DETAILED ACTION
This Office Action is responsive to the amendment filed on 5/26/26.
The objections and rejections not addressed below are deemed withdrawn.
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 present application is being examined under the pre-AIA first to invent provisions.
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.
Claim Rejections - 35 USC § 103
Claim(s) 1, 3, 4, 6, 8, and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Satoru et al, KR20030012886.
A machine translation of Satoru was used for the preparation of this Action.
Satoru discloses the production of a coated soft resin pellet, wherein said soft resin pellet is prepared via a process comprising the steps of 1) mixing a soft resin pellet with a liquid to adhere the liquid onto the pellet surface, followed by 2) applying a fine powder to the product obtained in step (1), thereby attaching said fine powder to the pellet (¶263-266). Said soft resin pellet may be an ethylene/vinyl acetate copolymer (EVA) having a vinyl acetate content in the range of 5 to 40 wt% (¶15, 24), corresponding to the claimed pellet-shaped EVA pellet (for claim 1). Said liquid may be a glycol (¶247). One of ordinary skill in the art will recognize that the term “glycol” refers to an organic compound having hydroxyl group(s), corresponding to the claimed liquid coating agent (for claim 1). Said fine powder may be a fatty acid derivative (¶258) such as such as an amide of erucic acid or oleic acid (¶261), corresponding to the claimed unsaturated fatty acid amide (for claims 1, 8, 9) which is a monoamide (for claim 9). Satoru teaches that the amount of the fine powder is in the range of 50 to 10000 ppm (i.e, 0.0050 to 1 wt%) (¶269). Satoru therefore teaches the production of an EVA pellet which has both a liquid coating and a solid organic powder attached to its surface, corresponding to the claimed requirement that a solid coating agent is adhered to at least a portion of the surface (for claim 1).
Regarding claim 3: Satoru does not teach that the prior art process results in a second processed pellet wherein any portion of the powder anti-blocking agent is inside the EVA resin. Furthermore, Satoru teaches that the first step of the prior art process results in a first processed pellet wherein the surface is entirely coated with the liquid binder (¶273). Given that the entirety of the pellet’s surface is coated with the liquid binder prior to application of the anti-blocking agent, it is reasonably expected that all of the anti-blocking agent in the final product will be adhered to the pellet surface-i.e, the surface adhesion amount and the total adhesion amount will be the same. It is therefore reasonably expected that ratio of surface adhesion amount to total adhesion amount will be 1.0.
Regarding claim 4: Satoru teaches that 1) the entire surface of the resin pellet is coated with the liquid coating (¶273) and 2) that the fine powder is dispersed within the liquid coating layer (¶272). The fine particles are therefore attached to the resin pellet via the liquid coating as required.
Regarding claim 6: As noted above, the prior art EVA has a vinyl acetate content in the range of 5 to 40 wt% (¶24). Because the difference between the claimed range and the prior art range is so small (i.e., less than 1%), it is reasonably expected that the properties of the prior art pellet would not be materially different from those of the claimed invention.
Satoru does not specifically disclose the production of an EVA particle coated with a liquid agent having a hydroxyl group and an organic solid coating agent wherein the total amount of solid coating agent is 1.9 parts or more per 100 parts EVA and the total adhesion amount is 0.037 or more.
It has been held that the selection of a known material based on its suitability for its intended use is prima facie obvious; see Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (MPEP § 2144.07). As noted above, Satoru specifically discloses the use of EVA as soft resin pellet used in the prior art process, glycol as the liquid coating agent, and a fatty acid amide as the solid coating agent. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to prepare an EVA pellet having a glycol liquid coating agent and a fatty acid amide coating agent adhered to its surface, with the reasonable expectation of obtaining a final product having excellent non-adhesive properties as taught by Satoru (for claim 1) (¶1, 13).
Regarding the amount of solid coating agent: It has been held that a prima facie case of obviousness exists where the claimed ranges and the prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties, see Titanium Metals Corp. of America v. Banner 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). As noted above, Satoru teaches that the amount of the organic powder can be as high as 1 wt% (i.e., 1 part per 100 part EVA). Given that 1) the prior art process uses the same components of a liquid coating agent and a solid coating agent for the same purpose of reducing blocking (Satoru ¶5, 11) as in the claimed invention and 2) the difference between the prior art value and the claimed value is small (i.e., less than 1 part per 100 parts EVA), it is reasonably expected that the properties of the prior art particle would not be materially different from those of the claimed invention. The burden is therefore shifted to applicant to provide evidence demonstrating the criticality of the claimed range (for claim 1).
Regarding the claimed number: It has been held that differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP § 2144.05(II)(A)). The prior art fine powder is adhered to the surface of the soft resin pellet to confer non-adhesive properties to said particle. The amount of solid coating agent therefore is a result effective variable. Barring a showing of evidence demonstrating unexpected results, it would therefore be obvious to vary the amount of powder anti-blocking agent per number EVA through routine experimentation in order to sufficiently cover the surface area of the EVA pellets to provide anti-blocking characteristics (for claim 1)..
