DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on May 28, 2026 has been entered.
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
Claims 1-5, 8-17 and 27-33 are rejected under 35 U.S.C. 103 as being unpatentable over JP 1067040; however, for convenience, the machine translation will be cited below.
JP ‘040 exemplifies a purging agent comprising 66.7 wt% EVOH (31 mol% ethylene), 1.3 wt% water, 2 wt% salt, and 30 wt% polypropylene (Table, Example 5).
JP ‘040 teaches the purging agent as comprising a metal salt (carboxylate, phosphate, carbonate, chloride, etc.) in an amount of up to 0.5 wt% in terms of metal, where the metals include alkali or alkaline earth metals (p. 4, [0027]).
Alkali metals are known in the art to include lithium, sodium, and potassium. Choosing an alkali carbonate is prima facie obvious.
JP ‘040 teaches that the water content can be present in an amount of up to 20 wt% (p. 3, [0025]).
Modifying the purging agent of JP ‘040 to include 10.3 wt% water and reducing the amount of EVOH to 56.7 wt% is prima facie obvious, as this modification is clearly suggested by the teachings of JP ‘040.
This suggests a purging agent comprising the hydrophilic resin and water in a weight ratio of 85:15, the salt as being present in an amount of 3.5 phr based on 100 parts by weight of the EVOH, and 53 phr polypropylene resin based on 100 parts by weight of the EVOH.
Modifying the purging agent of JP ‘040 to include 15.3 wt% water and reducing the amount of EVOH to 51.7 wt% is prima facie obvious, as this modification is clearly suggested by the teachings of JP ‘040.
This suggests a purging agent comprising the hydrophilic resin and water in a weight ratio of 77:23, the salt as being present in an amount of 4 phr based on 100 parts by weight of the EVOH, and 58 phr polypropylene resin based on 100 parts by weight of the EVOH.
This composition is within the teachings of JP ‘040, and therefore, it can be seen that the composition taught by JP ‘040 overlaps with the claimed ranges, and it has been held that overlapping ranges are sufficient to establish prima facie obviousness. See MPEP 2144.05.
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to have selected from the overlapping portion of the range taught by the reference because overlapping ranges have been held to establish prima facie obviousness.
Claim 1 defines the product by how the product was made. Thus, claim1 is a product-by-process claim. For purposes of examination, product-by-process claims are not limited to the manipulation of the recited steps, only thestructure implied by the steps. See MPEP 2113. In the present case, the recitedsteps imply a combination of water and basic compound, such that when mixed provide the claimed pH. The above composition comprising 2 wt% sodium carbonate and 10.3 wt% water suggests an aqueous solution of 20% sodium carbonate. A 20% solution of sodium carbonate has a pH of about 11.5.
JP ‘040 is prima facie obvious over instant claims 1-3, 8-17 and 27-34.
Claim 4 defines the product by how the product was made. Thus, claim4 is a product-by-process claim. For purposes of examination, product-by-process claims are not limited to the manipulation of the recited steps, only thestructure implied by the steps. See MPEP 2113. In the present case, the recitedsteps imply a composition comprising water and the hydrophilic resin, which is taught by JP ‘040.
Response to Arguments
Applicant's arguments filed May 28, 2026 have been fully considered but they are not persuasive.
The declaration under 37 CFR 1.132 filed May 28, 2026 is insufficient to overcome the rejection of claims 1-5, 8-17, 27-28 and 31-34 based upon JP ’040 as set forth in the last Office action because: applicants arguments regarding the criticality of the claimed range of 0.25-7 phr (C) basic compound are not persuasive.
Demonstrating criticality of a claimed range is a method which can be used by applicants to establish unexpected results over the claimed range. However, when looking to showings of results in order to overcome a rejection, the following must be considered:
Results must be Unexpected:
Unexpected properties must be more significant than expected properties to rebut a prima facie case of obviousness. In re Nolan 193 USPQ 641 CCPA 1977.
Obviousness does not require absolute predictability. In re Miegel USPQ 716.
Since unexpected results are by definition unpredictable, evidence presented in comparative showings must be clear and convincing. In re Lohr 137 USPQ 548.
In determining patentability, the weight of the actual evidence of unobviousness presented must be balanced against the weight of obviousness of record. In re Chupp, 2 USPQ 2d 1437; In re March 175 USPQ; In re Battle, 24 USPQ 2d 1040.
Claims Must be Commensurate with Showings:
Evidence of superiority must pertain to the full extent of the subject matter being claimed. In re Ackerman, 170 USPQ 340; In re Chupp, 2 USPQ 2d 1437; In re Murch 175 USPQ 89: Ex Parte A, 17 USPQ 2d 1719; accordingly, it has been held that to overcome a reasonable case of prima facie obviousness a given claim must be commensurate in scope with any showing of unexpected results. In re Greenfield, 197 USPQ 227. Further, a limited showing of criticality is insufficient to support a broadly claimed range. In re Lemin, 161 USPQ 288.
Result Must Compare to Closest Prior Art:
Where a definite comparative standard may be used, the comparison must relate to the prior art embodiment relied upon and not other prior art - Blanchard v. Ooms, 68 USPQ 314 - and must be with a disclosure identical (not similar) with that of said embodiment: In re Tatincloux, 108 USPQ 125.
Here, applicants showing is not commensurate in scope with the claimed invention, as applicants have only compared compositions comprising EVOH as the hydrophilic resin, whereas the claimed invention allows for any hydrophilic resin.
Applicants have also only compared sodium carbonate as the metal salt (C), whereas the claimed invention allows for alkali metal acetate, alkali metal hydroxide, ammonia, amines and amines, in addition to alkali metal carbonates.
Additionally, applicants disclose in the declaration that resin composition (C4) is prepared using sodium carbonate, where the results in Table 1A disclose the basic compound as potassium carbonate. Therefore, it is unclear as to whether sodium carbonate or potassium carbonate was used.
Even further, applicants use 60 parts water, resulting in a mass ratio of (A)/(B) of 63/38, which is outside of the claimed range of 66/34 to 90/10. Therefore, it is unclear as to whether the increase in residual properties and decrease in feedability is due to use of the metal outside of the claimed range or the amount of water outside of the claimed range.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIEANN R JOHNSTON whose telephone number is (571)270-7344. The examiner can normally be reached Monday-Friday, 8:00 AM - 4:00 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached at (571)272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Brieann R Johnston/Primary Examiner, Art Unit 1766
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