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 .
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 1, 5, 9, 12, 17 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over JP-6697874-B2, in view of JP-2916136-B1.
Regarding claim 1
The ‘874 patent discloses a composition comprising a molded product and a method of making (abstract).
The ‘874 patent discloses that the composition comprises 60 wt % softwood pulp and 40 wt % carboxymethyl cellulose sodium salt(Experimental Example 1).
The ‘874 patent discloses that 25 wt % of the of the carboxymethyl cellulose salt is replaced by polyvinyl alcohol to leave 30 wt % carboxymethyl cellulose salt and 10 wt % polyvinyl alcohol (Experimental Example 8).
Although the ‘874 patent doesn’t disclose the use of starch with carboxymethyl cellulose salt, the ‘874 patent discloses the remaining limitations of the claim. However, the ‘136 patent discloses similar molding compositions and discloses that starch and polyvinyl alcohol are functional equivalents (para 0022). Therefore it would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to add to the teachings of the ‘874 patent by replacing the polyvinyl alcohol with starch, with a reasonable expectation of success, as suggested by the ‘136 patent.
With respect to the molded article not being an applicator for intravaginal insertion, neither reference discloses such an article.
Regarding claim 5
The’874 patent discloses that the water content of the molding material is 30 to 65 % by mass (para 0041).
Regarding claim 9
The ‘874 patent discloses the use of 0.3 to 2.0 parts by mass of a long chain fatty acid of a non-alkali metal (para 0031).
Regarding claims 12, 17
The ‘874 patent discloses injection or compression molded products is made by adding water to the binder material and kneading (para 0002).
Regarding claim 19
The ‘136 patent discloses the kneading operation is carried out at 70 C (para 0039).
Claims 2-4 and 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over JP-6697874-B2, in view of JP-2916136-B1, as applied to claims 1, 5, 9, 12, 17 and 19 above, in view of Weerawarna (US 20090325800).
Regarding claims 2, 4, 6 and 8
The ‘874 patent does not discloses the use of a mixture of hardwoods and softwoods. However, Weerawarna discloses similar compositions and methods and discloses that both softwoods and hardwoods may be used (para 0012). As such it would have been prima facie obvious to one skilled in the art at the time of the invention to add to the teachings of the ‘874 patent by using hardwoods, soft woods or a mixture of the two woods. Further, combining two or more materials disclosed by the prior art for the same purpose to form a third material that is to be used for the same purpose has been held to be a prima facie case of obviousness, see In re Kerkhoven, 205 U.S.P.Q. 1069.
Regarding claims 3 and 7
Although Weerawarna does not disclose the ratio of hardwood to softwood, without more the most obvious mixture is 50:50.
Allowable Subject Matter
Claim 20 is allowed.
Claims 10-11, 21 and 26-28 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: None of the prior art fairly teaches or suggest the limitations of these claims..
Response to Arguments
Applicants argue against the prior art rejections.
Applicants argue that Ueda does not disclose that starch and PVA are functionally equivalent. This is not persuasive as Ueda discloses that starch may be replaced by PVA, which would also make it obvious to replace PVA with starch as they are both water soluble binders. Further applicants have not presented any evidence of new or unexpected results for the use of starch versus PVA.
The remaining arguments have been fully considered but are not persuasive for the same reasons given above.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES E MCDONOUGH whose telephone number is (571)272-6398. The examiner can normally be reached Mon-Fri 10-10.
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JAMES E. MCDONOUGH
Examiner
Art Unit 1734
/JAMES E MCDONOUGH/Primary Examiner, Art Unit 1734
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