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 along with the Request for Continued Examination (RCE) filed on 04/21/2026 has been fully considered. Claim 1 is amended, claims 3-5 are cancelled, claims 26-27 are added and claims 1, 2 and 6-27 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, 6-14, 22, 25 and 27 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 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, 3, 4 and 6 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, 12 and 25 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. Current claim 27 corresponds to claim 11 of ‘186 where the powder is eliminated by sieving.
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 indicated that the obviousness-type double patenting rejection will address upon approaching allowance.
Claims 11, 12 and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Tadahito et al. (WO 2020/009178 A1).
Claims 11 and 27: 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 {instant claim 27} [¶44]. Tadahito teaches the produced PVA passes through sieve of a wire mesh {instant claim 27} [¶72], which indicates the PVA can be in a powder form. 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) and (iii).
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].
Response to Arguments
Applicant’s argument is based on that the office has not explained why the heating temperature and duration disclosed in Tadahito would result in elimination of fine powder. This argument is not persuasive for the following reason. Tadahito teaches the produced PVA passes through sieve of a wire mesh ¶72.
For the above reason claims 11 and 12 stand rejected and claim 27 is included in the prior art rejection.
Allowable Subject Matter
Claims 1, 2, 6-10 and 13-26 are allowed.
Closest prior art Tadahito et al. (WO 2020/009178 A1) teaches a vinyl alcohol polymer (PVA hereinafter) comprising a monomer of maleic acid. Tadahito teaches the PVA has a degree of saponification of 68-99.9%; and a degree of polymerization of 200-3000. In this case, the molecular weight of the PVA can be calculated to be 23,214 to 348,210, wherein this range overlaps with the claimed 200,000 to 800,000. Tadahito teaches the PVA has a water insoluble content of 2000 ppm or less. Tadahito teaches the PVA has a content of side chain 0.01-0.5% which overlaps with the claimed 0.93 or less degree of branching. Tadahito teaches the PVA may comprises a monomer of maleic acid or fumaric acid. However, Tadahito does not teach the vinyl alcohol polymer satisfies the following inequality (I)
S x P > 250 (I)
where, in the inequality (I), S represents a percentage content (mol%), with respect to total structural units, of the structural unit derived from at least one selected from the group consisting of: the monomer comprising a carboxy group; and the derivative of the monomer; and P represents the viscosity-average degree of polymerization as recited in current claim 1.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BETELHEM SHEWAREGED whose telephone number is (571)272-1529. The examiner can normally be reached Monday -Friday 7am-4:30pm.
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, Mark Ruthkosky can be reached on 571-272-1291. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
BS
April 27, 2026
/BETELHEM SHEWAREGED/
Primary Examiner
Art Unit 1785
Prosecution Insights