DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
The amendment of claims 1, 6 are supported by the specification.
Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The new grounds of rejection set forth below are necessitated by applicant's amendment filed on 1/5/2026. Thus, the following action is properly made final.
Claim Rejections - 35 USC § 103
Claims 1-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Komuro (US 2020/0172712, equivalent with WO2019083000).
Claim 1: Komura teaches a composition comprising an ethylene-vinyl alcohol copolymer, sodium acetate, stearic acid and zinc stearate (example 1). The amount of sodium acetate on a metal basis is 0.017% based on the total amount of EVOH, stearic acid, zinc stearate and sodium acetate, the amount of zinc stearate on a metal basis is 0.0015% based on the total amount of EVOH, stearic acid, zinc stearate and sodium acetate, and the amount of stearic acid is 0.5 wt% based on the total amount of stearic acid and zinc stearate. Detailed calculations for the following values are available upon request. All numbers in the following tables are given in weight percent.
EVOH
100
stearic acid
7.28x10-5 on carboxylate basis
7.28x10-5 on compound basis
zinc stearate
0.0015 on metal basis
0.013 on stearate basis
0.0145 on compound basis
sodium acetate
0.017 on metal basis
0.043 on acetate basis
0.06 on compound basis
Komura further teaches where a multilayer structure is to be produced for use as a food package by using the EVOH resin composition, it is preferred to blend a polyamide resin in the EVOH resin composition in order to prevent an EVOH layer from leaching from an edge of the package after hot water treatment of the package [0066]. The amount of polyamide is not greater than 30wt% based on the weight of EVOH [0064]. Therefore, the weight ratio of EVOH/polyamide is 100/0 to 77/23, please note that the amount of polyamide cannot be zero, the value zero in “100/0” should be interpreted as greater than 0.
EVOH
77
stearic acid
5.6x10-5 on carboxylate basis
5.6x10-5 on compound basis
zinc stearate
0.00115 on metal basis
0.01 on stearate basis
0.011 on compound basis
sodium acetate
0.013 on metal basis
0.033 on acetate basis
0.046 on compound basis
polyamide
23
When the amount of polyamide is 30wt% based on EVOH wight, the amount of each ingredient listed above is based on the total amount of EVOH, polyamide, stearic acid, zinc stearate and sodium acetate. Because the amount of polyamide is not greater than 30wt% based on the weight of EVOH, the amount of each ingredient is in the range of the value in the first table and the corresponding value in the second table.
Amount of zinc stearate on metal basis/amount of sodium acetate on acetate basis = 0.034.
Amount of zinc stearate on metal basis/amount of stearic acid on carboxylate basis = 20.6.
Komura does not teach the amount of zinc stearate on metal basis/amount of sodium acetate on acetate basis is 0.04-1.5.
However, case law holds that a prima facie case of obviousness exists where the claimed ranges and 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. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
Komura is silent with respect to the elongational viscosity of the composition. However, the teachings from Komura have rendered obvious the instantly claimed ingredients and amounts thereof. Therefore, it is reasonable that one of ordinary skill in the art would expect the claimed physical properties to naturally arise.
Claim 1: Alternatively, Komura teaches a composition comprising an ethylene-vinyl alcohol copolymer, sodium acetate, stearic acid and zinc stearate (example 1). The amount of sodium acetate on a metal basis is 0.017% based on the total amount of EVOH, stearic acid, zinc stearate and sodium acetate, the amount of zinc stearate on a metal basis is 0.0015% based on the total amount of EVOH, stearic acid, zinc stearate and sodium acetate, and the amount of stearic acid is 0.5 wt% based on the total amount of stearic acid and zinc stearate. Detailed calculations for the following values are available upon request. All numbers in the following tables are given in weight percent.
EVOH
100
stearic acid
7.28x10-5 on carboxylate basis
7.28x10-5 on compound basis
zinc stearate
0.0015 on metal basis
0.013 on stearate basis
0.0145 on compound basis
sodium acetate
0.017 on metal basis
0.043 on acetate basis
0.06 on compound basis
Komura further teaches where a multilayer structure is to be produced for use as a food package by using the EVOH resin composition, it is preferred to blend a polyamide resin in the EVOH resin composition in order to prevent an EVOH layer from leaching from an edge of the package after hot water treatment of the package [0066]. The amount of polyamide is not greater than 30wt% based on the weight of EVOH [0064]. Therefore, the weight ratio of EVOH/polyamide is 100/0 to 77/23, please note that the amount of polyamide cannot be zero, the value zero in “100/0” should be interpreted as greater than 0.
