DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of the Claims
2. Claims 1-8 are currently pending. Claims 1-6 have been elected without traverse in the response filed on 05/15/2025. Claims 1-6 are currently under examination. This office action is in response to the amendment filed on 09/09/2025.
Claim Interpretation
3. The indication of block character is interpreted to be according to the definition provided in paragraph 0016 of the specification. The indication of absorbance is interpreted to be according to the definition provided in paragraph 0020 of the specification.
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.
4. Claim(s) 1-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kato (US 2004/0152834 A1).
Concerning claims 1, 3, 5 Kato teaches a dispersion stabilizer for use in suspension polymerization (paragraph 0011) which is a poly vinyl alcohol polymer (paragraph 0012), and further teaches that the residual acetic acid groups of the vinyl alcohol polymer preferably have a block character of at least 0.35 (paragraph 0046) and provides an example that has a bock character of 0.395 (paragraph 0016 Table 1-2 example 4). This polymer is indicated when in a 0.1 wt% aqueous solution have an absorbance at a wavelength of 320 nm of at least 0.1 and the upper limit is not particularly restricted but is for example 0.6 or lower (paragraph 0042). The examples of Kato teach absorbances of polyvinyl alcohol polymers includes those have absorbance at 320 nm of 3.5 and 3.63 (paragraph 0117 Table 2-1).
Kato does not specifically teach the combination of the claimed block character and the claimed absorbance at 320 nm.
Kato does teach overlapping ranges with the claimed ranges for the block character and for the absorbance at 320 nm.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. 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). See MPEP 2144.05.
It would have been obvious to one of ordinary skill in the art at the time of filling to use the claimed block character and absorbance of the polyvinyl alcohol based dispersing agent for suspension polymerization of Kato because Kato teaches an overlapping range with the claimed ranges of these properties.
Concerning claims 2, 4, 6 Kato as is stated above teaches a polyvinyl alcohol polymer which is used as a dispersing agent for suspension polymerization (paragraph 0012). Kato teaches that the polymer is indicated when in a 0.1 wt% aqueous solution have an absorbance at a wavelength of 320 nm of at least 0.1 and the upper limit is not particularly restricted but is for example 0.6 or lower (paragraph 0042) and that the residual acetic acid groups of the vinyl alcohol polymer preferably have a block character of at least 0.35 (paragraph 0046).
Kato does not specifically teach a ratio of the absorbance at 320 nm to the block character.
However the highest possible value of this ratio which can be provided by the indicated ranges of the absorbance and the block character is 1.71 (0.6/.35). It should also be noted that the minimum block character of the examples of 0.395 and even a middling value from the examples of an absorbance of 0.305 (paragraph 0016-0117 tables 1-2 and 1-3) would give a value of this ratio of 0.77 which is still within the claimed range of this ratio. As such the broad disclosure of the absorbance at 320 nm and of the block character of the polymer would provide an overlapping range with the claimed range of.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. 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). See MPEP 2144.05.
It would have been obvious to one of ordinary skill in the art at the time of filling to use the claimed ratio of absorbance at 320 nm to block character of the polymer in the polyvinyl alcohol dispersing agent for suspension polymerization of Kato because Kato teaches ranges of the absorbance and the block character which provide an overlapping range with the claimed range of the ratio.
6. Claim(s) 1-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Oura (JP H08-208724-A; all citations refer to the English language machine translation which is provided unless otherwise stated) in view of Shibuya (JP H08-269112 A; All citations refer to the English language machine translation which is provided unless otherwise stated).
Concerning claims 1, 3, 5 Oura teaches a polyvinyl alcohol polymer which is a dispersant for suspension polymerization (paragraph 0010 and 0003). This polyvinyl alcohol polymer is indicated to have a block character which is preferably 0.40 or less which provides a large dispersing power to the polyvinyl alcohol so that monomer can be stably suspended and dispersed in an aqueous medium so that the particle size distribution of the obtained polymer particles becomes sharp (paragraph 0015 and 0020).
