7DETAILED ACTION
Response to Arguments
Applicant's arguments filed 06/29/2026 have been fully considered but they are not persuasive.
Applicant’s arguments have been considered but are unpersuasive. Applicant contends that Akiyama cannot anticipate or render obvious the claimed invention because Akiyama calculates the crosslinking agent content based on the weight of the hydrophobized starch, whereas amended claim 1 calculates it based on the weight of the PVA resin. This argument elevates form over substance.
Applicant argues “Regarding the content of the crosslinking agent, the Office Action (page 3) refers to Akiyama paragraph [0040], asserting that "the crosslinking agent is added to the hydrophobized starch in a solid content of preferably 1 to 30% by weight which meets the limitation of wherein the crosslinking agent is contained in an amount of 0.1 to 50 parts by weight based on 100 parts by weight of the carboxy group-containing polyvinyl alcohol-based resin." However, the content of the crosslinking agent in claim 1 is based on the carboxy group-containing polyvinyl alcohol- based resin. This is in contrast to the content disclosed in Akiyama, which is based on the hydrophobized starch. Since the bases for calculating the contents are different, the two cannot be directly compared.”
The applicant argues that because the math baseline is different, the two references cannot be directly compared. Akiyama discloses a composition containing Starch, PVA Resin, and a Crosslinking Agent so even if Akiyama defines the crosslinking agent relative to the starch, one of ordinary skill in the art of oil-resistant sheet material could determine through routine experimentation or optimization a final composition where the crosslinking agent mass falls within the claimed "5 to 30 parts per 100 parts PVA" range.
Furthermore, using Akiyama's broad disclosure range (1% to 30% crosslinking agent based on starch) and using the base proportions from Example 3 (10 parts starch to 3 parts PVA), then the ratios can be compared and produce the following range:
• Akiyama Lower Limit (1% on Starch): Evaluates to 3.33 parts per 100 parts PVA.
• Akiyama Example 3 (10% on Starch): Evaluates to 33.33 parts per 100 parts PVA.
A prior art reference must be considered for all that it teaches to a person of ordinary skill in the art, and its working examples are not limiting. Akiyama explicitly discloses a broad, preferred range of 1 to 30% by weight of the crosslinking agent. While Example 3 utilizes a specific formulation that mathematically yields 33.3 parts by weight relative to the PVA resin, a routine calculation demonstrates that utilizing lower concentrations within Akiyama’s expressly disclosed preferred range (e.g., 2% to 8% by weight based on starch) will inherently result in a crosslinking agent content that falls squarely within the Applicant’s claimed range of 5 to 30 parts by weight.
Modifying the relative ratios of known components in a chemical composition represents nothing more than routine optimization of a result-effective variable. Because Applicant has provided no comparative data showing any unexpected results or critical differences between a concentration of 30 parts by weight and Akiyama’s disclosed 33.3 parts by weight, the modification is obvious. Accordingly, the rejection of claims 1, 2, 5, and 6 is maintained.
Claim Rejections - 35 USC § 103
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.
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, 2, 5 and 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Akiyama et al. (U.S. Pub. No. 2007/0087190).
