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
Applicant’s election without traverse of Group I, claims 1-6, in the reply filed on 12/09/2025 is acknowledged.
Claims 7-10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-6 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fukugami (JP 2008290406).
In the claims and abstract, Fukugami teaches a laminated film consisting of a water-soluble polymer (in particular PVA) and analyzed via XPS (¶’s 43-45 and Fig. 3).
The carbon-hydrocarbon group bond (C-OH) to carbon-carbon bond (C-C) ratio of the water-soluble polymer lies in the range of 0.35 to 0.77. Thus the abundance ratio of carbon-oxygen single bond (C-O) is in the range of 75 to 85%, i.e., 77%, and the (C-OH)/(C-C) ratio is correspondingly 0.23, wherein the C:O ratio in PVOH is of course 2:1.
Regarding claims 4 and 5, the post surface modification is not a feature of the claimed film.
Similarly, regarding claim 6, the present claims are to the film. Even if Fukugami do not expressly teach the film to be prepared by the process recited in claim 6, the product is the same as the presently claimed product absent evidence that the particular process of making results in a materially different product. Even though product-by-process claims are limited and defined by the process, determination of patentability is based on the product itself. The patentability of the product does not depend on its method of production. If the product in the product-by-process claim is the same as a product of the prior art, the claim is unpatentable even though the prior product be made by a different process. See In re Marosi, 218 USPQ 289 (Fed. Cir. 1983) and In re Thorpe, 227 USPQ 964 (Fed. Cir. 1985). See also MPEP § 2113.
Thus, the requirements for rejection under 35 U.S.C. 102(a)(1)/ (a)(1) are met.
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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