EVOH
77
stearic acid
5.6x10-5 on carboxylate basis
5.6x10-5 on compound basis
zinc stearate
0.00115 on metal basis
0.01 on stearate basis
0.011 on compound basis
sodium acetate
0.013 on metal basis
0.033 on acetate basis
0.046 on compound basis
polyamide
23
When the amount of polyamide is 30wt% based on EVOH wight, the amount of each ingredient listed above is based on the total amount of EVOH, polyamide, stearic acid, zinc stearate and sodium acetate. Because the amount of polyamide is not greater than 30wt% based on the weight of EVOH, the amount of each ingredient is in the range of the value in the first table and the corresponding value in the second table.
Amount of zinc stearate on metal basis/amount of sodium acetate on acetate basis = 0.034.
Amount of zinc stearate on metal basis/amount of stearic acid on carboxylate basis = 20.6.
Komura further teaches the amount of the aliphatic carboxylic acid metal salt (C), i.e. zinc stearate, is 0.0001-0.05wt% on a metal basis based on the total amount of EVOH, stearic acid, zinc stearate and sodium acetate [0048]. The amount of the alkali metal compound (D), sodium acetate, is 0.001-0.1wt% on a metal basis based on the total amount of EVOH, stearic acid, zinc stearate and sodium acetate [0056]. In the example, the amount of zinc stearate on a metal basis is 0.0015%, the amount of sodium acetate on the metal basis is 0.017 wt%, which results in the claimed ratio of 0.034. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to recognize that the full range of the ratio of amount of zinc stearate on metal basis/amount of sodium acetate on acetate basis would overlap the claimed range. Case law holds that 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).
Komura is silent with respect to the elongational viscosity of the composition. However, the teachings from Komura have rendered obvious the instantly claimed ingredients and amounts thereof. Therefore, it is reasonable that one of ordinary skill in the art would expect the claimed physical properties to naturally arise.
Claim 2: the amount of zinc stearate on metal basis is greater than 11.5ppm to 15ppm. When considering the full range of the amount of zinc stearate, the amount of zinc stearate on metal basis would overlap the claimed range.
Claim 3: the amount of stearic acid on carboxylate basis is greater than 0.56ppm to 0.728ppm.
Claim 4: the amount of sodium acetate on acetate basis is greater than 330ppm to 430 ppm. When considering the full range of the amount of sodium acetate, the amount of sodium acetate on acetate basis would overlap the claimed range.
Claims 5-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Komuro (US 2020/0172712) in view of Inoue et al (US 2019/0292359, equivalent with WO2018116765).
Claim 5: Komuro teaches the limitation of claim 1, as discussed above. Komuro teaches additional heat stabilizer can be used [0070].
Komuro does not teach a boron compound.
However, Inoue teaches EVOH compositions comprises a boron compound as a thermal stabilizer, in an amount of 10-200 ppm on a boron basis based on the weight of the resin composition [0011, 0026, 0110-0114]. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to include boric acid or its salt in the EVOH composition to further improve thermal stability.
Claim 6: amount of zinc stearate on metal basis/amount of boric acid on boron basis = 0.057-1.5, which overlaps the claimed range.
Response to Arguments
Applicant's arguments filed 1/5/2026 have been fully considered but they are not persuasive.
In response to applicant's argument that Komuro is insufficient to anticipate the claims because Komuro fails to disclose an actual example which includes a polyamide resin, it is not persuasive because MPEP does not require an actual example to anticipate the claims. MPEP states “To reject a claim as anticipated by a reference, the disclosure must teach every element required by the claim under its broadest reasonable interpretation.” In this case, Komuro expressly describes a species of a multilayer structure which teaches every element required by the claim. It is not a genus-species situation as stated by the applicant in the Remarks.
In response to applicant's argument regarding unexpected results, it is noted that 1) secondary consideration does not apply to 102 rejection, 2) unexpected results should be demonstrated by experimental data, 3) unexpected results should be compared to the closest prior art and be really unexpected, 4) unexpected results should be commensurate in scope with the scope of the claims.
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 extension fee 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 date of this final action.
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/WENWEN CAI/
Primary Examiner, Art Unit 1763