DETAILED ACTION
This Office Action is in response to the Amendment filed on 6/08/2026.
Claim(s) 9-14 have been added.
Claim(s) 1-14 , are now pending in the application.
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.
Claims 1-13 are rejected under 35 U.S.C. 103 as being unpatentable over JP2002069255 to Shuichi et al. (as found on the IDS dated 6/14/2024) in view of JP2015034262 to Yoko et al. (as found on the IDS dated 11/28/2022). For the purposes of examination, citations for Shuichi and Yoko are taken from a machine translation equivalent of the document.
Regarding Claim 1 and 2, Shuichi teaches a resin composition [title] comprising a saponified ethylene-vinyl ester copolymer saponified material having an ethylene content of 1-15 mole% [abstract] (corresponding to (A)), and an inorganic layer structure compound [abstract] (corresponding to (B))
Shuichi does not particularly teach a modified vinyl alcohol-based polymer (A) that contains from 1 to 20 mol% of a structural units represented by instant formula (1).
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However, Yoko teaches a modified vinyl alcohol based polymer [Yoko, title] containing 0.1-30 mol% of the following formula [abstract, Yoko] (thereby reading on 1-20 mol% of formula (1)):
wherein the content of ethylene in the modified vinyl alcohol based polymer is 1-15 mol% [abstract, Yoko] reading on 1-20 mol% ethylene unit of claim 2.
Shuichi and Yoko are analogous art as they are from the same field of endeavor, namely compositions comprising modified ethylene vinyl copolymers.
Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to substitute Yoko’s copolymer with Shuichi’s modified vinyl alcohol-based polymer, thereby arriving at the claimed invention.
The motivation to modify Shuichi with Yoko is that the modified polyvinyl alcohol (PVA) unit of formula (1) can reduce the crystallinity of the modified PVA, thereby improving the handling properties such as water solubility and improving the thermoforming properties at low temperatures [Yoko, 0023].
Regarding Claims 3 and 9, Shuichi in view of Yoko teach the resin composition of claim 1, wherein the ratio of the modified copolymer to the inorganic layered compound is more preferably 1.0 or more [Shuichi ,0027] (i.e., A/B of 1.0 or more ratio of instant claims) therefore it is reasonably calculated the B/A ratio is 1.0 or less, thus reading on a B/A ratio of 0.1/100 to 100/100 of claim 3 and a B/A ratio of 3/100 to 100/100 of claim 9.
Regarding Claim 4, Shuichi in view of Yoko teach the resin composition of claim 1, wherein the swelling inorganic compound is most suitably swellable fluoromica [Shuichi, 0015] i.e., swelling mica.
Regarding Claim 5, Shuichi in view of Yoko teach the resin composition of claim 1, wherein the water vapor transmission rate of inventive examples are less than 25 g*30 µm/m2*day or less [Shuichi, machine translation of table 1 shown below]
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Regarding Claim 6, 7 and 8, Shuichi in view of Yoko teach the resin composition of claim 1, wherein the components are dissolved in water [Shuichi, 0031] and made into a film (i.e., coating) that is preferably to use as a laminated film with another substrate [Shuichi, 0032] i.e., multilayered structure.
Regarding Claims 10-13, Shuichi in view of Yoko teach the resin composition of claim 1, wherein Shuichi teaches the degree of polymerization is preferably from 200-2,400 [Shuichi, 0023] and Yoko teaches the viscosity average degree of polymerization of the modified PVA is preferably 200-5,000 to achieve thermoformability [Yoko, 0013] Thereby reasonably reading on the degree of polymerization ranges of 200-950, 300-800, 300-2000, and 760 to 1350 of claims 10, 11, 12, and 13 respectively.
Though the prior art range is not identical to the claimed ranges of claim 10 (200 to 950), claim 11 (300 to 800), claim 12 (300 to 2000) and claim 13 (760 to 1350), it does overlap. It has been held that, 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 USPG 90 (CCPA 1976) (MPEP 2144.05)
Regarding Claims 1 and 14, Shuichi teaches a resin composition [title] comprising 20-99 by weight of a saponified ethylene-vinyl ester copolymer (B) [Shuichi, 0026] (corresponding to (A)) and 0.5-40% by weight of an inorganic layered compound (C) [Shuichi, 0026] (corresponding to (B) and reading on the total amount of modified alcohol-based polymer (A) and layered inorganic compound (B) is 90 mass% or more of claim 14).
Shuichi does not particularly teach a modified vinyl alcohol-based polymer (A) that contains from 1 to 20 mol% of a structural units represented by instant formula (1).
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However, Yoko teaches a modified vinyl alcohol based polymer [Yoko, title] containing 0.1-30 mol% of the following formula [abstract, Yoko] (thereby reading on 1-20 mol% of formula (1)):
Shuichi and Yoko are analogous art as they are from the same field of endeavor, namely compositions comprising modified ethylene vinyl copolymers.
Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to substitute Yoko’s copolymer with Shuichi’s modified vinyl alcohol-based polymer, thereby arriving at the claimed invention.
The motivation to modify Shuichi with Yoko is that the modified polyvinyl alcohol (PVA) unit of formula (1) can reduce the crystallinity of the modified PVA, thereby improving the handling properties such as water solubility and improving the thermoforming properties at low temperatures [Yoko, 0023] without causing the crystallinity of the modified PVA to be too low [Yoko, 0024].
Response to Arguments
Applicant's arguments filed 6/8/2026 have been fully considered but they are not persuasive.
Applicant states that there is no motivation to modify or combine Shuichi and Yoko, as the proposed combination of Shuichi and Yoko to achieve the claimed resin composition is improper because it renders Shuichi’s resin composition unsatisfactory for its intended purpose. Applicant states this is evidenced by Shuichi’s disclosure which explicitly teaches that the presence of certain functional groups inhibits crystallization and therefore reduced barrier properties [Shuichi, 0020].
In response, it is noted [0020] of Shuichi explicitly teaches that the copolymer may be modified (i.e., modification of these functional groups is allowed) and further states these functional groups should be kept to 2 mol% or less in order to avoid inhibiting the crystallization of the saponified copolymer and reducing the barrier properties. Moreover, the functional groups in this citation are carboxyl groups, sulfonic acid groups, amino groups, or ammonium groups [Shuichi, 0020] which do not correspond to the proposed addition of dihydroxyl groups as set forth in the rejection of claim 1.
Furthermore, Yoko states that the modified vinyl alcohol polymer has crystallinity and oxygen gas barrier properties [Yoko, 0002] that can be used as a barrier film and a barrier coating [Yoko, 0069] and only when the modified PVA has unit (1) (corresponding to instantly claimed formula (1)) in an amount that exceeds 30 mol% is there a reduction of crystallinity that will be too low, affecting properties such as water resistance [Yoko, 0024]. Therefore not only does Shuichi explicitly allow other modifications as set forth above in (a), Yoko further reinforces that this modification does not deteriorate properties when in an amount of less than 30 mol% which encompasses the entire range of 1-20 mol% of formula (1) as set forth in instant claim 1.
Applicant states Shuichi and Yoko fails to teach or suggest newly added claims 9-14.
Attention is drawn to the new rejections of claims 9-14 as set forth above that are rejected by Shichi in view of Yoko.
For these reasons, Applicant's arguments are not persuasive.
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 DEVIN MITCHELL DARLING whose telephone number is (703)756-5411. The examiner can normally be reached Monday - Friday 7:30am - 5:00pm.
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/DEVIN MITCHELL DARLING/Examiner, Art Unit 1764
/ARRIE L REUTHER/Supervisory Primary Examiner, Art Unit 1764
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