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Satoru et al, KR20030012886, as applied to claims 1, 3, 4, 6, 8, and 9 above, and further in view of Nishijima et al, JPH0673187.
As discussed earlier in this Action, Satoru discloses the production of an EVA pellet which is coated with a liquid coating and a powder fine powder to promote non-adhesiveness. Satoru generically discloses the use of glycols as said liquid coating (¶247).
Satoru is silent regarding the use of a liquid coating which is a block or random copolymer of ethylene oxide and propylene oxide or diglycerin.
Nishijima discloses the production of pellets of polymers such as EVA (¶0016) having improved antiblocking characteristics (¶0001, 0005). Said pellets are produced via a process wherein a polyalkyl glycol is used to adhere a powder anti-blocking agent to the pellet (¶0013). Said polyalkyl glycol may be a copolymer comprising ethylene glycol (i.e., ethylene oxide) and propylene glycol (i.e., propylene oxide) (for claim 10) (¶0012).
Satoru and Nishijima are both directed towards the same field of endeavor-i.e., the production of EVA-based pellets having improved anti-blocking characteristics via the adhesion of a powder anti-blocking agent. As taught by Nishijima, it was known in the art that ethylene glycol/propylene glycol copolymers could be used to adhere such organic anti-blocking powders to EVA-based pellets, Given Satoru’s disclosure that the liquid binder may be a glycol, it therefore would have been obvious to one of ordinary skill in the art to modify the process of Satoru by using an ethylene glycol/propylene glycol copolymers (for claim 10), as taught by Nishijima, as the liquid coating, with the reasonable expectation of obtaining a final pellet wherein the powder anti-blocking agent is adhered to the surface.
Response to Arguments
Applicant's arguments filed 5/26/2026 have been fully considered but they are not persuasive with respect to the rejections over Satoru.
Applicant argues that Satoru does not specifically disclose the configuration recited in the instant claims.
It has been held that the selection of a known material based on its suitability for its intended use is prima facie obvious; see Sinclair & Carroll Co. v. Interchemical Corp., cited earlier in this Action. As discussed above, Satoru discloses a process of making a coated particle by applying a liquid coating agent and a solid coating agent to a polymer particle to reduce its adhesiveness (i.e., blocking properties). Furthermore, EVA, glycol, and fatty acid amides are taught as suitable embodiments of the polymer particle, liquid coating agent, and solid coating agent, respectively. The prior art therefore renders obvious the claimed invention per the rationale discussed earlier in this Action.
In the event that applicant intended to argue that the prior art does not suggest the claimed invention because it does not disclose an example that satisfies the claimed invention, it has been held that "a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including non-preferred embodiments," Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.). "Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or non-preferred embodiments,” In re Susi 440 F.2d 442, 169 USPQ 423 (CCPA 1971). (MPEP § 2123 [R-5]). Satoru’s broad disclosure renders obvious the claimed invention as discussed earlier in this Action; the mere fact that the prior art does not specifically disclose an example which satisfies all claimed limitations does not teach away from this broad disclosure. Applicant’s argument therefore is not persuasive.
Applicant argues that Satoru does not disclose the claimed limitation that the amount of solid coating agent is 1.9 parts or more per 100 parts EVA; this argument is not persuasive per the rationale outlined in paragraph 14 of this Action.
Applicant argues that the claimed invention yields unexpected results, citing the data from the specification.
Applicant can rebut a prima facie case of obviousness by showing that there are new or unexpected results relative to the prior art; see Iron Grip Barbell Co., Inc. v. USA Sports, Inc., 392 F.3d 1317, 1322, 73 USPQ2d 1225, 1228 (Fed. Cir. 2004). See also MPEP § 716.02(e) and the cases cited therein.
As reported in Table 1 of the instant specification, comparative examples 1 and 2 were performed using untreated EVA pellet-i.e., neither a liquid coating agent nor a solid coating agent were applied to the pellet. Comparative Example 3 was performed using an EVA pellet and a solid coating agent only; no liquid coating agent was applied. As discussed earlier in this Action, however, Satoru discloses a process wherein an EVA pellet is coated with both a liquid coating agent and a solid coating agent. The cited examples therefore do not compare the claimed invention to the closest prior art as required. As such, applicant’s argument that the claimed invention yields unexpected results is not persuasive.
Applicant’s arguments with respect to the rejections over Chiba, JP2012040719, have been fully considered and are persuasive. Specifically, applicant argues that Chiba teaches that the amount of anti-blocking agent taught by Chiba is up to 0.03 parts per 100 parts polymer (Chiba ¶0043) (arguments: page 6, lines 18-25); note that the claimed lower limit for this property is more than 60 times greater than the prior art value. The rejections over Chiba have therefore been withdrawn.
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 JEFFREY S LENIHAN whose telephone number is (571)270-5452. The examiner can normally be reached Mon.-Fri. 5:30-2:00PM.
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, Heidi Riviere Kelley can be reached at 571-270-1831. 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.
/JEFFREY S LENIHAN/Primary Examiner, Art Unit 1765
Prosecution Insights