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 .
Applicant’s election without traverse of Group I, claims 1-3, 8-9, and 17 in the reply filed on March 24, 2026 is acknowledged.
Claims 4-7, 10-16, and 19-27 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 March 24, 2026.
Claim Analysis
Summary of Claim 1:
A modified vinyl alcohol polymer comprising a structural unit represented by the following formula (1), and having a water-insoluble content of 1,000 ppm or less,
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wherein, in the formula (1), X, Y, and Z each independently represent an alkyl group having 1 to 20 carbon atoms, an alkenyl group having 2 to 20 carbon atoms, a phenyl group, a benzyl group, a vinylphenyl group, a halogenated alkyl group having 1 to 20 carbon atoms, a halogenated phenyl group, an aminoalkyl group having 1 to 20 carbon atoms, a mercaptoalkyl group having 1 to 20 carbon atoms, an ureidoalkyl group having 2 to 20 carbon atoms, an isocyanate alkyl group having 2 to 8 carbon atoms, a group having 3 to 20 carbon atoms and comprising an epoxy group, a group having 3 to 20 carbon atoms and comprising an acrylamide group, a group having 4 to 20 carbon atoms and comprising a methacrylamide group, an acetoxy group, or a group represented by -(CH2)n-O-R1 (wherein R1 represents a hydrogen atom, an alkali metal atom, an alkaline earth metal atom, an alkyl group having 1 to 20 carbon atoms, an alkenyl group having 2 to 20 carbon atoms, an acryloyl group, a methacryloyl group, or a glycidyl group; and n represents an integer of 0 to 6).
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 1-3 and 8-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nishii (US 20170137600 as listed on IDS dated October 3, 2023).
Regarding claim 1, Nishii discloses in Example 1-13 a modified polyvinyl alcohol obtained by reacting PVA particles dissolved in DMSO, then reacted with stearyl acid and a silane coupling agent 3-methacryloxypropyltrimethyoxysilane were added ([0087] Table 1), thereby reading on formula (1) wherein X and Y are a group represented by (CH₂)ₙ-O-R¹, wherein n is 0 and R¹ is an alkyl group having 2 carbons, and Z is a group represented by (CH₂)ₙ-O-R¹, wherein n is 3 and R¹ is a methacryloyl group.
Nishii is silent on the polymer having a water-insoluble content as recited in the instant claim.
However, water solubility of the polymer is dependent on the structure of the polymer. Nishii discloses a substantially identical polymer as claimed in the instant claim. Therefore, one of ordinary skill in the art would have considered the water-insoluble content of the modified vinyl alcohol polymer to be inherent.
Regarding claim 2, Nishii discloses in Example 1-13 the modified polyvinyl alcohol has a content of 1 mol% of the structural unit represent by the above formula (1), thereby lying inside the claimed range.
Regarding claim 3, Nishii discloses the modified polyvinyl alcohol of Example 1-13 comprises a structural unit reading on formula (1) wherein X and Y are a group represented by (CH₂)ₙ-O-R¹, wherein n is 0 and R¹ is an alkyl group having 2 carbons, and Z is a group represented by (CH₂)ₙ-O-R¹, wherein n is 3 and R¹ is a methacryloyl group as recited in the rejection for claim 1. Therefore, the content of structural unit represented by formula (1) with respect to the total structural units comprising a silicon atom is 100 mol%, thereby lying within the claimed range.
Regarding claim 8, Nishii discloses particles of modified polyvinyl alcohol in Example 1-13 as recited in the rejection for claim 1, thereby anticipating the instant claim.
Regarding claim 9, Nishii is silent on the dispersity A of the silicone atoms as recited in the instant claim.
However, dispersity of the polymer is dependent on the structure of the polymer. Nishii discloses a substantially identical polymer as claimed in the instant claim. Therefore, one of ordinary skill in the art would have considered the dispersity A of the modified vinyl alcohol polymer to be inherent.
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 17 is rejected under 35 U.S.C. 103 as being unpatentable over Nishii (US 20170137600 as listed on IDS dated October 3, 2023).
The modified vinyl alcohol polymer of claim 1 is incorporated herein by reference.
Regarding claim 17, Nishii teaches the modified vinyl alcohol polymer is used to form a coating on the outer surface of a tire by in-mold forming [0059], thereby reading on the molded product of the instant claim.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREA WU whose telephone number is (571)272-0342. The examiner can normally be reached M F 8 - 5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached at (571) 272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREA WU/Examiner, Art Unit 1763
/CATHERINE S BRANCH/Primary Examiner, Art Unit 1763
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