Oura is silent as to the absorbance at 320 nm for a 0.1 wt% aqueous solution of the polyvinyl alcohol resin.
Shibuya is drawn to polyvinyl alcohol dispersion stabilizers used in suspension polymerization (paragraph 0001). Shibuya teaches that the polyvinyl alcohol based resin has an absorbance at 320 nm of preferably 0.4 or more of a 0.1 wt% aqueous solution of the polyvinyl alcohol, which allows for the polymer particles formed in polymerization processes using the polyvinyl alcohol resin to have excellent dispersibility and less coloration (paragraph 0005, 0014 and 0021). The absorbance of at 320 nm is indicated to belong to a structure of -C(=O)(-CH=CH-)3 (paragraph 0005). This absorbance is indicated to be able to be produced by providing a heat treatment caried out in an oxygen atmosphere having an oxygen concentration of 20% by volume or less while the polyvinyl alcohol has a content f carbonyl group of 0.03 to 2.5 mol% (paragraph 0016)as well as other method such as using an oxidation treatment, and blowing air during the polymerization of polyvinyl acetate which is then saponified to give the polyvinyl alcohol polymer which contains carbonyl groups (paragraph 0006).
It would have been obvious to one of ordinary skill in the art at the time of filling to alter the polyvinyl alcohol polymer of Oura which has the claimed block character to have the claimed absorbance at 320 nm as indicated by Shibuya for the purpose of obtaining a polyvinyl alcohol dispersing agent for suspension polymerization that improves the dispersibility and reduces the coloration of polymers formed in the suspension polymerization.
Concerning claim 2, 4 and 6 Oura in view of Shibuya teaches the polyvinyl alcohol resin of claim 1 as is stated above. Oura teaches that the polyvinyl alcohol polymer is indicated to have a block character which is preferably 0.40 or less (paragraph 0015 and 0020).
Shibuya teaches that the absorbance of a 1 wt% aqueous solution of the polyvinyl alcohol polymer at 320 nm is preferably 0.4 or more (paragraph 0005, 0014 and 0021).
When these preferred absorbance and block character are used in a ratio of the absorbance to the block character which has a minimum value of 1 (>0.4/<0.4). This value is within the claimed range of 0.6 or more.
It would have been obvious to one of ordinary skill in the art at the time of filling to use the preferred range of block character of Oura and to alter the polymer of Oura to have the preferred absorbance of a 1 wt% aqueous solution of the polyvinyl alcohol polymer at 320 nm to give the claimed range of the absorbance to block character for the purpose of obtaining a polyvinyl alcohol dispersing agent for suspension polymerization that improves the dispersibility and reduces the coloration of polymers formed in the suspension polymerization.
Response to Arguments
6. Applicant's arguments filed 09/09/2025 have been fully considered but they are not persuasive. Applicant argues with regard to the rejection over Kato that in Kato the difference between the block character of residual acetic acid groups of the vinyl alcohol polymer (b) that has not been heat treated and the vinyl alcohol polymer (A) that has been heat treated is at least 0.02. Thus it can be understood that the block character increases due to heat treatment. Thus it is clear that heat treatment of a vinyl alcohol polymer inevitably increases its block character. As described in the abstract of Kato a PBA is heat treated to obtain a specific PVA targeted. In addition as described in paragraph 0002 of the specification as filed a PVA based resin has a structure that is subjected to dehydration and acetic acid elimination by a heat treatment and has a double bond in the mainchain. As a result the absorbance at 320 nm derived from the double bond amount increase. Kao specifies that the absorbance at 320 nm is higher than that at 280 nm indicating a longer double bond chain in the PVA. This suggests that double bonds are actively introduced in the PVA chains by heating in Kato. However , as noted above, heat treatment inevitably increases the block character. Consequently a PVA having both a block character less than 0.40 and an absorbance at 320 nm of 0.25 or more cannot be obtained in Kato. In fact , a PVA meeting both the claimed requirements is not obtained in Examples of Kata. Even if the disclosure of Kato includes the description that a block character is less than 0.4 as a preferred range or an absorbance at 320 is 0.25 or more as a preferred range achieving both of the claimed requirements simultaneously would be impossible based on the techniques disclosed in Kato. Furthermore the comparative examples in the present application show the results of block character and the absorbance at 320 nm upon heating. This demonstrates that the PVA of the present application cannot be obtained by heat treatment. IN particular Comparative example 1 (heating at 140 C) has a block character of 0.53 and absorbance at 320 nm of 0.40 Comparative example 