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 .
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.
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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.
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 7, 10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Fujihashi (JP2018141050; reference made to included English machine translation).
Fujihashi teaches barrier layers made with cellulose nanofibers. In Example 1 Fuijihashi teaches (in ¶[0091] Fuijihashi gives the solids content of each of these solutions as they are used as aqueous dispersions:
Amount
Compound
Actual amount
Water amount
20
PVA/EVA
2
18
1
crosslinker
0.4
0.6
0.6
CNF
0.03
0.57
0.03
dispersing agent
0.03
0
21.63
2.46
19.17
21.63
In Example 2 Fujihashi teaches the same composition but for 20 g of EVOH resin, therefore the amounts with EVOH version are the same.
In ¶[0034] Fujihashi teaches the resin (such as PVA or EVA – where A stands for alcohol not acetate) can be used in any ratio.
EVOH reads over the recited dispersant of Claim 7.
PVOH reads over the recited dispersoid as it is a resin made from a vinyl ester monomer and later saponified.
As above, Fujihashi teaches the resin may be used in alone or in combination in any ratio.
It would have been obvious to a person having ordinary skill in the art at the time the invention was filed to practice the invention of Fujihashi, in particular that of Example 1 and Example 2, by using a mixture of the exemplified EVOH and PVOH resins in any proportion because Fujihashi suggests this in ¶[0034]
These are aqueous emulsion as they have all the components claims and Fujihashi teaches emulsions in ¶[0022], ¶[0038].
The amount of CNF per EVOH, therefore, depends on the proportion of EVOH in the resulting mixture of PVOH and EVOH resin of the above modified aqueous dispersion / emulsion of Fujihashi.
At 2 g of EVOH resin based on the exemplified amount of the PVOH / EVOH resin this is 0.03 / 2 = x /100 solve for x = 1.5 parts of CNF per 100 parts of EVOH. At the other end of the range of mixed PVOH / EVOH, say 0.25g EVOH and 1.75g PVOH, the amount is 12 parts of CNF per 100 parts of EVOH. Therefore, there is a logical range of mixtures of PVOH/EVOH to be set up using the entire reasonably range of 2 g PVOH/0 g EVOH to 0g PVOH / 2g EVOH which gives a range of CNF with respect to the EVOH which overlaps or is in the claimed range of Claim 7.
Further, above, the any proportion of PVOH and EVOH in the mixture sets up an amount of EVOH+CNF with respect to 100 parts of PVOH. Using the same reasonably suggested limits above, (0.25g EVOH + 0.03g CNF)/1.75g PVOH = x / 100 = 16 parts of EVOH and CNF per 100 parts of PVOH. Conversely, (1.75g EVOH + 0.03g CNF)/ 0.25g PVOH = x/100 = 712 parts of EVOH + CNF per 100 of PVOH. This sets up an overlapping range of said limit which reads over the range of Claim 7.
With respect to Claim 10, the limitation is the proportion of EVOH, dispersoid (PVOH) and CNF in the solids of the aqueous dispersion and not to the total solids amount in the aqueous dispersion.
From the above table, 2 g PVOH / EVOH (synthetic resin in any ratio) and 0.03 g CNF are used. The weight of total solids is 2.46. Therefore, the amount of 2.03 / 2.46 * 100 = 82.5 mass percent of the EVOH + PVOH + CNF in the total solids of the aqueous dispersion which meets the limitation of Claim 10.
As above Fujihashi teaches PVOH which is derived from polyvinyl acetate, a vinyl ester monomer which reads over Claim 11.
Claims 1-5 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Fujihashi (JP2018141050; reference made to included English machine translation) in view of Kawagoe (EP3184693).
Fujihashi is applied to Claim 7 above under §103.
Fujihashi does not teach or suggest the amount of ethylene in the EVOH resins, viscosity average degree of polymerization nor the degree of saponification.
