The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This action is responsive to the amendment filed on June 9, 2026.
Claims 1-4, 6-18 and 20 are pending. Claims 5 and 19 were cancelled. Claims 7-15 and 20 are withdrawn from consideration as being drawn to nonelected inventions. Claims 1-2, 4, and withdrawn claims 7 and 10 are currently amended.
The incorporation of the “Brief Description of the Drawing” and its header before “Detailed Description of the Invention” header on page 13 of the specification is appreciated.
The rejection of claims 1-3 and 6 under 35 U.S.C. 102(a)(1) as being anticipated by Kochvar et al. (US 2002/0161088) is withdrawn in view of Applicant’s amendment.
Claim Rejections - 35 USC § 112
Claims 2 and 18 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 2 is indefinite because the minimum amount of the plasticizer in line 3, i.e., “20” is outside the “at least 22% by weight” of the plasticizer in claim 1, line 2.
Claim 18 depends from cancelled claim 5. When amending this claim, please note that this claim cannot depend from claim 1 since it will be a duplicate of claim 6, nor will this claim depend from claim 4 since it will be a duplicate of claim 16.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-4, 6 and 16-18 are rejected under 35 U.S.C. 103 as being unpatentable over Kochvar et al. (US 2002/0161088, already of record), hereinafter “Kochvar.”
Regarding claims 1-4, 6, 16 and 18, Kochvar teaches water-soluble films and articles made therefrom that are readily dissolvable in cold water (see [0001]) wherein the cold water soluble film comprises a film-forming composition comprising from about 50 wt% to about 99.9 wt% of a water-soluble polymer material and from about 0.1 wt% to about 50 wt% of a principal solvent (see [0013]-[0015] and [[0017]), which includes 1,2-hexanediol (also known as 1,2-hexylene glycol), among others (see [0037]). The water-soluble polymer comprises a first polymer having a molecular weight greater than about 50,000, and a second polymer having a molecular weight of less than about 30,000 (see [0027] and claim 5), and the water-soluble polymer comprises a polyvinyl alcohol (see claim 2). Kochvar also teaches that plasticizers may be included in the film-forming composition to help provide flexibility to the film in the range from 0% to 40% by weight of the film-forming composition, and some examples include glycerine (also known as glycerol), poly(alkylene glycols), and alkane diols like 1,2-propanediol or 1,2 propylene glycol and 1,6 hexanediol (see [0044]). Kochvar also teaches that some materials have dual function serving both as a principal solvent and as plasticizer (see [0044]). In one example, Kochvar teaches a water-soluble film comprising a 50/50 mix, i.e., 1:1 ratio, of polyvinyl alcohol (PVA) having a molecular weight (MW) of 6,000 and a degree of hydrolysis of 80%, and PVA having a MW of 78,000 and a degree of hydrolysis of 88% (see 3rd film in the Table on page 5). In another example, Kochvar teaches Film 2 which comprises 18 wt% 1,6-hexanediol and 2 wt% glycerine (see Table [0050]) as the only solvent and/or plasticizer. Kochvar, however, fails to specifically disclose a water-soluble film comprising more than one polyvinyl alcohol resin and a plasticizer content of at least 22% by weight of the film, wherein at least one polyvinyl alcohol resin has a weight average molecular weight of at least 50,000 g/mol and at least one polyvinyl alcohol resin has a weight average molecular weight of less than 50,000 g/mol, wherein the plasticizer content includes two plasticizers and wherein the ratio of the two plasticizers is from 1:1 to 8:1 as recited in claim 1.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have prepared a water-soluble film comprising a polyvinyl alcohol having a molecular weight greater than about 50,000, and polyvinyl alcohol having a molecular weight of less than about 30,000, a principal solvent like 1,2-hexanediol and a plasticizer like glycerine in their optimum proportions because the teachings of Kochvar encompass these essential ingredients. With respect to the specific proportions of the principal solvent like 1,2-hexanediol, which also act as a plasticizer as disclosed in [0044]), and the plasticizer like glycerine, and their ratio, considering that Kochvar teaches from about 0.1 wt% to about 50 wt% of a principal solvent (see [0015]) and from 0% to 40% by weight of plasticizer (see [0044]), the subject matter as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range disclosed by the reference (e.g., 20 wt% 1, 2 hexanediol and 5 wt% glycerine (25 wt% total), hence, 20:5 or 4:1 ratio) because overlapping ranges have been held to be a prima facie case of obviousness, see In re Malagari, 182 U.S.P.Q 549; In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990); In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). In addition, a prima facie case of obviousness exists because the claimed ranges "overlap or lie inside ranges disclosed by the prior art", see In re Wertheim, 541 F.2d 257,191 USPQ 90 (CCPA 1976; In re Woodruff; 919 F.2d 1575,16USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05(I).
