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 § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 14 and 15 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 14 recites the limitation "the component other than an ethylene-vinyl alcohol copolymer" in lines 1-2. There is insufficient antecedent basis for this limitation in the claim.
Claim 15 recites the limitation "the component other than an ethylene-vinyl alcohol copolymer" in lines 1-2. There is insufficient antecedent basis for this limitation in the claim.
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 1-6 and 9-14 are rejected under 35 U.S.C. 103 as being unpatentable over Furukawa et al. (US 2010/0055482 A1).
Regarding Claim 1, Furukawa discloses a multilayer structure having a layer (a) comprising a resin composition comprising an ethylene-vinyl alcohol copolymer (A) (EVOH) and a polyamide-based resin (B) (Abstract). The EVOH has an ethylene content of 10 to 60 mol% (para 0031). Furukawa further discloses multilayer structures wherein the layer (a) is not an outermost layer (para 0067). The multilayer structure may be stretched by uniaxial stretching (para 0071).
In light of the overlap between the claimed multilayer structure and that disclosed by Furukawa, it would have been obvious to one of ordinary skill in the art to produce a multilayer structure that is both disclosed by Furukawa and is encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Regarding Claim 2, Furukawa discloses all the limitations of the present invention according to Claim 1 above. Furukawa further discloses uniaxially stretching the multilayer structure with a stretching rate of 5 times or more (para 0072).
Regarding Claim 3, Furukawa discloses all the limitations of the present invention according to Claim 1 above. Furukawa further discloses the content ratio of the EVOH (A) to the polyamide-based resin (B) in the resin composition is 95/5 to 60/40 by weight (para 0057) and layer (a) is not required to comprise any other components. Therefore, it would have been obvious to produce the multilayer structure wherein the layer (a) comprises EVOH as a main component (i.e. 50 mass% or more, according to para 0014 of the present specification).
Regarding Claim 4, Furukawa discloses all the limitations of the present invention according to Claim 1 above. Furukawa further discloses the multilayer structure may comprise a thermoplastic resin layer (para 0065).
Regarding Claim 5, Furukawa discloses all the limitations of the present invention according to Claim 1 above. Furukawa further discloses the multilayer structure may comprise an adhesive resin layer (para 0067).
Regarding Claim 6, Furukawa discloses all the limitations of the present invention according to Claim 1 above. While Furukawa further discloses the multilayer structure may comprise a “polyamide based resin layer” (para 0068), this layer is not required, and there is no disclosure or requirement of a layer comprising polyamide resin in an amount of 50 mass% or more. Therefore, it would have been obvious to produce the multilayer structure not having a layer comprising polyamide as a main component (i.e. 50 mass% or more, according to para 0035 of the present specification).
Regarding Claim 9, Furukawa discloses a multilayer structure having a layer (a) comprising a resin composition comprising an ethylene-vinyl alcohol copolymer (A) (EVOH) and a polyamide-based resin (B) (Abstract). The EVOH is a copolymer of ethylene, vinyl ester, and a 1,2-glycol bond structural unit (1) (paras 0005, 0012); no other monomers are required. The EVOH has an ethylene content of 10 to 60 mol% (para 0031), and a content of the structural unit (1) of 0.1-30 mol% (para 0006).
Furukawa further discloses multilayer structures wherein the layer (a) is not an outermost layer (para 0067). The multilayer structure may be stretched by uniaxial stretching (para 0071).
In light of the overlap between the claimed multilayer structure and that disclosed by Furukawa, it would have been obvious to one of ordinary skill in the art to produce a multilayer structure that is both disclosed by Furukawa and is encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Regarding Claim 10, Furukawa discloses all the limitations of the present invention according to Claim 9 above. Furukawa further discloses the resin composition may include a blend of EVOH copolymers, including EVOH that consists of an ethylene structural unit and a vinyl alcohol structural unit (para 0045-0046). Furukawa discloses in the case of a blend of EVOH copolymers (para 0047), it is not preferable to have differing ethylene contents (i.e. each EVOH copolymer would have similar ethylene content, within 10 to 60 mol% (para 0031)).
Furukawa further discloses multilayer structures wherein the layer (a) is not an outermost layer (para 0067). The multilayer structure may be stretched by uniaxial stretching (para 0071).
In light of the overlap between the claimed multilayer structure and that disclosed by Furukawa, it would have been obvious to one of ordinary skill in the art to produce a multilayer structure that is both disclosed by Furukawa and is encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Regarding Claims 11-12, Furukawa discloses all the limitations of the present invention according to Claim 9 above. Furukawa further discloses uniaxially stretching the multilayer structure with a stretching rate of 5 times or more (para 0072).
Regarding Claim 13, Furukawa discloses a multilayer structure having a layer (a) comprising a resin composition comprising an ethylene-vinyl alcohol copolymer (A) (EVOH) and a polyamide-based resin (B) (Abstract). The resin composition has content ratio of (A)/(B) of 95/5 to 60/40 (para 0057) and no other components are required (i.e. the resin composition may have a content of EVOH of 60-95%). The EVOH has an ethylene content of 10 to 60 mol% (para 0031).
Furukawa further discloses multilayer structures wherein the layer (a) is not an outermost layer (para 0067). The multilayer structure may be stretched by uniaxial stretching (para 0071).
