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 .
Response to Arguments
In their response dated 2/5/2026 the applicants amended their claims to include plasticizer in the independent claim 1. Applicants also added new claims 8-15. New claims 8-12 each refer to different plasticizer that has been broadly disclosed by claims 3 and more narrowly in claim 4. New claims 13-15 fails to further limit the scope of the instant independent claim. Specifically, claims are directed to a water soluble film, and claims 13-14 contain limitations directed to a process, rendering claims as product by process claim. Consequently the process step carry no patentable weight.
In their response the applicants argued the SAXS properties, however, based on the arguments, the rejection was probably misinterpreted. Specifically , SAXS is not inherent property, which is true and we all agreed on that. However, just because the property is not inherent it does not mean it is not obvious. The examiner indicated that the SAXS property as originally filed was dependent on the composition. The claims as originally filed contained only one component to the composition which was polyvinyl alcohol. The polyvinyl alcohol of the prior art has the same structure as any polyvinyl alcohol and has saponification degree which is the same as the saponification degree of the PVOH of the instant invention. The conclusion was that if PVOH is the only component in the composition, it is therefore the only component that can contribute to the SAXS measurement. Since both PVOH of the prior art and that of the instant invention are the same the same properties are to be expected. Specifically because products of identical chemical composition cannot have mutually exclusive properties. This is the same for both rejections of record. Consequently the SAXS discussion in the rejection was not an inherency rejection but that based on obviousness which is result of the identical chemical structure.
Claims as amended disclose 5-70 parts of plasticizer.
Kitamura teaches right in the abstract, 20-50 pbw of plasticizer, which include ethylene glycol, diethylene glycol, propylene glycol which are also the same plasticizers as those disclosed in the instant invention. However, claim 1 is silent with respect to the type of the plasticizers, which for the purpose of claim 1 can be any plasticizer that is known for that field of endeavor. Consequently, once again applicants disclose exactly the same composition which comprises the same PBOV and the same plasticizer that is within the same amount as those of Kitamura. As such the examiner’s position remains the same, because there is nothing that would distinguish applicant’s composition from that of Kitamura.
Mori still discloses basically the same composition and Kitamura. Mori discloses PVOH modified in the same manner as the PVOH and discloses use of plasticizers in amount of 20 pbw or less with 5-20 pbw overlapping with range of claims and 2. The same arguments apply as to Kitamura for claim 1. Mori however is silent with respect to the plasticizers used.
Isozaki also discloses PVOH composition with 5-30 pbw of plasticizer and wherein PVOH also has the same saponification content. The plasticizers for purpose of claim 1 can be anything, but for purpose of claims 3 and 4 as well as new claims include ethylene glycol, diethylene glycol, propylene glycol, glycerin and diglycerin. These are exactly the same plasticizers as those required by instant claims 3, 4 and newly added claims 8-12. Consequently the same logic is applied to the teachings of Isozaki, because there is nothing that distinguishes applicants invention from what is disclosed in the prior art. This is because the same ingredients (PVOH and plasticizer) utilized in the same amount are viewed as the components which contribute to SAXS measurement.
With respect to the Double Patenting rejections, such will be restated because the dependent claims of these patents also disclose plasticizer which applicants claim in instant invention.
Enablement rejection is hereby withdrawn.
Consequently all rejections will be restated to reflect the amendments.
Specification
The disclosure is objected to because of the following informalities: Page 12 of the specification recites following:
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Specifically, it appears that in line 10 recitation “It is and is” is a typo and should be deleted.
Appropriate correction is required.
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.
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.
Claims 1-7, 8, 11, 12 and 13-15 are rejected under 35 U.S.C. 103 as being unpatentable over Kitamura (US 2004/0092635).
With respect to claims 1 and 2, Kitamura discloses water soluble film made from PVOH. PVOH has saponification degree between 80-99.9% (Abstract).
PVOH of Kitamura is modified with carboxylic group containing monomers [0029]. Modifying monomers include monomethyl maleate (examples) by introducing either maleic acid or maleic anhydride [claim 4]. The PVOH and also be modified with ionic group wherein content of modification is 2-6 mole %. Specific monomer is AMPS [0030].
Second component of the teachings of Kitamura is plasticizer, which is utilized in amount of 20-50 pbw (Abstract) which encompasses claimed range in instant claims 1 and 2.
Since Kitamura also teaches PVOH having the saponification degree that overlaps with the saponification of the instantly claimed PVOH. Since PVOH of Kitamura is also modified with the same monomers and modification degree is 2-6 mole %, then the same packing and therefore SAXS result is expected in the teachings of Kitamura. While intensity of the peak is not inherent, it will be obvious because the same polymer is utilized with the same degree of saponification, modified with the same monomers and the content of the substitution is also within the same range. As such, the intensity of the peak and ratio when tested in 2:8 water : methanol mixture will also encompass claimed ratio.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount (eg. add citation). Therefore, the claimed effects and physical properties, i.e. (intensity ratio as obtained using SAXS) would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
With respect to claims 3, 4, 8, 11 and 12, Kitamura teaches use of plasticizers. Plasticizers include polyhydric alcohols such as diethylene glycol, PEG, propylene glycol, glycerol and the like [0036]
With respect to claims 5-7, Kitamura discloses using composition in packaging [0057] of liquid detergents [0058], chemicals [0059].