Regarding claim 17, Kochvar, as discussed above, teaches from about 0.1 wt% to about 50 wt% of a principal solvent (see 0015] and [[0017]), and from 0% to 40% by weight of plasticizers which include glycerine (also known as glycerol), poly(alkylene glycols), and alkane diols like 1,2-propanediol or 1,2 propylene glycol and 1,6-hexanediol (see [0044]). Kochvar also teaches Film 2 which comprises 18 wt% 1,6-hexanediol and 2 wt% glycerine (see Table [0050]) as the only solvent and/or plasticizer. Kochvar, however, fails to specifically disclose two plasticizers like glycerine and 1,2 propylene glycol wherein the ratio of the two is from 1:1 to 8:1.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have substituted the 1,6-hexanediol with 1,2-propanediol or 1,2 propylene glycol, say in Film 2, because the substitution of art recognized equivalents as shown by Kochvar in [0044] is within the level of ordinary skill in the art. In addition, the substitution of one plasticizer for another is likely to be obvious when it does no more than yield predictable results. With respect to the ratio of the two plasticizers, i.e., 18 wt% 1,2 propylene glycol and 2 wt% glycerine (18:2 or 9:1), a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap (8:1 vs 9:1) but are close enough that one skilled in the art would have expected them to have the same properties, see Titanium Metals Corp. of America v. Banner, 778F.2d 775,227 USPQ 773 (Fed. Cir. 1985). See MPEP 2144.05 I. in the alternative, even though Kochvar does not explicitly disclose the specific proportions of each of the glycerine and 1,2-propylene glycol when used as a mixture, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to reasonably expect the proportions of each of the glycerine and 1,2-propylene glycol to be non-critical, which means that each proportion can vary in a wide range, hence, would overlap those recited. In addition, even though Kochvar teaches an additional principal solvent, this solvent is not excluded from the “comprising” language of the present claims since “comprising” leaves the claim open for the inclusion of unspecified ingredients even in major amounts, see Ex parte Davis et al., 80 USPQ 448 (PTO Ed. App. 1948). Also, the broad “comprising” and “containing” terminology do not exclude the presence of other ingredients in the composition, unlike the narrow “consisting of” language, see Swain v. Crittendon, 332 F 2d 820,141 USPQ 811 (CCPA 1964).
Response to Arguments
Applicant's arguments filed June 9, 2026 have been fully considered but they are not persuasive.
With respect to the obviousness rejection over Kochvar, Applicant argues that although Kochvar discloses a plasticizer content in the film ranging from 0% to 40%(see Kochvar [0044]), there is no disclosure in Kochvar of a “plasticizer content of at least 22% by weight of the film” and “the plasticizer content includes two plasticizers, and wherein the ratio of the two plasticizers is from 1:1 to 8:1.”