2 (heating at 110C) has block character of 0.41 and absorbance at 320 nm of 0.11. It was well known in the art that double bonds are generated int eh main chain in a PVA resin through heat treatment. This heat treatment method inevitably introduces double bonds which leads to an increase in absorbance at 320 nm indicating a structure with double bonds along the main chain. However this heat treatment also causes the block character to increase. Applicant submits that one having ordinary skill in the art using the conventional methods of Kato could not achieve both a high absorbance at 320 nm and block character of less than 0.4. In contract in the disclosed embodiment radical polymerization of vinyl eater monomers occurs under oxygen containing conditions. As a result a structure with consecutive double bonds in the main chain of the PVA can be formed and a high absorbance at 320 nm is achieved. However a PBA with a block character of 0.4 or less can be obtained by preventing the block character from rising excessively as seen with conventional heat treatment.
This argument is not found to be persuasive as just because a heat treatment results in an increase in block character does not mean that that it is incapable of having the claimed combination of the block character and the absorbance at 320 nm, and applicant has not provided sufficient evidence to indicate that the method of Kato is incapable of providing the combination of properties as is claimed. Kato teaches that a residual acetic acid group of the vinyl alcohol polymer A’ preferably have a block character of at least 0.35 (paragraph 0046). The polymer A’ is indicated to be formed by the invention of Kato that includes the heat treatment (paragraph 0039). This polymer A’ is indicated to have an absorbance at 320 nm of at least 0.1 and have an upper limit of 0.6 or lower (paragraph 0042). As such as is stated above Kato teaches that the heat treated polymer can have overlapping ranges with both of the claimed values. It should be noted that Kato specifically indicates that the block character of the non heat treated polymer can be from 0.3 to 0.6 (paragraph 0016) at that the difference in the clock character of the vinyl alcohol polymer B that has not been heat treated and the vinyl alcohol polymer that has been heat treated is at least 0.02 (paragraph 0017). This combination of properties would seem to indicate that the minimum block character of the heat treated polymer of 0.32 which is lower than even the preferred range of at least 0.35 previously indicated. This would indicate that the increase of the block character cause by heat treatment would not make it impossible to achieve the claimed block character. In particular Kato teaches example 8 from table 1-2 (paragraph 0116-0117), which starts with a block character of 0.390 and which end with a block character of 0.435 after heat treatment and which have absorbance at 320 nm of 0.277. This would indicate that even an increase of 0.45 of block character of the polymer is capable of producing polymers having an absorbance at 320 which is within the claimed range, even when using an non heat treated polymer that has a block character which is higher than that of the minimum preferred value of the heat treated block character indicated by Kato. One of ordinary skill in the art at the time of filling would recognize that starting with a lower block character which is within the range indicated possible by Kato would allow for the heat treatment to occur and give the claimed amount of absorbance at 320 nm while also maintain a lower block character indicated to be possible by the disclosure of Kato.
"The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain." In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)).
A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989). See also Upsher-Smith Labs. v. Pamlab, LLC, 412 F.3d 1319, 1323, 75 USPQ2d 1213, 1215 (Fed. Cir. 2005). See MPEP 2123.I.
Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). "A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use." In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994). See MPEP 2123.II.
Applicant comparative examples are not sufficient evidence to indicate that the method of Kato is not capable of providing the property ranges that it indicates in its disclosure or to indicate that a particular combination of properties is not possible to obtain by a particular method. That one or two examples are not capable of having a particular property or combination of properties is not sufficient evidence that a method can not produce a particular property especially when Kato indicate that the heat treated polymers can have overlapping ranges with the claimed ranges of each claimed property. It should be noted that the particular method indicated by applicant is not claimed in the claims as are currently drafted and so can not be considered to differentiate over the prior art of record. As such the rejection provided above is maintained.
