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 .
Response to Arguments
From the non-final Office Action dated 14 August 2025:
Claims 1 – 5 were originally rejected under 35 U.S.C. § 103 as being obvious over Kawai et al. (US 2017/0183426 A1) in view of Nakaya (US 2020/0207052 A1).
In response to the non-final Office Action dated 14 August 2025, Applicant has amended the independent base claim 1 and add new claim 6, wherein claim 6 further limits the amount of the structural unit containing the side-chain primary hydroxyl group as detailed in the independent base claim 1. Support for the amendments has been found in the Specification (p. 21, [0058]). No new matter has been identified.
Applicant notes an error on behalf of the examiner, wherein the wrong item was marked, indicating none of the foreign priority documents have been received. This has been corrected.
The arguments provided by applicant have been thoroughly reviewed & fully considered, but are ultimately found unpersuasive in view of the amended claims.
Applicant points to Table 2 in the instant specification, stating that when the claimed ranges of the ethylene content and the proportion of the side-chain primary hydroxyl group-containing structural unit are satisfied, the biodegradability is relatively high, and when the side-chain primary hydroxyl group-containing structural unit is absent, or the ethylene content is outside the claimed range, the biodegradability is relatively poor (Remarks, p. 5, bottom paragraph).
Applicants can rebut a prima facie case of obviousness by showing the criticality of the range, generally by showing that the claimed range achieves unexpected results relative to the prior art range. See MPEP § 2144.05(III)(A). To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. See MPEP § 716.02(d)(II). Additionally, whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support. In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. See MPEP § 716.02(d).
Data in Table 2 shows the ethylene structural unit and the structural unit containing the side-chain primary hydroxyl group were present in amounts of 2-15.7 mol.% and 3.2-5.3 mol.% (Specification, Table 2, [0105]). Although the range of the ethylene structural unit appears to be fairly commensurate with the scope of the independent base claim 1, the range of the structural unit containing the side-chain primary hydroxyl group is present in amounts covering less than half of the range as require by the independent base claim 1. Thus, the data is not reasonably commensurate in scope with the claims, and is therefore not sufficient to establish non-obviousness of the claimed invention nor criticality of the claimed range.
Applicant points to Kawai (p. 5, [0062]), Kawai’s disclosure that the EVOH component (A) may comprise a structural unit derived from a monomer other than ethylene and vinyl ester, wherein the structural unit is preferably 0.0002 mol % or greater and 0.2 mol % or less. Applicant states someone skilled in the art would not have thought to modify Kawai to require that the EVOH (A) comprises any amount greater than 0.2 mol% of an 'other structural unit', such as the 1.0 mol % to 5.0 mol % of the primary hydroxyl group preferred by Nakaya (Remarks, p. 6, top three paragraphs).
Applicant states Kawai clearly differentiates the EVOH (A) from the EVOH (F) and that one skilled in the art would have no reason to add a side-chain primary hydroxyl group to EVOH (A) (Remarks, p. 6, bottom two paragraphs).
Examiner points to Kawai’s disclosure (p. 5, [0062]) which indicates that the invention is open to inclusion of comonomers. The amount indicated in the Applicant’s arguments is only a statement of preference that does not constitute a teaching away. Additionally, the motivation provided by the secondary reference would lead one of ordinary skill in the art to explore amounts of hydroxyl group-containing monomers above Kawai’s preferred range. Further, Kawai neither teaches toward nor away from inclusion of side-chain hydroxyl groups in EVOH (A). Kawai does not criticize, discredit, or otherwise discourage the inclusion of such groups in EVOH (A), and the secondary reference provides sufficient motivation to include such groups in EVOH (A). Preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. See MPEP § 2123 (preferred embodiments); MPEP § 2144.05(III)(B) and § 2145(X)(D) (teaching away).
Applicant continues, stating the claimed embodiments yield unexpected results that cannot be derived from Kawai and Nakaya. Applicant maintains when the proportion of the ethylene structural unit in the EVOH resin is set within the specific range and the specific proportion of the structural unit having the side-chain primary hydroxy group is introduced into the EVOH resin, the resultant modified EVOH resin has excellent biodegradability (Remarks, p. 7, top paragraph).
Whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support. In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. See MPEP § 716.02(d).
The examples presented in the specification are not reasonably commensurate in scope with the claims, as discussed above, and therefore cannot be relied upon to establish non-obviousness.
