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 .
Response to Amendment
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Any new grounds of rejection set forth below are necessitated by applicant’s amendment filed on 7/16/2026. In particular, claim 6 has been amended to recite that the first step includes introducing into an extruder and melt-kneading a water-containing ethylene-vinyl alcohol copolymer into a paste form. New claims 8-11, not previously presented and therefore not previously considered, are added.
It is noted that the newly introduced limitations were not present at the time of the preceding action. For this reason, it is proper to make the present action FINAL.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 10 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 10 recites “The method for producing porous pellets of an ethylene-vinyl alcohol copolymer according to claim 6, wherein the porous pellets of the ethylene-vinyl alcohol copolymer further comprise water.” This fails to further limit claim 6, on which claim 10 depends, because claim 6 already recites that the porous pellets are porous pellets made from ethylene-vinyl alcohol copolymer containing water. See lines 3, 5-7, and 9-10.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claims 1-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kawahara et al. (US 2002/0100997).
Kawahara teaches an example where EVOH pellets have a water content of 39% (¶ 139) are added to an extruder (¶140) and the EVOH resin melt was processed (kneaded) (¶ 150). Additionally, Kawahara teaches EVOH paste may be added into the extruder for step 2 (¶95). As there are only two ways in which the EVOH is added to the second extruder, one of which is a paste, both are at once envisaged given the teachings at ¶95 of Kawahara. See ¶95. Kawahara teaches the resin temperature around the take out port was 100ºC (¶ 140) which corresponds to the claimed temperature of the copolymer discharged from the extruder of claim 6. Again, Kawahara explicitly states that the EVOH as this stage, stage 2, may be fed as a paste. See ¶95. Kawahara teaches the EVOH resin processed in the extruder is cut into pellets having a water content of 20 wt% (¶150). This corresponds to the second step of claim 6.
Kawahara et al. teach a method for producing an ethylene-vinyl-alcohol copolymer resin, the method comprising a step of feeding an aqueous ethylene-vinyl-alcohol copolymer containing from 10 to 1000 parts by weight of water relative to 100 parts by weight of ethylene-vinyl-alcohol copolymer therein, which is about 10wt% to about 91wt% of water, into an extruder, melt-kneading it in the extruder, and then extruding the copolymer out of the extruder. See abstract. The extruded resin is then cut (abstract). The resin temperature at the take-out port (i.e. where the resin is discharged) is 100ºC (see ¶140 and ¶152 of Kawahara et al.), which falls within the range of instant claim 6.
With regards to the amendment to claim 6, Kawahara et al. specifically states that the aqueous ethylene-vinyl-alcohol copolymer can be fed into the extruder in the form of a paste comprising water. This meets the amendment to claim 6, meaning each of the instantly claimed method steps are present in Kawahara et al. See ¶95 and ¶113 of Kawahara et al.
The water content of the aqueous ethylene-vinyl-alcohol copolymer is preferably at least 30 parts by weight, more preferably at least 50 parts by weight, and less than 1000 parts by weight, meaning the preferable water content is about 23wt% to less than about 90.9wt%. This anticipates the amount of water in the first step of instant claim 6. See ¶73 of Kawahara et al. The aqueous ethylene-vinyl-alcohol copolymer is melted in an extruder, the composition is extruded, and then the extruded strands are cut into pellets (¶77). This meets the second step of instant claim 6. Kawahara et al. teaches that the temperature of the resin at the take-out port of the extruder was 100ºC, which falls within the range of instant claim 6. Kawahara et al. teaches an example where the extruded resin has a water content of 20%, which falls within the range of instant claims 5-6 and new claim 11.
Identical amounts of identical materials are combined in an identical method (including formation of a paste; see ¶95 and ¶113 of Kawahara et al.) to produce an identical product (ethylene-vinyl-alcohol pellets) in the invention of Kawahara et al as recited in the instant claims. The identical particles, produced using identical materials and essentially identical steps as disclosed in the instant specification, will necessarily have the same properties as the porous particles of the instant claims, including the proportion (V2/V1 x 100), and pore surface area of the porous pellets as recited in the instant claims, as well as the properties recited in instant claims 2-3 and 8-9. The burden is shifted to Applicants to provide factually supported objective evidence which demonstrates the contrary. MPEP 2112 states “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). No such evidenced has been provided by Applicants.