Regarding claims1, Akiyama et al. teaches an oil-resistant sheet material characterized in that at least one coating layer containing a hydrophobized starch and a crosslinking agent is formed on at least one side of a substrate which meets the limitation of a coating agent comprising a crosslinking agent; and a modified starch (paragraph 26). Akiyama et al. teaches polyvinyl alcohol is modified by a carboxyl group which meets a broad and reasonable interpretation of a carboxy group-containing polyvinyl alcohol-based resin (paragraph 64). Akiyama et al. teaches a method of adding hydrophobic group containing a hydrocarbon group to starch by etherification which meets a broad and reasonable interpretation of wherein the modified starch is an etherified starch (paragraph 37). Akiyama et al. teaches crosslinking agent is added to the hydrophobized starch in a solid content of preferably 1 to 30% by weight which meets the limitation of wherein the crosslinking agent is contained in an amount of 0.1 to 50 parts by weight based on 100 parts by weight of the carboxy group-containing polyvinyl alcohol-based resin (paragraph 40). As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Furthermore, modifying the relative ratios of known components in a chemical composition represents nothing more than routine optimization of a result-effective variable. Since the instant specification is silent to unexpected results, it would have been obvious to one of ordinary skill in the art to change the amount of starch to PVA ration, since such a modification would have involved a mere change the amount of a component. A change in proportion is generally recognized as being within the level of ordinary skill in the art. In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 2, Akiyama et al. teaches a polyamide-epichlorohydrin resin as a crosslinking agent which meets the limitation of wherein the crosslinking agent is a polyamide polyamine epihalohydrin-based resin (paragraph 83). It is known in the art that epichlorohydrin is a specific type of epihalohydrin.
Regarding claim 5, Akiyama et al. teaches the polyvinyl alcohol is added in an amount of preferably less than 100% by weight based on the weight of the solid of the hydrophobized starch which meets the limitation of wherein the modified starch is contained in an amount of 1 to 1000 parts by weight based on 100 parts by weight of the carboxy group-containing polyvinyl alcohol-based resin (paragraph 54).
Regarding claim 6, Akiyama et al. teaches the oil resistance of paper is improved and as combined with the coating layer of the present invention which meets the limitation an oil-resistant paper comprising: a layer containing the coating agent according to claim 1 (paragraph 71).
Claim(s) 1, 2, 5-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Noda et al. (U.S. Pub. No. 2020/0269554).
Regarding claims 1 and 6, Noda et al. teaches a barrier material which meets a broad and reasonable interpretation of oil-resistant paper comprising: a layer containing the coating agent (paragraph 1). Noda et al. teaches styrene-butadiene-based synthetic adhesive in the present invention is a resin obtained by emulsion polymerization of a combination of styrene and butadiene used as main constituent monomers with various comonomers for the purpose of modification such as comonomers include methyl methacrylate, acrylonitrile, acrylamide, hydroxyethyl acrylate, and unsaturated carboxylic acids which produces an unsaturated carboxylic acid polyvinyl alcohol counts as carboxy PVA (paragraph 87). Noda et al. teaches hydroxyethyl etherified starch which meets the limitation of wherein the modified starch is an etherified starch (paragraph 88). Noda et al. teaches a crosslinking agent (paragraph 97). Noda et al. teaches the blending quantity of the crosslinking agent to be used is preferably in the range of 0.5 parts by weight or more and 30 parts by weight or less by weight or less in terms of dry weight based on 100 parts by weight of the total quantity of the water vapor barriering resin and the water-soluble polymer which overlaps with the crosslinking agent is contained in an amount of 5 to 30 parts by weight based on 100 parts by weight of the carboxy group-containing polyvinyl alcohol-based resin (paragraph 100).
Regarding claim 2, Noda et al. teaches a crosslinking agent comprising and amide compound (paragraph 98). Noda et al. teaches a polyamide epichlorohydrin (PAEH)-based resin which meets the limitation of wherein the crosslinking agent is a polyamide polyamine epihalohydrin-based resin (paragraph 164).
Regarding claim 5, Noda et al. teaches the blending quantity of the crosslinking agent to be used is preferably in the range of 0.5 parts by weight or more and 30 parts by weight or less by weight or less in terms of dry weight based on 100 parts by weight of the total quantity of the water vapor barriering resin and the water-soluble polymer which overlaps with the crosslinking agent is contained in an amount of 5 to 30 parts by weight based on 100 parts by weight of the carboxy group-containing polyvinyl alcohol-based resin (paragraph 100).
Regarding claim 7, Noda et al. teaches hydroxyethyl etherified starch (paragraph 79).
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.
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/GUINEVER S GREGORIO/Primary Examiner, Art Unit 1732 09/02/2026
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