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 .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 12, 14-17 and 21 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claims 12 and 14-17 recite “partially hydrolyzed polyvinyl alcohol” and “hydrolyzed polyvinyl alcohol”. The original specification does not recite “partially hydrolyzed polyvinyl alcohol” or “hydrolyzed polyvinyl alcohol”. Although applicant has amended the specification to insert the sentence “[a]s used within this Application, the term hydrolysis shall have the same meaning as the term hydrolyzed”, this is new to the specification. The hydrolyzed nature of the polyvinyl alcohol is too critical to the invention for this insertion to overcome the lack of original disclosure‘s issues in this regard.
Regarding new claim 21, there is no disclosure in the originally filed disclosure to explicitly exclude all solvents from the present aqueous dispersion.
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) 11, 12, 15 and 16 is/are rejected under 35 U.S.C. 102((a)(1)/(a)(2)) as being anticipated by Zecha et al. (US 2013/0131261).
In ¶‘s 34, 80, and 81 and claim 1, Zecha et al. teaches an aqueous ethylene vinyl acetate (EVA) dispersion which are suitable for bonding a variety of substrates, e.g. woven and non-woven fiber materials (¶ 5), comprising:
ethylene-vinyl ester copolymers;
protective colloids, including a mixture of partially hydrolyzed polyvinyl alcohol and fully hydrolyzed polyvinyl alcohol (See ¶ 75); and
preferably no surfactants (emulsifiers)( see ¶ 104);
wherein a total amount of the protective colloids is between 1-7 pphm (parts per hundred of monomer).
Thus, the claims are rejected under 35 U.S.C. 102((a)(1)/(a)(2)).
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) 17-20 is/are rejected under 35 U.S.C. 102((a)(1)/(a)(2)) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Zecha et al. (US 2013/0131261).
While Zecha et al., above, do not expressly teach the disclosed properties of the claimed aqueous ethylene vinyl acetate dispersion, it is reasonable that the aqueous ethylene vinyl acetate dispersion of Zecha et al. would possess the presently claimed properties since the composition of the aqueous ethylene vinyl acetate dispersion of Zecha et al. is essentially the same as the claimed composition and the USPTO does not have at its disposal the tools or facilities deemed necessary to make physical determinations of the sort. In any event, an otherwise old composition is not patentable regardless of any new or unexpected properties. In re Fitzgerald et al., 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP § 2112 - § 2112.02.
Even if assuming that the prior art references do not meet the requirements of 35 U.S.C. 102, it would still have been obvious to one of ordinary skill in the art, at the time the invention was made, to arrive at the same inventive composition because the disclosure of the inventive subject matter appears within the generic disclosure of the prior art.
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zecha et al. (US 2013/0131261).
Although Zecha et al. do not expressly exemplify the ratio of partially hydrolyzed polyvinyl alcohol and fully hydrolyzed polyvinyl alcohol in the mixture, it would have been obvious to one having ordinary skill in the art, at the time the invention was made, to have equivalent amounts (i.e. ratio of 1) of the two polyvinyl alcohols in the mixture.
It would have been obvious to one having ordinary skill in the art at the time the invention was made, to use equivalent amounts of both polyvinyl alcohols, and one ordinary skill in that art would be able to adjust the ratio of the polyvinyl alcohols as needed, motivated by a reasonable expectation of success.
Response to Arguments
Applicant's arguments and declaration filed 04/21/2026 have been fully considered but they are not persuasive.
While applicant argues that Zecha et al. fails to describe, teach or otherwise suggest the use of a component (b) of one or more protective colloids that are present in an amount less than or equal to 2.2 pphm as required by independent claim 11 of the instant application, in fact, in ¶ 80, Zecha et al. teach that the one or more protective colloids be present in an amount from 1 to 7 ppm, which includes the 2.2 of the present claims.
In response to applicant's argument that the technical problem solved by the instant invention described and claimed in relation to this instant application (i.e., providing improved wet bonding strength and excellent water resistance) is not taught or suggested by Zecha et al., 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'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 KELECHI CHIDI EGWIM whose telephone number is (571)272-1099. The examiner can normally be reached M-Th 9-7.
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, 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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/KELECHI C EGWIM/Primary Examiner, Art Unit 1762
KCE
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