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 § 103
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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-6, 8-9, 12-14, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Akamatu (US 5,308,879) in view of Araki (US 2015/0367610) and further in view of Redd (US 5,552,461). Younes (EFSA Journal 2023; 21(7):8106, attached) is cited as an evidentiary reference. All references have been cited in a prior Office action.
Regarding claims 1-3, and 8, Akamatu teaches a composition having a vinyl alcohol resin, an inorganic filler, and a nonionic surfactant (col. 1, lines 64-70). The vinyl alcohol resin may be polyvinyl alcohol (col. 2, lines 65-67). The surfactant may be present in amounts ranging from 0.5% to 10% by weight (col. 4, lines 18-20). Inorganic filler may be present in amounts ranging from 1% to 30% by weight (col. 4, lines 37 and 40-42). Akamatu does not require the presence of plasticizer, implying that 0 phr of any plasticizer, including glycerin, may be used.
However, Akamatu is silent as to use of silicone particles in the composition. In the same field of endeavor, Araki teaches use of particles of silicone as a surface-modifying substance (p. 5, [0059]). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to combine the composition of Akamatu and the silicone particles of Araki to arrive at the claimed invention and to provide a material with optimal surface roughness, as taught by Araki (p. 5, [0059]).
However, Akamatu and Araki are silent as to the amount of silicone that may be used. In a similar composition, Redd teaches use of 0.1% to 5% by weight silicone (col. 3, lines 45-48). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to combine the composition of Akamatu, as modified by Araki, with the silicone amount taught by Redd to arrive at the claimed invention and to achieve sufficient compression during extrusion, as taught by Redd (col. 3, line 51).
Akamatu, Araki, and Redd are silent as to how much of a molded article of the composition dissolves when immersed in hot water heated to 40-80℃. Nevertheless, the combined prior art teaches a composition that has identical ingredients in identical amounts, and will necessarily possess the same hot water solubility characteristics as the claimed composition. Products of identical chemical composition cannot have mutually exclusive properties. See MPEP 2112.
Regarding claims 4 and 18, Akamatu in view of Araki and Redd remains as applied to claim 1 above. However, Akamatu is silent as to the particle size of the inorganic filler. In the same field of endeavor, Araki teaches use of particles of inorganic substances having particle size of 0.2 microns or less (200 nm or less). An overlapping endpoint shared by a prior art range and a claimed range is sufficient to establish prima facie obviousness when there is no showing of criticality of the claimed range; similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. See MPEP 2144.05. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to combine the composition of Akamatu with the inorganic particles of Araki to arrive at the claimed invention, and to obtain a product with optimized surface characteristics, as taught by Araki (p. 5, [0059]).
Regarding claim 5, Akamatu in view of Araki and Redd remains as applied to claim 1 above. Akamatu further teaches that the inorganic filler may be calcium carbonate or carbon black (col. 4, lines 38-40).
Regarding claim 6, Akamatu in view of Araki and Redd remains as applied to claim 1 above. Akamatu further teaches use of calcium carbonate filler (col. 4, lines 37-38). The solubility of calcium carbonate in water at 20℃ is 16.6 (Younes, p. 3).
Regarding claim 9, Akamatu in view of Araki and Redd remains as applied to claim 1 above. Akamatu further teaches that the vinyl alcohol resin may have a degree of polymerization ranging from 300 to 5,000 (col. 3, lines 27-28). This prior art range overlaps the claimed range. A prima facie case of obviousness exists where the prior art range overlaps the claimed range. See MPEP 2144.05.
Regarding claims 12-14, Akamatu in view of Araki and Redd remains as applied to claim 1 above. Akamatu further teaches that the composition may be used in injection molding processes and machines known in the art (col. 5, lines 7-20). Akamatu further teaches that the vinyl alcohol resin may have a degree of saponification ranging from 50-100 mol% (col. 3, lines 26-27). The use limitations found in claims 12-14, including molding applications, are related only to the intended use of the composition, and need not be taught by the prior art in order to read on the claimed composition.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Akamatu in view of Araki, Redd, and Chen (CN 1683446 A, attached with translation).
Regarding claim 7, Akamatu in view of Araki and Redd remains as applied to claim 1 above. However, Akamatu is silent as to use of one of the claimed surfactants. In a similar composition, Chen teaches use of fatty acid salts as surfactants (p. 3). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to combine the composition of Akamatu and the surfactant of Chen to arrive at the claimed invention, and to reduce refining treatment without significantly affecting production cost, as taught by Chen (p. 3).
Claims 10-11 are rejected under 35 U.S.C. 103 as a being unpatentable over Akamatu in view of Araki, Redd, and DeMarco (US 2019/0366602 A1).
Regarding claims 10-11, Akamatu as modified by Araki and Redd remains as applied to claim 1 above. However, Akamatu is silent as to the viscosity of the vinyl alcohol resin at the claimed concentration and temperature. In a similar composition, DeMarco teaches use of SELVOL 205, which the instant specification identifies as having the claimed viscosity and MFR properties (p. 4, [0036]). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to combine the composition of Akamatu as modified and the polyvinyl alcohol of DeMarco to arrive at the claimed invention and to reduce manufacturing costs by employing a polymer that is cold-water soluble, as taught by DeMarco (p. 4, [0035]).
Allowable Subject Matter
Claim 19 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. The following is a statement of reasons for the indication of allowable subject matter: The closest prior art is Akamatu in view of Araki, Redd, Chen, and DeMarco, as discussed above in reference to claim 1. The combined prior art teaches a composition similar to the claimed composition, but fails to teach use of silicone particles having an average particle size of 5-35 microns. As such, the instant claim contains a limitation not found in the prior art, and is allowable.
Response to Arguments
Applicant's arguments filed 11 June 2026 have been fully considered but they are not persuasive.
Applicant argues that the combined prior art fails to teach that an article made of the composition will at least partially dissolve in water at 40-80℃ and further contends that one of ordinary skill in the art would not be motivated to combine the cited prior art for this same reason.
First, the combined prior art teaches an identical composition having the same ingredients as the claimed composition. The prior art composition will necessarily possess the same hot water solubility characteristics as the claimed composition. Products of identical chemical composition cannot have mutually exclusive properties. See MPEP 2112.
Second, Examiner agrees that it is possible that one of ordinary skill in the art at the time of filing may not have been motivated to combine the prior art on a basis of hot water solubility. Nevertheless, motivation would have been present as discussed above in the rejections of the claims. One of ordinary skill in the art need not have considered hot water solubility to be motivated to combine the prior art.
All arguments are believed to have been addressed in full above. The rejection is maintained.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELIZABETH K AMATO whose telephone number is (571)270-0341. The examiner can normally be reached 8:30 am - 4:30 pm M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Rob Jones can be reached at (571) 270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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ELIZABETH K. AMATO
Examiner
Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
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