With respect to claims 13-14, Kitamura discloses a film made from the composition of claim 1. The limitation directed to the process do not carry patentable weight because instant invention is directed to a film.
Claims 1-2, 5-7, 13-15 are rejected under 35 U.S.C. 103 as being unpatentable over Mori (US 9,908,957).
With respect to claims 1 and 2, Mori teaches a water-soluble film comprising a polyvinyl alcohol resin (See Title and Abstract) having a degree of polymerization of 200 to 5000 (col. 6, lines 44-45) and saponification degree of 50 to 99.9 mol% (col. 6, lines 59-61), wherein a complete dissolution time of the water-soluble film is 20 seconds or less (col. 14, lines 33-45 and Table 2)
PVOH of Mori is modified with the same monomer as the PVOH of the instant invention (see Table 2) which also has the same modification content as the instantly claimed PVOH. The degree of polymerization in the examples is also the same (1700).
Second component of the disclosure by Mori is plasticizer utilized in amount of 20 % by mass or less (Col. 10, l. 8)
Absent evidence to the contrary, the polyvinyl alcohol film of Mori et al. is identical to the presently claimed polyvinyl alcohol film, therefore, it is reasonable to expect that the polyvinyl alcohol film of Mori would necessarily inherently have the same peak intensities when utilizing SAXS.
Although the prior art fails to teach the claimed properties of the water-soluble PVA film, it is axiomatic that one who performs the steps of a combining the two must necessarily produce all of its advantages. The discovery of a new property or use of a previously known composition, even if unobvious from the prior art, cannot impart patentability to claims to a known composition. In re Spada 15 USPQ 2d 1655 (CAFC 1990). "The absence of a disclosure relating to function does not defeat a finding of anticipation.” It is well settled that the recitation of a new intended use for an old product does not make a claim to that old product". In re Schreiber, 128 F.3d 1478, 1477, 44 USPQ2d 1429, 1431(Fed Cir 1997).
With respect to claims 5-7, Mori discloses use of the PVOH film in making chemical packaging such as detergents (claim 6) which are liquid (col. 11, l. 4).
With respect to claims 13-14, Mori discloses a film made from the composition of claim 1. The limitation directed to the process do not carry patentable weight because instant invention is directed to a film.
Claims 1-15 are rejected under 35 U.S.C. 103 as being unpatentable over Isozaki (JP 2001-329130).
With respect to claims 1 and 2, Isozaki discloses water soluble film comprising polyvinyl alcohol (solution). PVOH may contain preferably less than 5% of other monomers which includes PVOH without having any modification at all [0008]. Such PVOH is also encompassed by the instant claim 1.
Second component of Isozaki composition is plasticizer, in an amount of 5-30pbw.
PVOH of Isozaki has a degree of saponification in a range of 82-92% which is also exemplified in the instant invention (88%). Since PVOH is the only component required the properties will inherently be present. See also Example 1, which is the same as examples of the instant invention. The degree of polymerization of 1700 with PVOH having saponification degree of 88%.
Absent evidence to the contrary, the polyvinyl alcohol film of Mori et al. is identical to the presently claimed polyvinyl alcohol film, therefore, it is reasonable to expect that the polyvinyl alcohol film of Mori would necessarily inherently have the same peak intensities when utilizing SAXS.
Although the prior art fails to teach the claimed properties of the water-soluble PVA film, it is axiomatic that one who performs the steps of a combining the two must necessarily produce all of its advantages. The discovery of a new property or use of a previously known composition, even if unobvious from the prior art, cannot impart patentability to claims to a known composition. In re Spada 15 USPQ 2d 1655 (CAFC 1990). "The absence of a disclosure relating to function does not defeat a finding of anticipation.” It is well settled that the recitation of a new intended use for an old product does not make a claim to that old product". In re Schreiber, 128 F.3d 1478, 1477, 44 USPQ2d 1429, 1431(Fed Cir 1997).
With respect to claim 2-4 and 8-12, Isozaki teaches use of plasticizers in amount of 5-30 % by mass (solution section). Plasticizers include glycerin, diglycerin, diethylene glycol, propylene glycol and PEG and the like [0017]
With respect to claims 5-7, Isozaki teaches discloses that the water soluble PVOH film can be utilized in packaging for drugs, dyes and detergents [0049], wherein at least detergents can be either solid or liquid.