Applicant argues with regard to the rejection over Oura in view of Shibuya that the combination of the 0.40 block character of Oura and the 0.4 absorbance of Shibuya would not have been obvious because in the examples of Oura the absorbance at 280 nm in increased by adding acetaldehyde to increase the number of carbonyl groups, but no heat treatment is performed. On the other hand in the examples of Shibuya an absorbance at 320 nm of 0.40 to 0.55 is achieved though a heat treatment at 145C. However as described above heat treatment increases the block character. For example in the examples of Kato heating increases the absorbance at 320 nm to 0.313 an d the heating also increased the block character from 0.39 to 0.523. Therefor if Oura was modified to obtain the 0.4 absorbance of Shibuya this would be done by applying heat treatment. However one skilled int eh art would have recognized that if such heat treatment was applied the block character would exceed 0.40. Further more the disclosures of Oura and Shibuya do not disclose or suggest a manufacturing method that involves radical polymerization of a monomer composition containing vinyl ester monomers under oxygen containing conditions as in the present application. Accordingly even if Oura was combined with Shibuya it would not have been obvious to arrive at the claimed embodiments.
This argument is not found to be persuasive as just because a heat treatment can increase the block character of a polymer does not mean that the block character must increase above 0.40. Kato which applicant appears to use as an indication that heat treatment would increase block character specifically indicates that heat treated vinyl alcohol polymer A’ preferably have a block character of at least 0.35 (paragraph 0046) which is an overlapping range with the claimed range. It should be noted that Kato specifically indicates that the block character of the non heat treated polymer can be from 0.3 to 0.6 (paragraph 0016) at that the difference in the clock character of the vinyl alcohol polymer B that has not been heat treated and the vinyl alcohol polymer that has been heat treated is at least 0.02 (paragraph 0017). This indicates that the change in block character can be small. Applicant has not provided evidence as to why the absorption property of Shibuya would make the block character of Oura impossible but has simply stated that it is so. Oura indicates that the block copolymer used as a dispersant preferably has a block character of 0.40 or less (paragraph 0014) which would indicate to one of ordinary skill in the art make the final product have the claimed block character even if process may increase the block character as this value is indicated to particularly affect the dispersing power of the polymer (paragraph 0015). Moreover Shibuya teaches that examples of methods used to provide the carbonyl group containing PVA include those such as an oxidation treatment with an oxidizing agent such as peroxide, and a method of blowing air during polymerization of vinyl acetate to obtain polyvinyl acetate and then saponifying the polyvinyl acetate to obtain a carbonyl group containing PVA based polymer (paragraph 0006). It should be noted that air is an oxygen containing gas and such the proposed method of Shibuya of blowing air during polymerization of vinyl acetate would correspond to the method of polymerization of a monomer composition containing vinyl ester monomers under oxygen containing conditions that applicant points to. It should also be noted that the claims as currently drafted do not contain method limitations or indicate the particular method steps indicated by applicants arguments and so can not be relied upon to distinguish over the prior art. Shibuya specifically indicate that PVA resins have tan absorbance of preferably 0.40 or more of absorances including that at 320 nm provides very useful dispersion stabilizers for suspension polymerization (paragprah 0014). One of ordinary skill in the art at the time of filling would be motivated to combine two properties that are both indicated to improve the dispersion stabilizer for suspension polymerization. As such given that Kato indicates that heat treated polymers need not have block characters outside the claimed range and that Oura indicates that the final polymer will have the indicated block character, and that Shibuya teaches different methods of providing the claimed absorbance value to the polymer beyond just heat treatment applicants argument is not found to be persuasive and the rejection provided above is maintained.
Conclusion
7. Claims 1-6 are rejected. No claims are currently allowable.
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 DAVID L MILLER whose telephone number is (571)270-1297. The examiner can normally be reached M-F 9:30-6:00.
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/DAVID L MILLER/ Examiner, Art Unit 1763