In light of the overlap between the claimed multilayer structure and that disclosed by Furukawa, it would have been obvious to one of ordinary skill in the art to produce a multilayer structure that is both disclosed by Furukawa and is encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Regarding Claim 14, Furukawa discloses all the limitations of the present invention according to Claim 13 above, including the resin composition having a content ratio of (A)/(B) of 95/5 to 60/40 (para 0057) and no other components are required (i.e. the resin composition may contain 5-40% of a component other than EVOH).
The only deficiency of Furukawa is that Furukawa discloses the use of 5% of a component other than EVOH, while the present claims require less than 5%.
It is apparent, however, that the instantly claimed amount of less than 5% and that taught by Furukawa are so close to each other that the fact pattern is similar to the one in In re Woodruff , 919 F.2d 1575, USPQ2d 1934 (Fed. Cir. 1990) or Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed.Cir. 1985) where despite a “slight” difference in the ranges the court held that such a difference did not “render the claims patentable” or, alternatively, that “a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough so that one skilled in the art would have expected them to have the same properties”.
In light of the case law cited above and given that there is only a “slight” difference between the amount of component other than EVOH disclosed by Furukawa and the amount disclosed in the present claims, it therefore would have been obvious to one of ordinary skill in the art that the amount of component other than EVOH disclosed in the present claims is but an obvious variant of the amounts disclosed in Furukawa, and thereby one of ordinary skill in the art would have arrived at the claimed invention.
Claims 9-10 and 13-15 are rejected under 35 U.S.C. 103 as being unpatentable over Ryuta (JP 2016/007754 A).
Regarding Claims 9-10, Ryuta discloses a multilayer structure comprising an EVOH resin layer (alpha) (para 0043), having an ethylene structural unit content of 20-60 mol% (para 0046). The EVOH resin may optionally be a copolymer obtained from monomers other than ethylene and vinyl ester, in an amount of 10 mol% or less (i.e. including 5 mol% or less or 0 mol%) (para 0050).
Ryuta discloses embodiments wherein the EVOH resin layer (alpha) in not an outermost layer of the multilayer structure (para 0120). The multilayer structure may be stretched by uniaxial stretching (para 0130).
In light of the overlap between the claimed multilayer structure and that disclosed by Ryuta, it would have been obvious to one of ordinary skill in the art to produce a multilayer structure that is both disclosed by Ryuta and is encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Regarding Claims 13-14, Ryuta discloses a multilayer structure comprising an EVOH resin layer (alpha) comprising EVOH resin (para 0043), the EVOH resin having an ethylene structural unit content of 20-60 mol% (para 0046). The EVOH resin layer (alpha) may comprise 50-99 wt% EVOH resin (i.e. including 95-99%) (para 0059) (i.e. the EVOH resin layer (alpha) may comprise 1-50% compounds other than the EVOH resin, including 1 to less than 5%).
Ryuta discloses embodiments wherein the EVOH resin layer (alpha) in not an outermost layer of the multilayer structure (para 0120). The multilayer structure may be stretched by uniaxial stretching (para 0130).
In light of the overlap between the claimed multilayer structure and that disclosed by Ryuta, it would have been obvious to one of ordinary skill in the art to produce a multilayer structure that is both disclosed by Ryuta and is encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Regarding Claim 15, Ryuta discloses all the limitations of the present invention according to Claim 13 above. While the EVOH resin layer (alpha) may comprise resins other than the EVOH resin (para 0060), these resins are not required. The component(s) other than EVOH may be plate-shaped inorganic filler (para 0072), an oxygen absorber (para 0076), or other non-resin additives (para 0082). Therefore it would have been obvious to a person having ordinary skill in the art to produce the multilayer structure of Ryuta, wherein the EVOH resin layer (alpha) does not comprise resin other than the EVOH resin.
Response to Arguments
In light of applicant’s amendments filed 06/02/2026, the Claim Objections of record are withdrawn.
In light of applicant’s amendment adding New Claims 9-15, New Grounds of rejection are set forth above.
Applicant's arguments filed 06/02/2026 have been fully considered but they are not persuasive.
Applicant argues that the present specification and data shows the criticality of the ethylene content of the EVOH being less than 32%.
However, Comparative Example 1, which has 32% ethylene EVOH, has the same “Good” stretchability as Examples 1-5, and has a transparency of 0.4% compared to the Examples ranging from 0-0.2%. Applicant has not stated or claimed a threshold of acceptable/unacceptable transparency %, and it is not clear than 0.4% is a substantially worse result than 0.2%. As set forth in MPEP 716.02(b) I, the burden is on applicant to establish that the results are unexpected and significant. Specifically, “The evidence relied upon should establish "that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance." Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992) (Mere conclusions in appellants’ brief that the claimed polymer had an unexpectedly increased impact strength "are not entitled to the weight of conclusions accompanying the evidence, either in the specification or in a declaration."); Ex parte C, 27 USPQ2d 1492 (Bd. Pat. App. & Inter. 1992) (Applicant alleged unexpected results with regard to the claimed soybean plant, however there was no basis for judging the practical significance of data with regard to maturity date, flowering date, flower color, or height of the plant.).
Additionally, there is no data at the upper end of the claimed range of ethylene of less than 32 mol%. The examples only use EVOH with a ethylene content of 29 mol% or 25 mol%.
Therefore, applicant’s argument regarding the criticality of the ethylene content of the EVOH being less than 32% is not persuasive, and the rejection of record is maintained.
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 BETHANY M MILLER whose telephone number is (571)272-2109. The examiner can normally be reached M-F 8:00-4:00.
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/BETHANY M MILLER/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787
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