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 .
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.
Priority
3. This application is a 371 of PCT/KR2022/007155 05/19/2022.
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application KOREA, REPUBLIC OF 10-2021-0070906 06/01/2021 filed on 10/17/23.
Information Disclosure Statement
The information disclosure statement (IDS), filed on 10/17/23, 05/10/24, 06/25/25, 09/08/25, 12/30/25 have been considered. Please refer to Applicant's copy of the 1449 submitted herewith.
Third party submission filed on 03/10/25 under 37 CFR 1.290 has been considered.
Election/Restrictions
Applicant’s election without traverse of i) gas barrier resin (A): Ethylene vinyl alcohol copolymer (EVOH); ii) impact resistance reinforcing resin (B): Polyolefin elastomer (POE); and iii) compatibilizer (C): Maleic anhydride modified (grafted) high- density polyethylene in the reply filed on 06/30/26 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 1-11 are pending, and claims 5, 7 are directed to non-elected species. Accordingly, claims 5, 7 are withdrawn from further consideration by Examiner, 37 CFR 1.142(b), as being drawn to non-election invention/species. Claims 1-4, 6, 8-11 are examined in this Office action.
Claim Rejections - 35 USC § 112
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 10 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 10 recites the limitation " the liner for high-pressure gas storage tank" in lines 1-2. There is insufficient antecedent basis for this limitation in the claim.
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, 6, 8-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hayashi (US 6398059).
Regarding claims 1, 6, 9, Hayashi discloses a composition comprising an impact resistance resin (B) such as polyethylene containing compatibilizer (C) such as ethylene vinyl acetate copolymer which is dispersed in a form of particle in a gas barrier resin (A) such as ethylene vinyl alcohol copolymer (column 1, lines 60-, column 2, lines 29; column 4, lines 45-47, column 15, lines 58-, column 16 lines -3, lines 46-49), meeting the requirements of claims 1, 6, 9.
Regarding claim 8, Hayashi discloses “the resin composition used in the present invention can be obtained easily by melting and mixing the components with a melt-kneading apparatus. The method for blending the components is not limited to a particular method. For example, the following method can be used. The barrier resin (A), the thermoplastic resin (B), the compatibilizer (C) and the thermoplastic resin (D) are blended as appropriate. The blend is melted and kneaded by a single or twin screw extruder or the like, formed into pellets and dried” (column 14, lines 58-66). Such melting and blending implicitly teaches wherein the compatibilizer (C) surrounds the
interface of the impact resistance reinforcing resin (B) which is dispersed in the form of particles in the gas barrier resin (A).
Regarding claim 10, since the claimed composition is anticipated by Hayashi, the properties such as low-temperature impact strength would inherently be the same as claimed. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I) , In re Best, 562 F2d at 1255, 195 USPQ at 433, Titanium Metals Corp v Banner, 778 F2d 775, 227 USPQ 773 (Fed Cir 1985), In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Warren Corp v D F Newfield Co, 7 F Supp 773, 22 USPQ 313 (EDNY 1934).
In claim 11, the recitation “A liner for high-pressure gas storage tank” has been given little patentable weight because the recitation occurs in the preamble. A preamble is generally not accorded patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951).
In the instant case, the preamble in claim 11 merely recites the intended use of the composition, wherein the prior art can meet this future limitation by merely being capable of such intended use. Thus, Hayashi meets all requirements of claim 11.
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.
Claims 2-4 are rejected under 35 U.S.C. 103 as being unpatentable over Hayashi (US 6398059) as applied to claim 1 above.
Hayashi includes the features of claim 1 above.
Regarding claim 2, Hayashi discloses 5 to 70 wt% of gas barrier resin (A) and 30 to 95 wt% of resin (B) (column 1, lines 62-64), overlapping claimed range of resin (B) is 5% by weight to 50% by weight with respect to the total weight of the gas barrier resin (A) and resin (B).
A prima facie case of obviousness exists for a composition, wherein Hayashi discloses 5 to 70 wt% of gas barrier resin (A) and 30 to 95 wt% of resin (B), overlapping the requirement of claim 2. See In re Wertheim regarding prima facie cases with overlapping ranges (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) See MPEP § 2144.05).
Regarding claim 3, Hayashi discloses wherein a weight ratio of the compatibilizer (C) is 1 to 85 parts by weight (claims 1-2, 8), encompassing claimed range of 5 parts by weight to 50 parts by weight with respect to the total 100 parts weight of the gas barrier resin (A) and the impact resistance reinforcing resin (B).
A prima facie case of obviousness exists for a composition, wherein Hayashi discloses compatibilizer (C) is 1 to 85 parts by weight, encompassing the requirement of claim 3. It is well-settled that where claimed ranges “overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 267 (CCPA 1976).
Regarding claim 4, Hayashi discloses the ethylene vinyl alcohol copolymer
has an ethylene content of 5 to 60 mol% (column 4, lines 50-54), overlapping claimed range of more than 35 mol%.
A prima facie case of obviousness exists for a composition, wherein Hayashi discloses the ethylene vinyl alcohol copolymer has an ethylene content of 5 to 60 mol%, overlapping the requirement of claim 4. See In re Wertheim regarding prima facie cases with overlapping ranges (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) See MPEP § 2144.05).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Hayashi as applied to claims 1,9 above, and further in view of Ho (KR 20070102005).
Hayashi includes the features of claims 1, 9 above.
Regarding claim 9, Hayashi discloses the compatibilizer (C) such as ethylene vinyl acetate copolymer (column 2, lines 24-26) but does not disclose the elected species of maleic anhydride modified (grafted) high density polyethylene.
However, Ho discloses a composition comprising a polyolefin resin, barrier resin such as ethylene vinyl alcohol copolymer and a compatibilizer such as ethylene vinyl acetate copolymer and functionally equivalent maleic anhydride modified (grafted) high density polyethylene (claims 1-11).
It would have been obvious to one having ordinary skill in the art at the time the invention was made to have used the maleic anhydride modified (grafted) high density polyethylene of the claims in the composition of Hayashi because Ho teaches that the claimed the maleic anhydride modified (grafted) high density polyethylene and the ethylene vinyl alcohol copolymer of Hayashi are functionally equivalent and it is prima facie obvious to substitute art-recognized functional equivalents known for the same purpose, see MPEP § 2144.06; In re Ruff, 256 F.2d 590, 118 USPQ 340 (CCPA 1958).
Conclusion
References Hwa (KR 20050008394) and Seok (KR 20080067824) were cumulative in nature to the above rejection and thus not set forth.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KUMAR R BHUSHAN whose telephone number is (313)446-4807. The examiner can normally be reached 9.00 AM to 5.50 PM (EST).
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/KUMAR R BHUSHAN/Primary Examiner, Art Unit 1766
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