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 .
Note
Applicant’s response filed on 08/01/2025 has been fully considered. Claim 1 is amended, claim 25 is added and claims 1-25 are pending.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 3-14 and 22 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10, 12 and 13 of copending Application No. 18/557,186 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because combination of current claims 1 and 7 correspond to claims 1 and 6 of ‘186. Current claim 3 corresponds to claim 2 of ‘186. Current claim 4 corresponds to claim 3 of ‘186. Current claim 5 corresponds to claim 4 of ‘186. Current claim 6 corresponds to claim 5 of ‘186. Current claim 8 corresponds to claim 7 of ‘186. Current claim 9 corresponds to claim 8 of ‘186. Current claim 10 corresponds to claim 9 of ‘186. Combination of current claims 11 and 12 correspond to claim 10 of ‘186. Current claim 13 corresponds to claim 7 of ‘186. Current claim 14 corresponds to claim 12 of ‘186. Current claim 22 corresponds to claim 13 of ‘186.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response To Double Patenting
Applicant has agreed to address upon allowance.
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.
Claims 1-10, 13, 14 and 22-25 are rejected under 35 U.S.C. 103 as being unpatentable over Tadahito et al. (WO 2020/009178 A1).
Claims 1, 2, 6 and 7: Tadahito teaches a vinyl alcohol polymer (PVA herein after) comprising a monomer of maleic acid [¶37]. Tadahito teaches the vinyl alcohol polymer has a degree of saponification of 68-99.9% {instant claim 7} [¶21]; and a degree of polymerization of 200-3000 {instant claim 2} [¶18]. In this case, the molecular weight of the vinyl alcohol polymer can be calculated to be 23,214 – 348,210, wherein this range overlaps with the claimed 200,000 – 800,000. Tadahito teaches the vinyl alcohol polymer has a water insoluble content of 2000 ppm or less [¶47]. Tadahito teaches the vinyl alcohol polymer has a content of side chain 0.01-0.5% [¶22] which overlaps with the claimed 0.93 or less degree of branching.
Alternatively, with respect to the minimum degree of branching and its ratio {instant claim 6}, the experimental modification of this prior art in order to ascertain optimum operating conditions fails to render applicants’ claims patentable in the absence of unexpected results. In re Aller, 105 USPQ 233. One of ordinary skill in the art would have been motivated to adjust the minimum degree of branching, and the motivation would be, to control density, melting point and flexibility of the polymer. A prima facie case of obviousness may be rebutted, however, where the results of the optimizing variable, which is known to be result-effective, are unexpectedly good. In re Boesch and Slaney, 205 USPQ 215.
Claims 3 and 4: Tadahito teaches the vinyl alcohol polymer comprising may comprises a monomer of maleic acid or fumaric acid [¶37].
Claim 5: Tadahito teaches use methanol (5 parts), methyl acetate (15 parts), itaconic acid (esterification agent, 4 parts) and 100 parts of a powder PVA(B); and a viscosity-average degree of polymerization of 800 for a production of PVA (A1) (Example 1 and [¶89]). The content of methyl acetate is 12.09% (from (15/(5+15+4+100))x100%=12.09%); and 12.09x800=9672 which is greater than the claimed 250.
Claim 8: Tadahito teaches the produced PVA passes through sieve of a wire mesh [¶72], which indicates the PVA can be in a powder form.
Claims 9 and 10: With respect to particle size, the experimental modification of this prior art in order to ascertain optimum operating conditions fails to render applicants’ claims patentable in the absence of unexpected results. In re Aller, 105 USPQ 233. One of ordinary skill in the art would have been motivated to adjust the particle size of the PVA powder or particle, and the motivation would be, to control mechanical strength, viscosity and stability. A prima facie case of obviousness may be rebutted, however, where the results of the optimizing variable, which is known to be result-effective, are unexpectedly good. In re Boesch and Slaney, 205 USPQ 215.
Claim 13: Tadahito teaches the PVA can be used as a coating agent [¶49].
Claim 14: Tadahito teaches the PVA can be used as a paper coating agent [¶49].
Claims 22 and 23: Tadahito teaches the PVA can be used as stabilizers and emulsifiers [¶49].
Claim 24: Tadahito teaches the PVA can be used as adhesives [¶49].
Claim 25: Tadahito teaches a method for producing a powder [¶72] comprising a vinyl alcohol polymer (PVA herein after), the method comprising: a step (1) of obtaining a copolymer of a vinyl ester with at least one selected from the group consisting of: a monomer comprising a carboxy group; and a derivative of the monomer [¶36]; a step (2) of obtaining a saponification product of the copolymer [¶42]; and a step (3) of subjecting the saponification product to a heat treatment [¶44]. With respect to particle size, the experimental modification of this prior art in order to ascertain optimum operating conditions fails to render applicants’ claims patentable in the absence of unexpected results. In re Aller, 105 USPQ 233. One of ordinary skill in the art would have been motivated to adjust the particle size of the PVA powder or particle, and the motivation would be, to control mechanical strength, viscosity and stability. A prima facie case of obviousness may be rebutted, however, where the results of the optimizing variable, which is known to be result-effective, are unexpectedly good. In re Boesch and Slaney, 205 USPQ 215.
Claims 11 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Tadahito et al. (WO 2020/009178 A1).
