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, species of ionomer 1 (Na-neutralized product of ethylene-methacrylic acid, 20% methacrylic acid 70% neutralization) in the reply filed on 8/3/26 is acknowledged.
Claims 7-12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group/species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 8/3/26.
Priority
The foreign priority documents are not in English, the claims are given and effective date of the filing of the PCT: 3/11/22
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 9/6/24, 9/8/23 have been considered by the examiner.
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.
Claim 1, and its dependents, is 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.
The limitation “55% or more” is new matter because the “or more” is not supported by the originally filed written description. [0056] supports up to 100% neutralization and the Examiner recommends amending so there is an endpoint to the range
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 1, and its dependents, 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 1 has the limitation “(% by mass)” in parenthesis, rendering the claim indefinite.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1, 5-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mitsuharu JPH0564540A (reference of record, English translation included with this action).
Mitsuharu discloses films for processed meat packaging (title) comprising an ethylene/unsaturated carboxylic acid copolymer [0007] having 6-15 mol% unsaturated carboxylic acid, with a neutralization degree from 20-100% [0007] [embracing the claimed neutralization degree].
The carboxylic acid may be methacrylic acid [0008] [meeting the elected species]. Using a molecular weight of 86 g/mol for methacrylic acid, and, 28 g/mol for ethylene, the 6-15 mol% range converts to 18-35wt% unsaturated acid (15*86 = 1290, 85*28 = 2380; 1290+2380=3670, 1290/3670 = 35 wt%, etc) [meeting the mass% unsaturated acid of claim 1].
The ionomer resin has a melt flow rate from 0.001-100, preferably 0.01-10 dg/min (which is equivalent to g/10min). Using (20 wt%*95% neutralization*0.01)/1 = 19, thus, Mitsuharu embraces Formula 1 of claim 1.
The limitation “for a skin pack” is drawn to the future intended use of the composition. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Elements above embrace and thusly render prima facie obvious the resin composition of claim 1. See In re Wertheim regarding overlapping ranges.
The ionomer may be at least partially neutralized with a transition metal such as copper [0011], copper being a monovalent metal ion. Other ions such as sodium are discussed in [0011]. Therein it is discussed that using only an alkali metal (sodium) is not preferred, and at least some partial transition metal is used. Thus, the reference embraces using at least some sodium ion mixed with the transition metal, meeting claim 6. Alternatively using two elements known suitable for the same intended use (copper and sodium) is prima facie obvious, see In re Kerkhoven.
Though picked from a list of possible combinations, it has been held that though a specific embodiment is not taught as preferred makes it no less obvious, also, that the mere fact that a reference suggests a multitude of possible combinations does not in and of itself make any one of those combinations less obvious, see Merck v. Biocraft, 10 USPQ2d 1843 (Fed Cir 1985)
Claim(s) 1, 5-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Date JP2002200719A (reference of record, English translation provided).
Date discloses laminates (title) comprising an ionomer (a1) having a neutralization degree of from 5-80 mol% [meeting the neutralization degree of claim 1] comprising ethylene and an unsaturated carboxylic acid, wherein the unsaturated carboxylic acid is 2-30% by weight of the ionomer [0010] [embracing the mass% unsaturated monomer of claim 1], the monomer of the copolymer may be methacrylic acid [0010] [meeting the elected species of comonomer]. The ionomer may be neutralized with sodium [0013] [meeting claims 5 and 6].
The melt flow rate of the ionomer may be from 0.01-100 g/10min [0014]. Thus, the formula can calculate to (20 wt%*95% neutralization*0.01)/1 = 19, embracing and rendering prima facie obvious the formula requirements of claim 1.
The limitation “for a skin pack” is drawn to the future intended use of the composition. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Elements above embrace and thusly render prima facie obvious all the requirements of claims 1, 5-6. See In re Wertheim regarding overlapping ranges. Though picked from a list of possible combinations, it has been held that though a specific embodiment is not taught as preferred makes it no less obvious, also, that the mere fact that a reference suggests a multitude of possible combinations does not in and of itself make any one of those combinations less obvious, see Merck v. Biocraft, 10 USPQ2d 1843 (Fed Cir 1985)
Claim(s) 1, 5-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Inoue (US 20190143658).
Inoue discloses multilayer bodies (title) comprising layer B that comprises an ionomer therein (abstract). The ionomer may be a copolymer of ethylene and an unsaturated carboxylic acid [0047], the unsaturated carboxylic acid may be methacrylic acid [0048] in amounts ranging 1-80 mass% [0050] that is neutralized to a range of 10 mol% or more [0052] with ions such as sodium [0053]. The melt flow rate may be 0.01-1000 g/10min [0054].
The formula of claim 1 can calculate as (20 wt%*95% neutralization*0.01)/1 = 19, embracing and rendering prima facie obvious the formula requirements of claim 1. Elements above also meet claims 5-6. Though picked from a list of possible combinations, it has been held that though a specific embodiment is not taught as preferred makes it no less obvious, also, that the mere fact that a reference suggests a multitude of possible combinations does not in and of itself make any one of those combinations less obvious, see Merck v. Biocraft, 10 USPQ2d 1843 (Fed Cir 1985).
The limitation “for a skin pack” is drawn to the future intended use of the composition. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Conclusion
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/ALICIA BLAND/ Primary Examiner, Art Unit 1759
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