohol” [C9; L48]. Naoki teaches the structure (I) which is developed from the “example 2” [C25; L45]: PVA obtained by “saponification” [Table 4; C25] been further washed via the two steps where the polymer is washed twice with a mixed solvent of water/methanol; then washed twice with methanol alone. [C25; L65], wherein the washing steps transformed the portion of structure (II) into structure (I), and due to the structure (II) and claimed washing method can collectively lead to the evolution of the claimed structure (I). Naoki teaches washed twice with a mixed solvent of water/methanol = 1/9 and then washed twice with methanol alone [C21; L64] indicates the first washing solution and second washing solution having a water content lower than that of the first washing solution. Thus, the structure of Naoki matched the claimed structure (I) and the claimed molar ratio R. Naoki further teaches “Of these Solvents, preferred is methanol, more preferably methanol having a water content of 0.001 to 1% by weight," [C9; L60], overlaps the water ranges of the first and second washing solutions.
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).
PNG
media_image1.png
710
1164
media_image1.png
Greyscale
Regarding Claims 7, 9, 11, Naoki teaches “ethylene-modified PVA” [C14; L46] which reads on the claimed ethylene-vinyl acetate copolymer.
Naoki teaches the initiator of “AMV” [C6; L13], structure see below: [Scifinder], wherein the Z being H, which can lead to the formation of the claimed range structure (II)
PNG
media_image1.png
710
1164
media_image1.png
Greyscale
Naoki teaches the structure (I) is developed from the “example 2” [C25; L45]: PVA obtained by “saponification” [Table 4; P25] been further washed via the two steps: 1) Washed 3 times with methanol alone; 2) “washed twice with a mixed solvent of water/methanol; 3) “then washed twice with methanol alone.” [C25; L65] wherein the washing steps transformed the portion of structure (II) into structure (I), and due to the structure (II) and claimed washing method can collectively lead to the evolution of the claimed structure (I), therefore matched the claimed structure.
Regarding Claims 8, 10, 12, 13, 14, Naoki teaches “ethylene-modified PVA” [C14; L46] which is PVA [C16; L26], which reads on the claimed ethylene-vinyl acetate copolymer.
Naoki teaches the initiator of “AMV” [P6; L13], structure see below: [Scifinder], wherein the Z being H, which can lead to the formation of the claimed range structure (II)
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).
PNG
media_image1.png
710
1164
media_image1.png
Greyscale
Naoki teaches the structure (I) is developed from the “example 2” [P25; L45]: PVA obtained by “saponification” [Table 4; C25] been further washed via the two steps: 1) Washed 3 times with methanol alone; 2) “washed twice with a mixed solvent of water/methanol; 3) “then washed twice with methanol alone.” [C25; L65] matches the washing method from the instant application, wherein the washing steps transformed the portion of structure (II) into structure (I), and due to the structure (II) and claimed washing method can collectively lead to the evolution of the claimed structure (I), therefore matched the claimed structure.
Wherein the Z is the methyl group and Y is the methyl group is a prima facie case of obviousness due to very close structural similarities and similar utilities, between H group and methyl group. [MPEP 2144.09]
It would have been obvious to a person of ordinary skill in the art to have formed the structure where Z and Y are methyl groups, and the motivation to do so would have been, a person of ordinary skill in the art would expect the initiator to have substantially similar properties to the initiator used in Naoki.
Regarding Claim 17, Naoki teaches the copolymer formation as set forth in claim 1. The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients, in the claimed amounts, and teaches the composition as being made by a substantially similar process of the washing steps. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. the water insoluble content would necessarily arise from a composition with all the claimed ingredients and amounts. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Claim 5 rejected under 35 U.S.C. 103 as being unpatentable over Naoki (US6472470, herein Naoki) as applied to claim 2, in the further view of Kumaki (US20150259856, herein Kumaki)
Regarding Claim 5, Naoki et al. teaches the composition of claim 2 as shown above.
Naoki is silent on the coating speed; however, Kumaki teaches “coating was performed under the condition of 300 m/minute” [0035] lies in the claimed range.
Naoki and Kumaki are considered to be analogous to the claimed invention because they are in the same field of endeavor, that of the ethylene-vinyl alcohol based composition development for coating application. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Naoki to add the teachings of Kumaki of the coating speed selection, because doing so would further achieve the optimized product process owing to the selection of coating speed can lead to processing optimization, which further lead to the production development toward “providing highly safe greaseproof paper suitable for practical use in packages or containers for various fried food products or fat-containing food products.” [0054]
Allowable Subject Matter
Claims 15, 16 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Claims 15, 16 would be allowable for disclosing the total content of the structure (I) and the structure (II) in all monomer units is in a range of from 0.001 to 0.00377 mol%; the content of structure (I) in all monomer units is in a range of from 0.00099 to 0.003 mol%.
Response to Arguments
Applicant's arguments filed 5/19/2025 have been fully considered but they are not persuasive, because:
In response to the applicant’s argument that “Applicant respectfully submits that that there is no evidence of record to show and one of ordinary skill in the art would not expect that the synthesis procedure described in Naoki would result in a copolymer which adheres to the present claims”, the argument is not persuasive.
The arguments rely on subject matter that is not claimed, and also overstates the teachings of the specification.
In fact, the original specification teaches that “the upper limit is not limited” in the first wash and the “the lower limit is not limited” in the second wash (Instant App. US20220153891; 0035 and 0043), hence, the argument that the first wash has too much water and second wash has too little water is not supported by the original specification.
Conclusion
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 extension fee 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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Zhen Liu whose telephone number is (703)756-4782. The examiner can normally be reached Monday-Friday 9:00 am - 5:00 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, Mark Eashoo can be reached on (571)272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Z. L./Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767