Applicant states the claimed embodiments solve technical problems not identified by the prior art (Remarks, p. 7, bottom paragraph), reiterating the disclosures within paragraph [0062] of Kawai. Applicant likens an embodiment of the disclosures in paragraph [0062] to Comparative Example 6 and highlights inferior results of said example (Remarks, p. 8, top paragraph).
In response to applicant's argument that the claimed invention solves technical problems which were not contemplated by the prior art, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Applicant emphasizes that Nakaya teaches the modified EVOH resin (a) has an ethylene content of ~18 mol.% - ~50 mol.% and likens such an embodiment to Comparative Examples 1 & 3 (Remarks, p. 8, bottom 2 paragraphs)
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
This rejection is FINAL.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1 – 6 are rejected under 35. U.S.C. § 103 as being obvious over Kawai et al. (US 2017/0183426 A1) in view of Nakaya (US 2020/0207052 A1).
Regarding claims 1 & 6, Kawai teaches a resin composition comprising an ethylene- vinyl alcohol (EVOH) as well as well as embodiments thereof, including a film, a multilayer structure and a fuel container (p. 1, [0001]). An embodiment of the invention is EVOH copolymer (A) obtained by saponifying a copolymer of ethylene and a vinyl ester (p. 5, [0058]). The ethylene content of EVOH (A) is preferably present in amounts of 10 mol.% - 40 mol.% (p. 5, [0060]). Kawai does not teach the primary hydroxyl group as claimed in claim 1.
In the same field of endeavor, Nakaya teaches a barrier polymer composition comprising a modified ethylene-vinyl alcohol copolymer (Abstract) which may be formed into a multilayer article suitable for use as a fuel container.
The ethylene content of barrier polymer (modified EVOH) is taught as to be from about 18 mol.% to about 50 mol.% (p. 3, [0050]). Nakaya teaches the primary hydroxyl group being part of the modified EVOH resin, preferably being present in amounts of about 1.0 mol.% to about 5.0 mol.% (p. 4, [0061]). Nakaya expressly states the modified EVOH resin (A) having a primary hydroxyl group within these limits results in a decrease in melt temperature without sacrificing any gas barrier properties.
It would have been obvious to one of ordinary skill in the art at the time of filing to modify the EVOH taught by Kawai to further comprise a primary hydroxyl group as taught by Nakaya, as Nakaya expressly discloses the benefits of a similar composition comprising said primary hydroxyl group. This is further supported by the similarity of the compositions in that the ethylene content taught by Nakaya overlaps with over half of the ethylene content taught by Kawai. A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
Modification of Kawai in view of Nakaya as detailed above results in a modified EVOH resin comprising an ethylene content of 10 mol.% - 40 mol.% and a primary hydroxyl group content of 1 mol.% - 5 mol.%, reading on the limitations established by the instant claim 1.
Regarding claim 2, maintaining the modification of Kawai in view of Nakaya previously detailed, Kawai demonstrates several exemplary embodiments of the invention (p. 30, Table 1), all of which have a saponification degree of 99 mol.%. Kawai expressly discloses insufficient thermal stability results if the degree of saponification is less than the lower limit of 98.9 mol.% (p. 5, [0063]). A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05.
Regarding claim 3, maintaining the modification of Kawai in view of Nakaya previously detailed, Kawai teaches the preference of the resin composition containing EVOH (A) as well as an alkali metal salt (B1) which is preferably present in amounts of 1 ppm to 1,000 ppm (p. 3, [0035]). A preferable alkali metal salt suitable for use as (B1) is sodium acetate (p. 9, [0123]). The upper limit of 1,000 ppm converts to 0.1 mass %, reading on the limitation of less than 0.7 mass %.
In the alternative, the component (B1) is not explicitly required for the invention as Kawai expresses component (B1) mainly inhibits coloring & improves appearance characteristics (p. 3, [0035]). An embodiment (p. 44, claim 4) of this invention without component (B1) (i.e., sodium acetate) still reads on the instant limitation of less than 0.7 mass %. A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
Regarding claim 4, maintaining the modification of Kawai in view of Nakaya previously detailed, said modification results in a modified EVOH resin substantially identical to that which is claimed, reading on the limitations established by all claims of the instant application. Chemical compositions and their properties are inseparable. Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP § 2112.01
Regarding claim 5, maintaining the modification of Kawai in view of Nakaya previously detailed, Kawai teaches the EVOH resin may be formed into a film or a multilayered structure (p. 44, claims 13 & 15).
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 CHRISTIAAN ROELOFSE whose telephone number is (571)272-2825. The examiner can normally be reached Monday-Friday 8:00-4:00 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones can be reached at (571)270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTIAAN ROELOFSE/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762