DETAILED ACTION
This office action follows a response filed on September 29, 2025. Claims 1, 4, 9, and 10 were amended. Claims 2, 5, 6, and 8 were canceled and new claims 11 and 12 were added. Claims 1, 3, 4, 7, and 9-12 are pending.
Claim Rejections - 35 USC § 102 / 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, 7, 9, 10, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Inoue et al. (JP 2013-227530).
Inoue et al. teaches a composition comprising a sea phase of a polyvinyl alcohol-based resin (A) having a saponification degree of 95 mole % or more and an island phase containing a polyvinyl alcohol-based resin (B) having a saponification degree of 70 to 90 mole % and a polyhydric alcohol compound (C). The polyvinyl alcohol-based resin (A) having a saponification degree of 95 mole % or more has a 1,2-diol structural unit shown below. See paragraph [0017] to [0022].
PNG
media_image1.png
178
314
media_image1.png
Greyscale
The polyhydric alcohol compound (C) is ethylene glycol, diethylene glycol, butanediol, glycerin, pentaerythritol or polyethylene glycol (PEG); paragraph [0048]. While reference example shows use of polyethylene glycol as the polyhydric compound (C), one of ordinary skill in the art would have found it obvious to make a similar composition using pentaerythritol in lieu of polyethylene glycol, and the person of ordinary skill in the art would have expected such an embodiment to work with a reasonable expectation of success. This embodiment is obvious because inventors specifically teach use of pentaerythritol is a suitable polyhydric compound for practicing the invention. Moreover, the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp. 325 U.S. 327, 65 USPQ 297 (1945).
Claims 3 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Inoue et al. (JP 2013-227530) in view of Cattaneo (US 4,469,837).
Inoue et al. does not disclose the source of pentaerythritol. Cattaneo teaches that technical grade pentaerythritol contains about 5 wt % of dipentaerythritol as an impurity (col. 3, lines 1-3, col. 4, line 67). One of ordinary skill in the art practicing the invention of Inoue et al., would have found it obvious to use the technical grade pentaerythritol disclosed in Cattaneo. That is, the skilled artisan would have found it obvious to make a similar composition comprising 80 wt % of polyvinyl alcohol-based resin (A) containing a 1,2-diol structural unit, and 20 wt % of a mixture containing 70 mass % of polyvinyl alcohol-based resin (B) and 30 mass % of pentaerythritol (also containing dipentaerythritol). The total quantity of pentaerythritol and dipentaerythritol would be 6 wt % based on the weight of all components in the composition.
Claims 9 and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tomita et al. (JP 7-224202).
Tomita et al. teaches a composition comprising a polyvinyl alcohol-based resin (A) containing an oxyalkylene group (paragraph [0011] to [0013]) with 1-50 wt % of a polyhydridic alcohol compound (B) having three or more hydroxyl groups, wherein the polyhydridic alcohol compound is pentaerythrtitol, dipentaerythritol, mannitol, sorbitol, polyglycerine, fructose, and glucose (paragraph [0018]). Example 8 of Tomita et al. teaches a composition comprising 80 wt % of a polyvinyl alcohol based resin containing units derived from polyoxyethylene vinyl ether CH2=CH-O-(CH2CH2O)10-H and 20 wt % of pentaerythritol. Inventive composition finds use in preparation of molded articles and laminated film (paragraph [0021] to [0024]).
Claim 11 is objected to as being dependent upon a rejected base claim but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Response to Arguments
The rejection of claims 1-4 under 35 U.S.C. 102(a)(1) as being anticipated by Aoki (EP 0 236 011), set forth in paragraph 12 of the previous office action dated August 1, 2025, has been overcome by amendment.
The rejection of claims under 35 U.S.C. 102(a)(1) as being anticipated by Inoue et al. (JP 2013-227530), set forth in paragraph 13 of the previous office action, has been overcome by amendment. Applicant would traverse the rejection of claims under 35 U.S.C. 103 as being unpatentable over Inoue et al. (JP 2013-227530), as set forth in paragraph 2, supra.
Applicant points to comparative example 2 of Inoue et al. to support the claim that one of ordinary skill in the art would not have found it obvious to use a mixture of polyvinyl alcohol (PVA) base resin and a polyhydric alcohol because such a mixture exhibits inferior gas barrier properties. Comparative example 2 is relied upon because it appears similar to that of instant invention. Applicant’s argument has been considered fully, but it is neither persuasive nor logical. The rejection at hand is concerned with inventive examples which contain polyvinyl alcohol resin (A), polyvinyl alcohol resin (B), and polyhydric alcohol compound (C), not the composition of comparative example 2. Inoue et al. teaches that the polyhydric alcohol compound (C) is chose from a limited list of compounds: ethylene glycol, diethylene glycol, butanediol, glycerin, pentaerythritol or polyethylene glycol (PEG). The reference example shows use of polyethylene glycol as the polyhydric compound (C), but one of ordinary skill in the art would have found it obvious to make a composition using pentaerythritol in lieu of polyethylene glycol, and the person of ordinary skill in the art would have expected such an embodiment to work with a reasonable expectation of success. A composition comprising polyvinyl alcohol resin (A), polyvinyl alcohol resin (B), and pentaerythritol (C) lies well within the scope of the invention and such a composition meets all limitations set forth in instant claim 1. Applicant has not provided cogent reasoning or evidence to show why one of ordinary skill in the art would not have found it obvious to make inventive composition using pentaerythritol as the polyhydric alcohol compound (C). Based on these considerations, the obviousness type rejection of original claim 2 (current claim 1) has been maintained.
The rejection of claims 9 and 10 under 35 U.S.C. 102(a)(1) as being anticipated by Tomita et al. (JP 7-224202), set forth in paragraph 16 of the previous office action, has been maintained. The polyvinyl alcohol based resin (A) of prior art contains containing units derived from polyoxyethylene vinyl ether CH2=CH-O-(CH2CH2O)10-H which contains a primary hydroxyl group.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Rip A. Lee whose telephone number is (571)272-1104. The examiner can be reached on Monday through Friday from 9:00 AM - 5:00 PM. 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.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/RIP A LEE/Primary Examiner, Art Unit 1762 December 9, 2025
Prosecution Insights