DETAILED ACTION
This office action follows a reply filed on December 11, 2025. Claims 1, 4, 5, 8, 12 and 15 have been amended. Claims 1-5, 8-17, 27-28 and 31-34 are currently pending and under examination.
The prior art rejections, as set forth in the previous office action, are deemed proper and are therefore maintained.
The texts of those sections of Title 35 U.S. Code are not included in this section and can be found in a prior Office action.
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 December 11, 2025 have been fully considered but they are not persuasive.
(i) Applicants argue that alkali aqueous solution containing water and the basic compound is “not merely a product-by-process feature which do not confer a structurally different product”.
The citation from the instant specification is not sufficient to show that mixing water and basic compound separately with the EVOH results in a structurally different product than adding an aqueous solution of the basic compound to EVOH.
JP ‘040 shows that when both the salt and water are used, a lesser amount of material remains deposited on the extruder screw and die. Compare Examples 1 versus 3 (no salt). 1.4/1.9 g of deposition versus 3.4/5.8 g. Therefore, one of ordinary skill in the art would use both the water and salt, where the water inherently dissolves the basic compound.
(ii) Applicants argue that the prior art does not teach the claimed ranges of each component.
The examiner used the teachings of JP ‘040 to show that the amounts taught by JP ‘040 overlap with the claimed amounts.
While applicants argue that too much of the basic compound results in precipitation during storage, applicants only have one example which shows inferior results when using too much of the basic compound, particularly to sodium carbonate, whereas the claimed invention allows for a broad number of possible basic compounds. This is not sufficient to show the criticality of the claimed ranges, as the showing is not commensurate in scope with the claimed range.
(iii) Applicants argue that the claimed mass ratio (A)/(B) is not taught by JP ‘040, arguing that only 0.2-2 parts by mass of water is present.
Example 5 exemplifies the resin in an amount of 66.7 wt% and the water in an amount of 1.3 wt%, suggesting a weight ratio of resin:water of 98:2. While this is outside of the claimed range, JP ‘040 clearly teaches that the water can be present in an amount of 20 wt%. Increasing the water content to 10.3 wt% or 15.3 wt% is within the teachings of JP ‘040. Simultaneously reducing the EVOH content accordingly is necessary and suggests the inclusion of 56.7wt% or 51.7 wt%. By maintaining the amount of polypropylene to 30 wt%, the weight ratio of EVOH/PP is 65:35 or 63:37, respectfully, which is within the range of 90:10 to 10:90 required by JP ‘040. By simple calculation, a ratio of hydrophilic resin to water of 84:16 OR 77:23 is suggested, which is within the claimed range.
Therefore, while JP ‘040 does not necessarily teach a ratio of EVOH:water, the range is suggested by the overall teachings of JP ‘040. Again, applicants have not shown the criticality of the claimed range.
Conclusion
THIS ACTION IS MADE FINAL. 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 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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/Brieann R Johnston/Primary Examiner, Art Unit 1766