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 § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-7, 9-20 and 25-27 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 has been amended to recite that “ethylene is present in the ethylene based polymer in an amount of at least 60 wt.% relative to a total weight of the ethylene-based polymer”. There is no support for this limitation in the specification as originally filed. Applicants point to paragraphs 0029 and 0030 of the present specification which disclose that the ethylene-based polymer can comprise 20 wt.% vinyl ester monomer and 20 wt.% vinyl acetate monomer, which, applicant argues, means that the reminder of the polymer must be 60 wt.% ethylene. However, this disregards the disclosure in paragraph 0028 of the present specification which states that the lower limit of the amount of ethylene is 70 wt.%. Further there is no support to recite that the amount of ethylene is present in an amount of “at least” 60 wt.% which includes all amounts above 60 wt.%, i.e. 99.999 wt.% for which there is no support in the specification as originally filed. Paragraph 0028 of the present specification states that the upper limit of the amount of ethylene is 99.99 wt.%. Therefore, while there is support to recite that the ethylene is present in the ethylene-based polymer in an amount of 70-99.99 wt.%, there is no support to recite that the ethylene is present in an amount of at least 60 wt.% as presently claimed.
Claim 25 recites “ethylene is present in the ethylene based polymer in an amount of at least 66.1 wt.% relative to a total weight of the ethylene-based polymer”. There is no support for this limitation in the specification as originally filed. Applicants point to paragraph 0123 of the present specification which discloses an ethylene-based polymer made from 5.6 wt.% vinyl ester that is VeoVa 10 and 28.3 wt.% vinyl acetate and thus there must be 66.1% ethylene. However, while there is support to recite a specific ethylene-based polymer made from 66.1 wt.% ethylene, 5.6 wt.% VeoVa 10, and 28.3 wt.% vinyl acetate, there is no support to broadly recite an ethylene-based polymer made from “at least 66.1 wt.%” ethylene.
Claim 26 recites “ethylene is present in the ethylene based polymer in an amount of at least 66.6 wt.% relative to a total weight of the ethylene-based polymer”. There is no support for this limitation in the specification as originally filed. Applicants point to paragraph 0123 of the present specification which discloses an ethylene-based polymer made from 9.3 wt.% vinyl ester that is VeoVa 10 and 24.1 wt.% vinyl acetate and thus there must be 66.6% ethylene. However, while there is support to recite a specific ethylene-based polymer made from 66.6 wt.% ethylene, 9.3 wt.% VeoVa 10, and 24.1 wt.% vinyl acetate, there is no support to broadly recite an ethylene-based polymer made from “at least 66.1 wt.%” ethylene.
Response to Arguments
Applicant’s arguments and amendment filed 12/30/2025 have been fully considered and are persuasive.
The amendment overcomes all the rejections of record given that none of the prior art teach amount of ethylene in the ethylene-based polymer as now required in all the present claims. Specifically, Choi et al. (US 2021/0503650), McLennan et al. (US 2010/0167609) and Wierer et al. (US 5,314,530) each disclose ethylene/vinyl ester copolymer where the amount of ethylene is outside the scope of the present claims while Sahara et al. (US 4,207,372) is silent to the amount of ethylene in the ethylene/vinyl ester copolymer.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure
Bauer et al. disclose copolymer of ethylene and vinyl ester including vinyl ester of branched chain alkanoic acids having 9-20 carbon atoms (col.2, lines 16-49). The copolymer is made from 10-80 mol% vinyl ester (col.2, lines 23-27) and therefore, the copolymer would be made from 90-20 mol% ethylene. However, there is no disclosure of thermoplastic polyurethane as presently claimed and the amount of ethylene in mol% would not meet the amount of ethylene in wt.% as presently claimed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. 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 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 Callie Shosho whose telephone number is (571)272-1123. The examiner can normally be reached Monday-Friday, 6:00 am - 5:00 pm.
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/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787
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