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
Applicant’s election without traverse of Group I, claims 17-26, in the reply filed on 1/5/2026 is acknowledged.
Claims 27-36 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 1/5/2026.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 26 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 26 recites the composition comprise element boron and/or element phosphorus and then states the content of boron is 50-1,000 ppm and the content of phosphorus is 200-1,000 ppm. The “and/or” indicates that the boron and phosphorus can be present in the alternative to each other. However, the amounts recited indicate that both are required. Therefore, claim 26 is indefinite because it is unclear whether only one of the boron and phosphorus are required to be present (because of the ‘and/or’) or whether they are both required to be present (because of the amounts).
Additionally, claim 26 recites the amounts using the phrase “calculated in terms of boric acid H3BO3” and “calculated in terms of H3PO4”. This is indefinite because it is unclear whether this means (1) that boric acid H3BO3 is required to be present, (2) the amount of boron present is 50-1,000 ppm, (3) the amount of boron present is converted to an amount of boric acid, and the calculated amount of that is 50-1,000 ppm. This same issue is present for the phosphorus. For example, given a composition with 300 ppm KH2PO4, (1) this falls outside the scope of the amount of phosphorus because H3PO4 is not present, (2) since KH2PO4, has a molecular weight of 136 g/mol and phosphorus has an atomic weight of 31 g/mol, 300 ppm KH2PO4 is about 68 ppm P, or (3) since KH2PO4, has a molecular weight of 136 g/mol and H3PO4 has a molecular weight of 98 g/mol, 300 ppm KH2PO4 is about 216 ppm H3PO4. Given the different possible reasonable interpretations of the claim, claim 26 is indefinite. Clarification is requested.
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.
Claim(s) 17-23, 26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nakazawa (US 2015/0105508).
Nakazawa teaches an example 18 where an ethylene-vinyl alcohol copolymer having sorbic acid is pelletized and then immersed in a solution with acetic acid, sodium acetate, potassium dihydrogen phosphate, and boric acid (¶ 154). Thus, the composition contains an ethylene-vinyl alcohol copolymer, a saturated mono-carboxylic acid (acetic acid), an unsaturated carboxylic acid (sorbic acid), and an alkali metal element (sodium acetate and/or potassium dihydrogen phosphate).
Nakazawa teaches the amount of the alkali metal in the resin composition is preferably 20-1,000 ppm or more preferably 50-500 ppm (¶82). This range meets the claimed range with substantial specificity. Alkali metals include sodium and potassium (¶82) and thus meet the range of claim 17.
Nakazawa teaches an example where the amount of acetic acid is 300 ppm and the amount of sorbic acid is 50 ppm, giving a ratio of mono-saturated carboxylic acid (acetic acid) to double bond containing acid (sorbic acid) of 300:50 or 1:0.16 which meets the range of claim 18. These amounts also meet the amount of claim 19.
Sorbic acid contains one carboxylic group and thus meets claims 20-21.
Nakazawa teaches boric acid is present in an amount of 800 ppm (Table 2) which meets the limitation of claim 26.
Nakazawa teaches the amount of the alkali metal in the resin composition is preferably 20-1,000 ppm (¶82). This range overlaps the range of claims 22-23.
Nakazawa teaches amounts which overlap claimed ranges. It is well settled that where prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See MPEP 2144.05; In re Harris, 409, F3.d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 3d 1379, 1382 (Fed. Cir 1997); In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). In light of the cited patent case law, it would have been obvious to one of ordinary skill in the art to use a range within the claimed range because a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art and Nakazawa suggests the amounts. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Nakazawa. See MPEP 2123.
Allowable Subject Matter
Claims 24-25 are 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.
Claim 24 recites a mass ratio of sodium to potassium is 0.1:1 to 1:1. Claim 25 depends from claim 24 and thus contains the same limitations.
Relevant prior art includes Nakazawa (US 2015/0105508), Aoyama (US 5,342,662), Kazeto (US 2001/0025087), Tai (US 2002/0037379), and Isoyama (JP 2004-160755). As the JP reference is not in English, citations are made to the attached translation.
Nakazawa teaches an example 18 where an ethylene-vinyl alcohol copolymer having sorbic acid is pelletized and then immersed in a solution with acetic acid, sodium acetate, potassium dihydrogen phosphate, and boric acid (¶ 154). Thus, the composition contains an ethylene-vinyl alcohol copolymer, a saturated mono-carboxylic acid (acetic acid), an unsaturated carboxylic acid (sorbic acid), and an alkali metal element (sodium acetate and/or potassium dihydrogen phosphate). Nakazawa fails to teach the ratio of sodium to potassium is 0.1:1 to 1:1. Nakazawa fails to provide any clear amounts of sodium or sodium components and thus gives no basis for determining a sodium to potassium ratio.
Aoyama teaches a composition of saponified ethylene vinyl acetate copolymer having a saponification degree of at least 95mol%, acetic acid, alkali metal, phosphoric acid (abstract) and gives an example having acetic acid and 140 ppm potassium (potassium acetate) and 45 ppm of sodium (sodium dihydrogenphosphate) (col. 8, ln. 25-55). This gives an amount of sodium and potassium of 185 ppm and gives a ratio of sodium to potassium of 0.32:1. However, the amount of potassium and sodium is outside the range of claims 22-23, from which claim 24 depends. Additionally, Aoyama does not teach a carbon-carbon double bond containing carboxylic acid.
Kazeto teaches ethylene vinyl alcohol copolymers compositions (abstract) which include sodium and potassium where the sodium is greater than the amount of potassium (Tables 3 and 6). This falls outside the scope of claim 24 which requires either more potassium or a 1:1 ratio.
Tai teaches compositions of EVOH resins (abstract) and provides examples where the amount of Na ion and K ion is 70-80 ppm and 40-45 ppm respectively, (¶ 223-232) which falls outside the ratio of claim 24. Additionally, Tai does not teach a mono-saturated carboxylic acid or a carbon-carbon double bond containing carboxylic acid.
Isoyama teaches ethylene vinyl alcohol copolymer compositions (abstract) which includes a sodium content of 1 ppm and potassium content of 8 ppm (¶ 148). This gives a ratio of sodium to potassium of 0.125:1 which falls in the range of claim 24. However, this gives an amount of sodium plus potassium of 9 ppm which is outside the range required by claim 17. Additionally, Isoyama does not teach a mono-saturated carboxylic acid or a carbon-carbon double bond containing carboxylic acid.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT C BOYLE whose telephone number is (571)270-7347. The examiner can normally be reached Monday-Thursday, 10am-4pm.
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/ROBERT C BOYLE/Primary Examiner, Art Unit 1764