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
Response to Amendment
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The previous restriction and 102 rejections have been maintained and repeated.
The previous abandonment has been withdrawn.
Claim Rejections - 35 USC § 102
Claim(s) 14 and 21 is(are) rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hosoi et al. (US 4116784).
Hosoi (claims, abs., EX15-17) discloses two vinyl acetate-grafted polyethylenes having vinyl acetate content of 42.1 wt% and 9.5wt%.
The claimed PEVA with a non-specific spatial configuration of the vinyl acetate units relative to the main ethylene chain appears to be a vinyl acetate grafted polyethylene according to the claimed process, not a syndiotactic or atactic (non-isotactic) that may be implied by instant pgpub [0009]. Hosoi is silent on the claimed process of instant claim 14. However, claim(s) 14 and 21 is(are) product-by-process claims that are limited by and defined by the product. Determination of patentability is based on the product itself, not on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 777 F. 2d 695, 698,277 USPQ 964,966 (Fed. Cir. 1985). See MPEP § 2113. Hosoi’s vinyl acetate-grafted polyethylenes meets the claimed structure and vinyl acetate content (5-45 wt%).
Hosoi is silent on the claimed non-specific spatial configuration, tensile strength, impact strength, elongation, density, hardness, melting point, softening point, and compatibility to polyolefin. Hosoi’s vinyl acetate-grafted polyethylenes would inherently exhibit these properties, dupability, and solubility, because in view of the substantially identical composition (in this case, the disclosed grafted copolymer structure and vinyl acetate wt%), it appears that the adduct would have inherently possessed the claimed properties. See MPEP § 2112.
Response to Arguments
The argument for allowance of amended claims has been fully considered but not persuasive.
Applicant’s attack on Hosoi (pg.3-4) and the inherency rationale appears irrelevant, because Hosoi’s two vinyl acetate-grafted polyethylenes having vinyl acetate content of 42.1 wt% and 9.5wt% (as intermediates) used in EX15-17 has been cited for the rejection. The final products of Ex15-17 including dipropargyl maleate have not been cited for the rejection. The examiner asserts Hosoi’s two vinyl acetate-grafted polyethylenes having vinyl acetate content of 42.1 wt% and 9.5wt% meet the claimed one, as evidenced by instant Fig.3. and examples showing the PE backbone with grafted vinyl acetate:
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The claimed PEVA with a non-specific spatial configuration of the vinyl acetate units relative to the main ethylene chain appears to be a vinyl acetate grafted polyethylene according to the claimed process, not a syndiotactic or atactic (non-isotactic) that may be implied by instant pgpub [0009]. Furthermore, the examine asserts a prima facie case of inherency has been established, because in view of the substantially identical composition (in this case, the disclosed grafted copolymer structure and vinyl acetate wt%), it appears that the adduct would have inherently possessed the claimed properties. See MPEP § 2112.
Therefore, the previous restriction and 102 rejections have been maintained and repeated.
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 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 date of this final action.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHANE FANG whose telephone number is (571)270-7378. The examiner can normally be reached on Mon-Thurs. 8am-6pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached on 571.572.1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SHANE FANG/Primary Examiner, Art Unit 1766