The Examiner respectfully disagrees with the above argument because, as stated in paragraph 8 above, Kochvar teaches cold water soluble film which comprises, aside from the water-soluble polymer material, from about 0.1 wt% to about 50 wt% of a principal solvent (see [0013]-[0015] and [[0017]), which includes 1,2-hexanediol (also known as 1,2-hexylene glycol), among others (see [0037]) and plasticizers in the range from 0% to 40% by weight of the film-forming composition, and some examples include glycerine (also known as glycerol), poly(alkylene glycols), and alkane diols like 1,2-propanediol or 1,2 propylene glycol and 1,6 hexanediol (see [0044]); and some materials have dual function serving both as a principal solvent and as plasticizer (see [0044]). Hence, considering that Kochvar teaches from about 0.1 wt% to about 50 wt% of a principal solvent (see [0015]), which also act as a plasticizer as disclosed in [0044]), and from 0% to 40% by weight of plasticizer (see [0044]), the subject matter as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range disclosed by the reference (for example, 20 wt% 1, 2 hexanediol and 5 wt% glycerine (25 wt% total), hence, 20:5 or 4:1 ratio) because overlapping ranges have been held to be a prima facie case of obviousness, see In re Malagari, 182 U.S.P.Q 549; In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990); In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). In addition, a prima facie case of obviousness exists because the claimed ranges "overlap or lie inside ranges disclosed by the prior art", see In re Wertheim, 541 F.2d 257,191 USPQ 90 (CCPA 1976; In re Woodruff; 919 F.2d 1575,16USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05(I).
Applicant also argues that the film #2 in the Table in paragraph [0050] of Kochvar, which contained the 1,6-hexanediol and glycerine, does not include two different molecular weight PVA components of the composition as claimed, instead only disclosing PVA of 6,000 M.W. (See Kochvar Table in [0050]), and the Action provides no rationale as to why 1,6-hexanediol and glycerine would be combined with a film having both the molecular weight components of PVA in the other films in the Table in paragraph [0049] or [0057]).
The Examiner respectfully disagrees with the above argument because the film #2 in the Table in [0050] was not cited under 35 U.S.C. 102(a) (1) rejection over Kochvar, rather under obviousness rejection, citing film #2 as comprising the two plasticizers, i.e., 1,6-hexanediol and glycerine. Film #2, however, also contains “POE 40 wt%” (polyethylene oxide) which is another water-soluble polymer and which is equivalent to polyvinyl alcohol having a molecular weight greater than about 50,000 (see [0025]-[0027]).
Applicant also argues that the present disclosure shows a surprising synergistic effect when the two liquid plasticizers are used above 20% where the sealing strength of the film increases (see present specification Examples 11-13 in Table 2 on pages 15 and 16), and Kochvar does not disclose this surprising effect.
The showing in the specification, pages 15 and 16 and Fig. 1, in particular Examples 11-13 in Table 2, have been carefully considered, however, the showing is not commensurate in scope with the present claim 1. The showing is only true for polyvinyl alcohol (PVOH) having a weight average molecular weight of 100,000 g/mol, PVOH having a weight average molecular weight of 44,000 g/mol in their recited proportions, glycerol and 1,2 propylene glycol in a 1:1 wight ratio, where the total plasticizers in Examples 12-13 are 24 wt% and 30 wt%, respectively. In Table 2, please note that Example 2, which only contain 20 wt% glycerol as the plasticizer and Example 11 having 10 wt% glycerol and 10 wt% 1,2 propylene glycol (20 wt% total plasticizers having 1:1 ratio) both have the same Maximum Force of 30.6N. Hence, the results in Example 11 does not appear to be unexpected. Examples 12 and 13, having glycerol and 1,2-propanediol as the plasticizers, show a higher Maximum Force when compared with Example 11 when the total amount of plasticizers are 24 wt% and 30 wt%, respectively. Hence, the showing is only true for the specific ingredients and proportions recited in Examples 12 and 13, and not the generic PVOH average molecular weight, and generic plasticizers and wide ratio of plasticizers in claim 1.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LORNA M DOUYON whose telephone number is (571)272-1313. The examiner can normally be reached Mondays-Fridays; 8:00 AM-4:30 PM.
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, Angela Brown-Pettigrew can be reached at 571-272-2817. 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.
/LORNA M DOUYON/Primary Examiner, Art Unit 1761
Prosecution Insights