DETAILED ACTION
Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office Action.
The new grounds of rejection set forth below for claims 1-9 are necessitated by Applicant’s amendment filed on Apr. 22, 2026. In particular, claim 1 has been amended to contain limitations regarding comonomers. Therefore, claim 1 and claims 2-9 which ultimately depend on amended claim 1 are now different in scope from what they were at the time of the preceding Office action. For this reason, the present action is properly made final.
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 .
Claim Rejections – 35 U.S.C. § 112(b)
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.
Claims 1-9 are rejected under 35 U.S.C. § 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 1 was amended on Apr. 22, 2026 to recite a copolymer (b) that includes units of a monomer that is different from “the monomer comprising a structure of formula (1)”. The claim previously recites a homopolymer comprising a structure of formula (1) at a terminal, but the claim does not previously recite a monomer comprising a structure of formula (1). The cited reference in copolymer (b) to “the monomer comprising a structure of formula (1)” therefore lacks proper antecedent basis. The claim does not set forth with reasonable clarity whether or not it requires a monomer comprising a structure of formula (1).
Claims 2-9 are ultimately dependent upon independent claim 1, and they are indefinite for the same reason.
Claim Rejections – 35 U.S.C. § 102
Claims 1-9 are rejected under 35 U.S.C. §§ 102(a)(1) and 102(a)(2) as being anticipated by WO 2019/031461 A1 (herein “Fukuhara”). US 2020/0247915 A1 is referred to herein as an English translation of Fukuhara.
As to claims 1-4 and 6-9: Fukuhara describes dispersion stabilizers for suspension polymerization (see the abstract). Fukuhara describes an example (see Production Example 1-8 in Tables 1 and 3 on pp. 10-11, and see the process in ¶¶ [0158]-[0159]) which is a vinyl alcohol polymer that is made in the presence of the modifying agent octyl aldehyde (see agent type C in Tables 1 and 3) in an amount of 74.2 parts with respect to 1500 parts of vinyl acetate, corresponding to about 4.95 parts with respect to 100 parts of vinyl acetate; and in the presence of the comonomer trimethylolpropane diallyl ether (see comonomer A in Tables 1 and 2), corresponding to the presently recited allyl compound.
The vinyl alcohol polymer of Production Example 1-8 has a degree of saponification of 72 mol% (see Table 1 on p. 10) and a viscosity-average degree of polymerization (see ¶¶ [0146]-[0147] and [0158]) of 750 (see Table 1 on p. 10).
Octyl aldehyde corresponds to the present chemical formula (1) in which R is a 7-carbon alkyl group. It is additionally noted that the present specification discloses that 1-octanal is an example of an aldehyde that is used as a modification agent to produce the presently recited chemical formula (1) and that the usage amount of aldehyde is 0.5 to 20 parts by mass with respect to 100 parts by mass of the vinyl ester monomer (Spec. p. 11, ¶¶ [0037]-[0038]).
Fukuhara does not disclose the percentage of structural units modified by the octyl aldehyde, corresponding to the presently recited quantity X.
Because Fukuhara discloses one of the aldehyde chain transfer agents (octyl aldehyde) that is presently disclosed to result in chemical formula (1), and because the amount of the chain transfer agent used in the cited process of making the polyvinyl alcohol falls within the scope of the amounts which are presently disclosed, there is a reasonable basis to conclude that Fukuhara’s process results in a polyvinyl alcohol which has a percentage of structural units modified by the octyl aldehyde that falls within the scope of the presently recited inequalities (2) and (3).
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. MPEP 2112.01(I).
As to claims 5: Fukuhara further discloses that the dispersants are useful for suspension polymerization of vinyl compounds (see ¶¶ [0120]-[0122] and Example 1-9 in Table 5).
Response to Arguments
Applicant's arguments filed Apr. 22, 2026 (herein “Remarks”) have been fully considered but they are not persuasive.
Applicant argues (p. 6 of Remarks) that the claimed polymer does not include the ethylenic double bond in a side chain that is present in Fukuhara’s polymers.
The present claims do not expressly exclude such side chains. To the extent that the claims now recite copolymers that are limited with respect to their comonomers, the claims encompass such side chains that arise from such comonomers. In the present case, claim 1 recites comonomers that include “an allyl compound”, and the cited portion of Fukuhara includes the comonomer trimethylolpropane diallyl ether which is an allyl compound. Because the present claims encompass the monomer composition that makes up Fukuhara’s polymer, the claims also encompass the side chains which arise from the monomer composition that makes up Fukuhara’s polymer.
The rejection over Fukuhara that was set forth in the preceding Office action has been recast above in paragraphs 5-8 to reflect the current scope of the claims, but it is otherwise substantially the same. In light of the amendment of claim 1, a new ground of rejection under 35 U.S.C. § 112(b) has been set forth above in paragraphs 9-16.
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 extension fee 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.
This action is a final rejection and is intended to close the prosecution of this application. Applicant's reply under 37 CFR § 1.113 to this action is limited either to an appeal to the Patent Trial and Appeal Board or to an amendment complying with the requirements set forth below.
If applicant should desire to appeal any rejection made by the examiner, a Notice of Appeal must be filed within the period for reply identifying the rejected claim or claims appealed. The Notice of Appeal must be accompanied by the required appeal fee.
If applicant should desire to file an amendment, entry of a proposed amendment after final rejection cannot be made as a matter of right unless it merely cancels claims or complies with a formal requirement made earlier. Amendments touching the merits of the application which otherwise might not be proper may be admitted upon a showing of good and sufficient reasons why they are necessary and why they were not presented earlier.
A reply under 37 CFR § 1.113 to a final rejection must include the appeal from, or cancellation of, each rejected claim. The filing of an amendment after final rejection, whether or not it is entered, does not stop the running of the statutory period for reply to the final rejection unless the examiner holds the claims to be in condition for allowance. Accordingly, if a Notice of Appeal has not been filed properly within the period for reply, or any extension of this period obtained under either 37 CFR 1.136(a) or (b), the application will become abandoned.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RICHARD A. HUHN whose telephone number is (571)270-7345. The examiner can normally be reached Monday through Friday, 9 AM to 6 PM EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie (Lanee) Reuther can be reached at (571) 270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RICHARD A. HUHN/Primary Examiner, Art Unit 1764
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