DETAILED 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.
Election/Restrictions
Applicant’s election without traverse of the invention of Group I, claims 1-10, in the reply filed on 10/28/2025 is acknowledged.
Claims 11-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 5 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 5 recites the limitation of “a number, number/g, of the ethylene-vinyl acetate copolymer per 1 g of the ethylene-vinyl acetate copolymer”. This limitation is indefinite because it is unclear what must be counted to determine the recited “number”. For example, the “number of ethylene-vinyl acetate copolymer” could be interpreted to refer to the number of individual ethylene/vinyl acetate (EVA) polymer molecules in 1g of sample. Alternatively, the claim could be interpreted to refer to the number of EVA polymer pellets per 1 g sample. The scope of the claim is therefore unclear.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 3, and 4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chiba et al, JP2012040719 (of record).
A machine translation of Chiba was used for the preparation of this Action.
Chiba discloses a process of providing a resin pellet, wherein said process comprises the steps of 1) applying a liquid binder to a raw material pellet to obtain a first processed pellet, and 2) applying a powder anti-blocking agent to said first processed pellet to obtain a second processed pellet (abstract, ¶0009). As said raw material pellet, Chiba discloses the use of EVA pellets (¶0054), corresponding to the claimed pellet-shaped EVA (for claim 1). As said liquid binder, Chiba discloses the use of a polyether polyols such as (poly)ethylene glycol (¶0031). One of ordinary skill in the art will recognize that the term “polyol” is used in chemistry to refer to organic compounds containing multiple hydroxyl groups; Chiba’s disclosure of polyether polyols therefore corresponds to the claimed liquid coating agent including a hydroxyl group (for claim 1). As said powder anti-blocking agent, Chiba discloses the use of an organic powder (¶0039), corresponding to the claimed solid coating agent which is an organic compound (for claim 1).
Regarding the requirement that the solid coating agent adheres to at least a portion of the surface: As noted above, Chiba discloses a process wherein an EVA pellet is coated first with a liquid binder, followed by application of a powder anti-blocking agent. Further note that Chiba teaches that the anti-blocking agent is uniformly and evenly adhered to the pellet surface (¶0037, 0044). The second processed pellet obtained through the prior art process therefore has powder anti-blocking agent adhered to the surface as required (for claim 1).
Regarding claim 3: Chiba 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 pellet. Furthermore, Chiba teaches that the first step of the prior art process results in a first processed pellet wherein the surface is uniformly and evenly coated with the liquid binder (¶0036). 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: As noted above, Chiba teaches that the first processed pellet is uniformly and evenly coated with the liquid binder (¶0036); one of ordinary skill in the art will therefore recognize that application of the organic powder anti-blocking agent in the second step results in a second processed pellet wherein the powder anti-blocking agent is adhered to the pellet surface through the liquid binder.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 5-9 are rejected under 35 U.S.C. 103 as being unpatentable over Chiba et al, JP2012040719.
As discussed earlier in this Action, Chiba discloses the production of an EVA pellet which is coated with a liquid binder and a powder anti-blocking agent.
Regarding claim 5: 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)). As noted above, Chiba teaches that the powder anti-blocking agent is used to uniformly and evenly coat the surface of the prior art particles. It would therefore be obvious to vary the amount of powder anti-blocking agent per number EVA in order to sufficiently cover the surface area of the EVA pellets to provide anti-blocking characteristics.
Regarding claim 6: The prior art EVA has a vinyl acetate content in the range of 5 to 40 mass% (for claim 6) (¶0086).
Regarding claims 7-9: The prior art powder anti-blocking agent may be a fatty acid amide such as an amide of erucic acid or oleic acid (¶0039, 0041). One of ordinary skill in the art will recognize that erucic acid and oleic acid are both monounsaturated fatty acids that have a single carboxylic acid group; the amide of each of these acids would therefore correspond to the claimed unsaturated fatty acid amide (for claims 7-9) which is a monoamide (for claim 9).