With respect to claims 13-14, Isozaki discloses a film made from the composition of claim 1. The limitation directed to the process do not carry patentable weight because instant invention is directed to a film.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 6-11, 17-19 of U.S. Patent No. 12,071,524 (‘524) or US 12,049,546 to Okamoto. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Instant invention is directed to water soluble PVOH film that can be utilized to make packaging for liquid detergents and chemicals (Claims 17-19 of ‘524).
Instant claim 1 also discloses property that is not explicitly taught by ‘524, however the property is deemed obvious for following reasons:
First it should be noted that MPEP emphasizes the significant role of the specification in defining and clarifying terms, effectively treating it as primary “dictionary “ for interpreting claims.
In instant case claims are so broad that specification has to be consulted to learn the actual meaning of the term “polyvinyl alcohol based resin” as it was mentioned earlier, the scope is very broad as it includes any PVOH (including its copolymers), various saponification degrees and various types of modification.
As such PVOH in both disclosures have saponification degree within the same range, are modified with the same type of monomers and the extent of modification is within the same range.
Consequently, since compounds and their properties are mutually exclusive the PVOH with the same saponification degree, same modification and the same extent of the modification will meet the claimed invention.
With respect to the plasticizer as an additive, patented ‘524 invention while silent on this matter utilizes term “comprising” thereby enabling use of various additives. Term additive is also defined in the specification of ‘524 and it includes the same plasticizers are claimed. Please note that specification can be utilized as a dictionary to learn any term that may satisfy the term “additive” under purview of term “comprising.
With respect to plasticizer as an additive ‘546 reference discloses use of plasticizer in 5-15 parts which meets instant claims 1 and 2. Claim 6 of ‘546 recites that plasticizer includes glycerin which meets instant claims 3, 4, 9 and 10
Claim 1-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-6 of U.S. Patent No. 12,344,718 or US 12,371,540 or US 12,291,613 or US 12,286,514 or US 12,275,827 to Okamoto. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Okamoto teaches water soluble PVOH film
The PVOH film is defined so broadly in both invention that as per MPEP, specification is used to determine what applicants actually mean by PVOH based resin.
Okamoto teaches PVOH in claim 17 that PVOH has degree of saponification of 60-99.9%. Okamoto further teaches that the PVOH can be modified with maleic acid monomethyl ether which is taught by instant invention. Okamoto also utilizes plasticizers.
PVOH of Okamoto is modified with the same monomer as the PVOH of the instant invention (see Table 2) which also has the same modification content as the instantly claimed PVOH. The degree of polymerization in the examples is also the same (1700).
Absent evidence to the contrary, the polyvinyl alcohol film of Mori et al. is identical to the presently claimed polyvinyl alcohol film, therefore, it is reasonable to expect that the polyvinyl alcohol film of Mori would necessarily inherently have the same peak intensities when utilizing SAXS.
Although the prior art fails to teach the claimed properties of the water-soluble PVA film, it is axiomatic that one who performs the steps of a combining the two must necessarily produce all of its advantages. The discovery of a new property or use of a previously known composition, even if unobvious from the prior art, cannot impart patentability to claims to a known composition. In re Spada 15 USPQ 2d 1655 (CAFC 1990). "The absence of a disclosure relating to function does not defeat a finding of anticipation.” It is well settled that the recitation of a new intended use for an old product does not make a claim to that old product". In re Schreiber, 128 F.3d 1478, 1477, 44 USPQ2d 1429, 1431(Fed Cir 1997).
Claim 7 of ‘718 patent discloses plasticizer in amount of 10-70 pbw wherein specification can be utilized to learn the meaning of the plasticizer. The plasticizers of ‘718 are the same as those of the instant invention.
Claim 16 of ‘540discloses use of plasticizer in amount of up to 40 pbw. One of the plasticizers is glycerine.
Claim 4 of ‘613 discloses use of plasticizers in amount of 8-35 pbw, the specification can be used as a dictionary to learn the meaning of the term plasticizers, which definition includes all plasticizers in the instantly claimed invention.
Claim 13 of ‘514 patent discloses use of glycerin which meets the limitation of the plasticizer. Specification when consulted with respect to the details concerning the plasticizer, encompasses instant claims.
Claim 16 of ‘817 patent discloses use of glycerin, which is a plasticizer. Instant specification when consulted with respect to the details concerning plasticizers encompasses instant claims.
Each of the references utilized in Double Patenting is directed to water-soluble PVOH film and each patented invention discloses different properties. Each patented invention discloses the same PVOH with respect to the degree of saponification, the type of monomers utilized to modify the PVOH, the amount of modification in a range of 2-6 mol%. Each discloses plasticizer. Claiming new properties in an otherwise known and patented invention does not render the new invention patentable. The composition is still the same. The examiner requests an interview to discuss this office action in greater detail.
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATARZYNA I KOLB whose telephone number is (571)272-1127. The examiner can normally be reached M-F.
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/KATARZYNA I KOLB/Primary Examiner, Art Unit 1767
March 11, 2026