Kawagoe, working the field of EVOH dispersions for paper substrates, similar to Applicant and Fujihashi, teaches polyvinyl alcohol copolymerized with ethylene in an amount of 2 mol% to 10 mol % or less with amounts outside these limits impairing grease and water resistance or potentially making the EVOH copolymer insoluble in water leading to difficulty in coating the paper substrate. ¶[0019] Kawagoe also teaches the viscosity average degree of polymerization is 300 to 2000 for the EVOH resin grease resistance and coating suitability reasons. (¶[0021]). Finally, Kawagoe teaches the degree of saponification of 91-99.5 mol% for the EVOH resin prevents problems associated with a rapid increase in viscosity during storage and deposition of filamentous matter during coating. ¶[0022]
It would have been obvious to a person having ordinary skill in the art at the time the inventio was filed to practice the invention of Fujihashi with the mixture of PVOH / EVOH as discussed above by using an EVOH copolymer resin with 2 to 10 mol% of ethylene monomer, 300 to 2000 viscosity average molecular weight and 91 to 99.5 degree of saponification for the above identified advantage taught by Kawagoe for such an EVOH copolymer in aqueous coating compositions similar to Fujihashi.
This reads over Claim 1, Claim 9, Claim 2 and Claim 3.
Claim 4 is read over for the same reasons as Claim 7 above in Fujihashi alone.
The total amount of EVOH and CNF in the aqueous dispersion / emulsion using the analysis found in the rejection based on Fujihashi is in the range of (1.75 EVOH + 0.03 g CNF )/21.63 g total (water and solids) = ~ 8 wt% or less because the as the EVOH amount goes down the amount in of the total in wt% also goes down. This sets up an overlapping range of 8 wt% or less with respect to the claimed range, 0.1 to 30 wt%, of Claim 5.
Claims 1-6 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Fujihashi (JP2018141050; reference made to included English machine translation) in view of Tanida (WO2019203216; reference made to English version national stage publication US20210108111).
Applicant cannot rely upon the certified copy of the foreign priority application to overcome this rejection because a translation of said application has not been made of record in accordance with 37 CFR 1.55. When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216.
Note also there are multiple foreign priority documents for this application and the first one that includes all the subject matter of these claims is the document that determines the effective filing date of the application for these claims.
Fujihashi is applied to Claim 7 above under §103.
Fujihashi does not teach or suggest the amount of ethylene in the EVOH resins, viscosity average degree of polymerization nor the degree of saponification.
Tanida, working the field of EVOH dispersions for barrier films (Tanida ¶[0096]), similar to Applicant and Fujihashi, teaches EVOH made by a process which produces EVOH with the recited ethylene content, viscosity average degree of polymerization, degree of saponification and block character of Claims 1-6 that has excellent high speed coating and water resistant adhesiveness. (Abstract).
As Tanida teaches in ¶[0087]-¶[0099] other applications this EVOH copolymer may be used in including barrier films, which is the subject matter of Fujihashi, the above properties are reasonably suggested to be pertinent to one of ordinary skill in the art practicing Fujihashi’s barrier films.
It would have been obvious to a person having ordinary skill in the art at the time the inventio was filed to practice the invention of Fujihashi by using the EVOH made by the process of Tanida for the advantage of using a EVOH which has excellent high-speed coating and water-resistant adhesiveness as taught by Tanida.
This reads over Claim 1, Claim 9, Claim 2, Claim 3 and Claim 6.
Claim 4 is read over for the same reasons as Claim 7 above in Fujihashi alone.
The total amount of EVOH and CNF in the aqueous dispersion / emulsion using the analysis found in the rejection based on Fujihashi is in the range of (1.75 EVOH + 0.03 g CNF )/21.63 g total (water and solids) = ~ 8 wt% or less because the as the EVOH amount goes down the amount in of the total in wt% also goes down. This sets up an overlapping range of 8 wt% or less with respect to the claimed range, 0.1 to 30 wt%, of Claim 5.