Chiba does not specifically disclose the production of a pellet wherein the EVA has a vinyl acetate content in the range of more than 40 to 70 mass% and the powder anti-blocking agent is an amide.
Regarding the vinyl acetate content: 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) (MPEP § 2144.05(I)). Note that the claimed lower limit of “more than 40% by mass” reads on values that are only slightly higher than 40% (e.g., 40.01%). Because the difference between the prior art upper limit of 40% by mass and the claimed range is so small-i.e., less than 1%-an ordinary artisan would reasonably expect that the properties of the prior art pellet comprising an EVA having a vinyl acetate content of 40 mass% 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 6).
Regarding the use of a fatty acid amide: 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, Chiba specifically discloses the use of amides of erucic acid and oleic acid as the anti-blocking agent. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to perform the prior art process using one of these compounds as the anti-blocking agent (for claims 7-9).
Claim(s) 2 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Chiba et al, JP2012040719, as applied to claims 1, 3, and 4 above, and further in view of Nishijima et al, JPH0673187.
A machine translation of Nishijima was used in the preparation of this Action.
As discussed earlier in this Action, Chiba discloses the production of an EVA pellet which is coated with a liquid binder and a powder anti-blocking agent. Chiba generically discloses the use of polyether polyols as said liquid binder (¶0031).
Chiba is silent regarding the use of 1.0 part or more solid coating agent (for claim 2) and a liquid coating agent which is a block or random copolymer of ethylene oxide and propylene oxide or diglycerin (for claim 10).
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). Nishijima further teaches that it was known to use the anti-blocking agent in an amount up to 1% relative to the pelleted resin (i.e., 1 part per 100 part resin) (¶0013), overlapping the claimed range (for claim 2).
It has been held that in the case where the claimed ranges overlap or lie inside ranges disclosed in the prior art, a prima facie case of obviousness exists; see In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages; see In re Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (" (MPEP § 2144.05). The prior art range overlaps the claimed range. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to one of ordinary skill in the art to perform the process of Chiba using the required amount of powder anti-blocking agent, as taught by Nishijima, with the reasonable expectation of obtaining a final pellet having improved anti-blocking properties (for claim 2).
Chiba 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. Further note that Chiba (¶0040) and Nishijima (¶0011) disclose the use of the same polyolefin powder anti-blocking agents. 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 Chiba’s disclosure that the liquid binder may be a polyether polyol, it therefore would have been obvious to one of ordinary skill in the art to modify the process of Chiba by using an ethylene glycol/propylene glycol copolymers (for claim 10), as taught by Nishijima, as the liquid binder, with the reasonable expectation of obtaining a final pellet wherein the powder anti-blocking agent is adhered to the surface.
Claim(s) 1-9 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 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 an organic filler or a fatty acid derivative (¶258), corresponding to the claimed solid coating agent (for claim 1). 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 2: 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), overlapping the claimed range. It therefore would have been obvious to perform the prior art process using the required amount of fine powder; see In re Wertheim, In re Woodruff, and In re Peterson cited earlier in this Action.
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 5: The prior art fine powder is adhered to the surface of the soft resin pellet to confer non-adhesive properties to said particle.. 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; see In re Aller cited earlier in this Action.
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. The burden is therefore shifted to applicant to provide evidence demonstrating the criticality of the claimed range; see Titanium Metals Corp. of America v. Banner cited earlier in this Action.
Regarding claims 7-9: As noted above, Satoru teaches that the fine powder may be a fatty acid derivative. Said derivative may be fatty acid amide such as an amide of erucic acid or oleic acid (¶261). As discussed earlier in this Action, fatty acid amides of erucic acid and oleic acid both correspond to the claimed unsaturated fatty acid amide (for claims 7-9) which is a monoamide (for claim 9).
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.
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. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to prepare an EVA pellet having a glycol and an organic filler 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).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Satoru et al, KR20030012886, as applied to claims 1-9 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.
Conclusion
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/JEFFREY S LENIHAN/Primary Examiner, Art Unit 1765