Claim 11: Tadahito teaches a method for producing a powder [¶72] comprising a vinyl alcohol polymer (PVA herein after), the method comprising: a step (1) of obtaining a copolymer of a vinyl ester with at least one selected from the group consisting of: a monomer comprising a carboxy group; and a derivative of the monomer [¶36]; a step (2) of obtaining a saponification product of the copolymer [¶42]; and a step (3) of subjecting the saponification product to a heat treatment [¶44]. Tadahito teaches the heat treatment is at 50-200 ˚C for 10min-24hrs [¶44]. Since the heat treatment temperature and the time of heat treatment include the claimed invention range, fine powder would be eliminated, and this meets the claimed step (3) (ii).
With respect to particle size, the experimental modification of this prior art in order to ascertain optimum operating conditions fails to render applicants’ claims patentable in the absence of unexpected results. In re Aller, 105 USPQ 233. One of ordinary skill in the art would have been motivated to adjust the particle size of the PVA powder or particle, and the motivation would be, to control mechanical strength, viscosity and stability. A prima facie case of obviousness may be rebutted, however, where the results of the optimizing variable, which is known to be result-effective, are unexpectedly good. In re Boesch and Slaney, 205 USPQ 215.
Claim 12: Tadahito teaches the heat treatment is at 50-200 ˚C for 10min-24hrs [¶44].
Claims 14, 15, 18 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Tadahito et al. (WO 2020/009178 A1) as applied to claim 13, and further in view of Kimura et al. (US 2010/0126991 A1).
Tadahito teaches the claimed invention as set forth above.
Claims 14, 15, 18 and 19: Tadahito does not teach the claimed invention as recited in claims 15, 18 and 19. However, Kimura teaches a polyvinyl alcohol applied onto a substrate layer (b) {instant claim 14} for enhancing the gas-barrier property {instant claim 19} ([0048] and [0049]); wherein a printed matter can be formed using an ink jet printing method {instant claim 18} [0073]. It is well established that a PVA is a thermoplastic material {instant claim 15}. Tadahito and Kimura are analogous art because they are from the same field of endeavor that is the PVA coating art. It would have been obvious to a person of ordinary skill in the art to combine the teaching of Kimura, (i.e., coating a substrate with a thermoplastic PVA) with the invention of Tadahito, and the motivation for combining would be, as Kimura suggested, to enhance the gas barrier property [0049].
Claims 14, 16, 17 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Tadahito et al. (WO 2020/009178 A1) as applied to claim 13, and further in view of Dixit et al. (US 7,019,054).
Tadahito teaches the claimed invention as set forth above.
Claims 14, 16, 17 and 20: Tadahito does not teach the coated paper is a release paper or an oil resistant paper. However, Dixit teaches polyvinyl alcohol coated/applied to a substrate such as a cellulose web or fibrous sheet {instant claim 14} to possess improved oil and grease resistance or improved release properties (or both) (col. 9, lines 5-10). With respect to claim 20, Dixit teaches the PVA is white (col. 8, lines 58-59); and applying the white PVA onto a paper or paperboard (col. 6, line 25) would result in achieving a white paperboard. Tadahito and Dixit are analogous art because they are from the same field of endeavor that is the PVA coating art. It would have been obvious to a person of ordinary skill in the art to combine the teaching of Dixit, (i.e., coating a paper or a paperboard with a white PVA) with the invention of Tadahito, and the motivation for combining would be, as Dixit suggested, provide improved oil and grease resistance and improved release properties (col. 9, lines 9-10).
Claims 17 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Tadahito et al. (WO 2020/009178 A1) as applied to claim 14, and further in view of Miller (US 2006/0099410 A1).
Tadahito teaches the claimed invention as set forth above.
Claims 17 and 21: Tadahito does not teach curtain coating. However, Miller teaches a method of producing an oil and grease resistant paper comprising the steps of (a) providing a paper substrate to a coating station; (b) curtain coating {instant claim 21} at least one surface of the paper with an aqueous polyvinyl alcohol; and (c) drying the polyvinyl alcohol to form a polyvinyl alcohol oil and grease barrier coating {instant claim 17} [0016]. Tadahito and Miller are analogous art because they are from the same field of endeavor that is the PVA coating art. It would have been obvious to a person of ordinary skill in the art to combine the teaching of Miller, (i.e., curtain coating a paper with a PVA) with the invention of Tadahito, and the motivation for combining would be, as Miller suggested, to provide substantially pinhole free oil and grease barrier coating [0016].
Response to Arguments
Applicant directs Examiner’s attention to [¶ 70] of Tadahito for method for measuring the side chain content; however, the Examiner could not locate such a teaching in [¶ 70] of Tadahito. Applicant also directs Examiner’s attention to [¶ 113] of the current specification for method for measuring the degree of branching; however, the Examiner could not locate such a teaching in [¶ 113] of current specification. Applicant further directs Examiner’s attention to [¶ 22] of the current specification for method of producing branching; however, in [¶ 22] there is a method of producing a powder including the step of heat treatment, but it appears to be there is no method of branching.
Applicant’s argument is based on that Tadahito does not disclose or suggest the minimum degree of branching, much less that this feature is related to the density, melting point, and flexibility of the polymer. This argument is not persuasive for the following reason. General conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. See MPEP 2144.05(II)(A). The Examiner showed that it would have been routine optimization to arrive at the claimed invention because there is no factual evidence in the specification or the original claims that indicates the claimed range of degree of branching is critical to the claimed invention.
Regarding claim 11, since the heat treatment temperature {50-200 ˚C} and the time of heat treatment {10min-24hrs} include the claimed invention range, fine powder would be eliminated, and this meets the claimed step (3) (ii).
For the above reasons claims 1-24 stand rejected and claim 25 is included in the above prior art rejection.
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.
Correspondence
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BS
October 18, 2025
/BETELHEM SHEWAREGED/
Primary Examiner
Art Unit 1785