DETAILED ACTION
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 .
Election/Restrictions
Claims 5-7 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim Rejections - 35 USC § 102/103
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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.
Claim(s) 1-4 and 8-16 is/are rejected under 35 U.S.C. 102((a)(1)) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious Inoshita et al. (WO 2016190235).
In the claims, ¶ 25, and examples, Inoshita et al. teach a polyvinyl alcohol polymer incorporating 5-30 parts by mass of a plasticizer, exemplified by glycerin, wherein the surface temperature of the first drying roll is preferably 70°C-120°C (¶ 46), and, in example 1, describes discharging a film formation solution that is 100 parts by mass a PVA (average degree of polymerization 2,400, degree of saponification 99 .9 mol %) obtained by saponifying polyvinyl acetate, 12 parts by mass of glycerin, 0.1 parts by mass of lauric acid diethanolamide, and water and has a volatile fraction of 70 mass% in the form of a film from a T-type slit die at a discharge speed (S0) of 2.8 m/min onto a first drying roll (circumferential speed (S1) 17 m/min) of a film formation device that comprises a plurality of drying rolls that have parallel rotational axes and a heat treatment roll, drying on the first drying roll while 90°C hot air is blown over the entirety of a non-contact surface of the first drying roll at 5 m/sec, peeling from the first drying roll, further drying from a second drying roll to a final drying roll that is directly before the heat treatment roll such that a top surface and a back surface of an arbitrary portion of the film alternatingly face the drying rolls, peeling from the final drying roll, performing a heat treatment at the heat treatment roll at a surface temperature of 120°C, cutting either end part (ear parts), and winding around a cylindrical core to obtain the final PVA film (a single-layer film).
While Inoshita et al. do not expressly recite the Tm1/Tm2 relationships of the present formulas (1) and (2), Inoshita et al. describes the stock solution being "discharged in the form of a film from a T-type slit die at a discharge speed (S0) of 2.8 ml min onto a first drying roll (circumferential speed (S1) 17 m/min) of a film formation device that comprises a plurality of drying rolls that have parallel rotational axes and a heat treatment roll," giving (S1/S0) a value of 6.07 (17/2.8), and Inoshita et al. also describes performing a heat treatment after drying at a heat treatment roll that has a surface temperature of 120°C; wherein the first drying roll of Inoshita et al. corresponds to the support body (the metal roll) of the present invention.
In the present specification, it is stated that "it was confirmed that the thermophysical properties of the water-soluble film, including Tm1 and Tm2, could be adjusted by modifying at least one of the type of PVA, the type of plasticizer, the amount of plasticizer added, the surface temperature of the support body (the metal roll), the value of (S1/S0), and the addition of a heat treatment" (¶ 95), that (S1/S0) is preferably no more than 7 (¶ 61), and that performing a heat treatment at 60°C-135°C (¶ 65) controls the values of Tm1 and Tm2 to within the ranges of the invention of the present application.
Because the film of Inoshita et al. is produced by a method similar to the present application with respect to "the type of PVA, the type of plasticizer, the amount of plasticizer added, the surface temperature of the support body (the metal roll), the value of (S1/S0), and the addition of a heat treatment", which control the values of Tm1 and Tm2, it is reasonable that the film of Inoshita et al. would meet the Tm1 and Tm2 expressions (1) and (2) in the same ranges as the invention of the present application. The composition of Inoshita et al. is essentially the same as the claimed composition and the USPTO does not have at its disposal the tools or facilities deemed necessary to make physical determinations of the sort. In any event, an otherwise old composition is not patentable regardless of any new or unexpected properties. In re Fitzgerald et al, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP § 2112 - § 2112.02.
Regarding claims 2 and 3, because the film described in Inoshita et al. is essentially the same as the present film, the Tm2 and first heat of fusion of the film of Inoshita et al. would also be in the same ranges as the invention of the present application.
Even if assuming that the prior art references do not meet the requirements of 35 U.S.C. 102, it would still have been obvious to one of ordinary skill in the art, at the time the invention was made, to arrive at the same inventive composition because the disclosure of the inventive subject matter appears within the generic disclosure of the prior art.
Response to Arguments
Applicant's arguments filed 03/25/2026 have been fully considered but they are not persuasive.
Applicant argues that the PVA film in Inoshita et al. does not disclose the complete dissolution time is 150 seconds or less when immersed in deionized water at 10°C, however provides no actual data to show that. Regarding the argument that in the process of preparing the film of Inoshita et al., they don’t choose to dissolve their film in water at 30°C by at least the fourth stage stretching, the claims are not to the process of preparing the film. It is still reasonable that the film of Inoshita et al. would possess the presently claimed properties since the composition of the film in Inoshita et al. is essentially the same as the claimed composition, which would determine solubility. The USPTO does not have at its disposal the tools or facilities deemed necessary to make physical determinations of the sort. In any event, an otherwise old composition is not patentable regardless of any new or unexpected properties. In re Fitzgerald et al , 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP § 2112 - § 2112.02.
Even if assuming that the prior art references do not meet the requirements of 35 U.S.C. 102, it would still have been obvious to one of ordinary skill in the art, at the time the invention was made, to arrive at the same inventive film because the disclosure of the inventive subject matter appears within the generic disclosure of the prior art.
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 KELECHI CHIDI EGWIM whose telephone number is (571)272-1099. The examiner can normally be reached M-Th 9-7.
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/KELECHI C EGWIM/Primary Examiner, Art Unit 1762
KCE
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