It will be made of note that the data of the instant specification does not show the results of a temperature of 100ºC with regards to the resin being discharged from the extruder. One of ordinary skill in the art would expect or at once envisage the results of discharging at 100ºC to produce particles having the instantly claimed properties, as this temperature is recited in instant claim 6, and is not shown in the data. Absent evidence showing the contrary, given that the processing parameters of Kawahara et al. are the same as that of the instant claims, using the same amounts of the same materials to produce the same product with the same process steps as the instantly claimed pellets of EVOH, one of ordinary skill in the art would expect the pellets of Kawahara et al. to necessarily have the instantly claimed properties, which are a result of water content and discharge temperature at extrusion, which are both present in Kawahara et al., shown in Table 1 of the instant specification. The burden is shifted to Applicants to provide factually supported objective evidence which demonstrates the contrary. No such evidence has been provided by Applicants.
The water-containing EVOH copolymer of Kawakara et al. discharged from the extruder is cut in a molten state. See ¶150. This meets instant claim 7.
Response to Arguments
Applicant's arguments filed 7/16/2026 have been fully considered but they are not persuasive.
Regarding claim 6, Applicant argues that Kawahara et al. does not disclose a first step of introducing into an extruder and melt kneading a water-containing ethylene-vinyl alcohol into a paste form having a moisture content of 10 to 90%. Applicant argues that the EVOH is not a paste when added to the second extruder in Kawahara et al.
This is not persuasive.
Note that on pg. 4 of the Remarks filed 7/16/2026, Applicant states that the EVOH added in the first step is in paste form where the EVOH has a water content of 32 wt% (¶137). Kawahara teaches EVOH paste may be added into the extruder for step 2 (¶95). As there are only two ways in which the EVOH is added to the second extruder, one of which is a paste, both are at once envisaged given the teachings at ¶95 of Kawahara. See ¶95. Kawahara teaches the resin temperature around the take-out port was 100ºC (¶ 140) which corresponds to the claimed temperature of the copolymer discharged from the extruder of claim 6. Again, Kawahara explicitly states that the EVOH as this stage, stage 2, may be fed as a paste. Amorphous crumbs of a paste, can still be “pellets.” See ¶95. Kawahara teaches the EVOH resin processed in the extruder is cut into pellets having a water content of 20 wt% (¶150). The temperature of the resin at the end of the second extruder is 100ºC which meets the claimed range of 80-100ºC. Because Kawahara explicitly teaches that the EVOH is in the form of a paste when added to the second extruder (¶95), and that the discharge temperature is 100ºC which falls within the range of the instant claims, each of the instantly claimed method steps is present in Kawahara and the claims are anticipated.
Regarding claim 1, Applicant argues Kawahara does not inherently teach the claimed property (proportion and pore surface property) because Kawahara does not teach adding a combination of (1) introducing a paste and (2) a resin temperature at exit of 80-100ºC.
This is not persuasive because of the discussion above.
Applicant points to Example 1 of Kawahara and Table 1 of the instant specification. However, the comparative Examples of the instant specification do not correspond to the product of Kawahara because Kawahara teaches an exit temperature of 100ºC as described above as well as an explicitly teaching of adding the EVOH to the second extruder (stage 2) as a paste. See ¶95-96 and ¶140 of Kawahara. Therefore, the data in the instant specification fails to establish that the claimed property is not present in Kawahara. The comparative Examples of the instant specification are not representative of Kawahara et al., because Kawahara explicitly teaches an example where the temperature of the discharge port from the extruder is 100ºC which meets instant claim 6, as well as teaching that the EVOH is added to the second extruder as a paste (¶95-96).
Additionally, it is noted that the instant claims do not exclude the presence of additional steps, including a second extrusion.
Finally, the data of the instant specification does not compare what occurs when the material is added as a paste to the second extruder versus added as pellets. As the material is melt-kneaded in the extruder, one of ordinary skill in the art would readily recognize that the form of the material being added to the extruder (chips, fibers, paste, pellets) will not affect the product being extruded, when the materials used to produce the material are otherwise the same and the temperature upon exiting the extruder is also the same, because the material is melted and kneaded in the extruder forming a melted mass of the material. There is no evidence demonstrating the contrary. Again, the examples of the instant specification, including the examples cited to by Applicants, do not show that adding a paste of a material to an extruder produces properties which differ from adding pellets of an identical material to an extruder, when said material is ultimately melt kneaded and extruded in both cases. The burden remains with Applicants to provide factually supported objective evidence that the product of Kawahara differs from the instantly claimed product. No persuasive evidence has been provided by Applicants.
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 K. B BOYLE whose telephone number is (571)270-7338. The examiner can normally be reached 8:30 am to 5pm, Monday - Friday.
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, Randy Gulakowski can be reached at (571) 272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/K. BOYLE/Primary Examiner, Art Unit 1766
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