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 .
This Office action is in response to the amendment filed 9/9/2026. Claims 1-16 are currently pending in the application.
Election/Restrictions
Applicant’s election without traverse of group I, drawn to claims 1 and 6-7, in the reply filed on 9/9/2026 is acknowledged.
Claims 2-5 and 8-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 9/9/2026.
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.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 4-6, of copending Application No. 19/037,845 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because while present claims are drawn to modifier comprising a modified ethylene-vinyl alcohol resin having a chemical structure of formula 1, claims in copending application are drawn to multilayer structure comprising a layer of modified ethylene-vinyl alcohol copolymer having the same structure (i.e., modified ethylene-vinyl alcohol based resin in present application and copending application are represented by formula:
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wherein X is an organic group having a heteroatom and “n” represented a positive integer.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 102
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 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 and 6-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yano (JP 2019-163379 A).
It is noted that JP 2019-163379 A is in Japanese. A copy of the machine translation into English is provided with this Office action. All line/paragraph citations in the body of rejection below are to the English translation unless explicitly stated.
Prior to setting forth the rejection, it is noted that the recitation of "A modifier for an ABS resin" in the preamble (cf. independent claim 1) is deemed to be a statement of purpose or intended use which is not seen to result in any structural difference between the instantly claimed invention and Yano and hence the preamble fails to limit the claim. MPEP 2111.02
Regarding claim 1, Yano teaches a modified vinyl alcohol resin (title). See example 1, wherein ethylene-vinyl alcohol copolymer was modified with ε-caprolactone monomer (paragraph 0118) which reads on modified ethylene-vinyl alcohol resin in present claim 1. The modified vinyl alcohol resin is represented by chemical formula 1:
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wherein X represents an organic chain having a heteroatom and “n” represents a positive integer (paragraphs 0011-0012) which reads on the structural unit represented by chemical formula 1 in present claim 1.
Regarding claim 6, Yano teaches that the modification ratio of the modified vinyl-alcohol based resin is 0.1 to 30 mol% (paragraph 0085).
Regarding claim 7, Yano teaches that a method for producing a modified vinyl alcohol-based resin having the structural unit represented by formula 1 includes a step of melt-kneading a vinyl-alcohol based resin and a compound having a hetero-functional group (paragraph 0070). A modified vinyl alcohol-based resin in which a degree of coloration is suppressed and which is excellent in appearance can be provided when a cyclic compound having a hetero-functional group is used as a compound having a hetero-functional group, and a ring-opening polymerization reaction of cyclic compound having a hetero-functional group in the presence of vinyl alcohol-based resin (paragraphs 0071-0072). Examples of cyclic compounds having a hetero-functional group include lactones having 3 to 15 carbon atoms that form an aliphatic polyester by ring-opening polymerization (paragraphs 0052 and 0053).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KARUNA P REDDY whose telephone number is (571)272-6566. The examiner can normally be reached 8:30 AM to 5:00 PM M-F.
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, Arrie (Lanee) Reuther can be reached at 571-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KARUNA P REDDY/Primary Examiner, Art Unit 1764
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