Allowable Subject Matter
Claim 22 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 closest prior art is Fujihashi (JP2018141050) which teaches the composition as claimed but exemplifies using a crosslinker with PVOH / EVOH. In ¶[0037] Fujihashi teaches the resin of the invention may be self crosslinkable (i.e. no crosslinking agent) but fails to teach or suggest PVOH/EVOH resins are in this category. Therefore, one of ordinary skill in the art would only arrive at the claimed invention using Fujihashi without a crosslinking agent through the benefit of hindsight.
Applicant is reminded to double check the dependencies of the withdrawn claims for rejoinder if they take the above indicated allowable subject matter. For example, Claims 12 and 19 depend from Claim 1 as they have from initial filing but the broadest claim has moved to Claim 7 during prosecution.
Response to Arguments
Applicant’s claim amendments and remarks filed December 11, 2025 have been fully considered but are not sufficient to move the application to allowance. Applicant has placed a narrower range of previous recited Claim 8 into Claim 7. Fujihashi still reads over this narrower range. Therefore, the rejections of record have been modified to address Claim 8’s removal. This have been necessitated by Applicant’s amendment. Applicant’s amendments have overcome all claim objections and §112 rejections of record and those rejections are withdrawn.
Applicant’s remarks filed December 11, 2025 have been fully considered but are not persuasive.
Applicant argues that Fujihasi does not exemplify a mixture of PVOH and EVOH and also does not explicitly teach the ratios recited by Claim 7. These arguments are not persuasive. There is no requirement that Fujihasi must exemplify every possible combination of the elements taught in the four corners of Fujihasi. Additionally, the resulting compositions must have a ratio of PVOH, EVOH, cellulose nanofibers and any other components involved. The lack of specifically detailing these ratios or amounts does not render the same composition or obvious compositions patentably distinct from the recited composition that specifically recites these ratios. The components of compositions of Fujihasi have whatever ratios they have regardless of Fujihasi specifically teaching them or not.
Applicant’s arguments to unexpected results have been fully considered but are not persuasive. Applicant fails to consider the requirements for this argument to be persuasive.
In general as multiple §103s are made in this action, If Applicant intends to argue there is criticality which gives an unexpected result to the compositions in light of the teachings of the prior art, Applicant is reminded such arguments to unexpected results can only be properly considered when all the factors in MPEP §716.02 are properly taken into account. Overcoming a §103 rejection based on unexpected results requires the combination of three different elements: the results must fairly compare with the prior art, the claims must be commensurate in scope and the results must truly be unexpected. (See MPEP §716.02) Applicant’s showing of allegedly unexpected results must satisfy ALL of these requirements. Additionally, MPEP §716.01(b) states a “nexus” between the claimed invention and the evidence of secondary considerations, such as unexpected results, must be present. The burden rests with Applicant to establish results are unexpected and significant. (MPEP §716.02(b)).
The claims as recited are not commensurate in scope with any allegedly unexpected results. The claims are open to any dispersoid (C) and any EVOH copolymer (50 % ethylene monomer or 1 % ethylene monomer or 99 % ethylene monomer and degree of polymerization and any degree of saponification). Applicant’s as-filed examples are not considered probative of the entire scope claimed to form the necessary nexus between the claimed invention and the demonstration of allegedly unexpected results.
Applicant’s arguments to Fujihasi in view of Kawagoe and separately Tanida are not persuasive. Applicant argues these rejections do not include Claim 8 and are therefore moot. This argument is not persuasive. These rejections incorporate Claim 7 (see rejection) and additionally use more references to reject other claims that Fujihasi cannot reject on its own. Therefore, Claim 8 into Claim 7 is part of these rejections additionally. This line of argument tends to be only persuasive when the claims are numbered broadest to narrowest in numerical order. Applicant has changed said order in the claims and, therefore, this argument is not applicable and these rejections are maintained.
Conclusion
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 CHRISTOPHER M RODD whose telephone number is (571)270-1299. The examiner can normally be reached on 7 am - 3:30 pm (Pacific).
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/Christopher M Rodd/ Primary Examiner, Art Unit 1766