DETAILED ACTION
Claims 1, 4, 5, 7, 8, 14, 15, 30 and 47-51 are pending as amended on 3 April 2026, claims 11, 31-32, 34 and 43 are withdrawn from consideration.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Applicant’s amendments to the claims and the remarks/arguments have been entered and fully considered.
Response to Amendment and Arguments
Applicant’s amendment overcomes the objection to claims 1, 4, 5, 7, 8, 14, 15, 30 and 47-51. The objection has been withdrawn.
Applicant’s amendment does not distinguish from Ghosh) in view of SAKANISHI.
Applicant’s arguments in light of the amendment has been fully considered but are not persuasive.
Applicant argues that Ghosh in view of SAKANISHI does not teach polyglycerol as amended. The examiner disagrees. Instant disclosure exemplifies polyglycerol additive as a lipophilic polyglycerol , which is an alkyl polyglycerol ether (Instant Table 1, PG-E), and claim 2 as originally filed specifies that “the polyglycerol comprises a polyglycerol alkyl ether, a polyglycerol alkyl ester, or a combination thereof”. SAKANISHI teaches that polyglycerol alkyl ether contains polyglycerol chain and has a formula of RO-(-C3H6O2)n-H([0011] and [0014]), which meets the claimed term of “polyglycerol” in light of the instant disclosure. As such previous rejections stand and reiterated below.
Claim Rejections - 35 USC § 103
Claims 1, 4-5, 7, 8, 14, 30 and 47-49 stand, and new claims s 50 and 51 are rejected under 35 U.S.C. 103 as being unpatentable over US2009/0143450A1(Ghosh) in view of SAKANISHI.
Regarding claims 1, 4-5, 7, 8, 14 and 47-49, Ghosh teaches an aqueous emulsion comprises emulsified copolymers derived from one or more one or more monoethylenically unsaturated monomers including 2-ethylhexyl(meth)acrylate ([0018], [0019] and [0026]), which meets the claimed formula (1) and polymer, and emulsion stabilizing agents such as a combination of anionic and nonionic dispersing agent/surfactant ([0026]), wherein the polymer may have a weight average molecular weight in the range 5,000-5,000,000 as measured by GPC([0035]), which overlaps with the claimed range.
One of ordinary skill in the art at the time the invention was made would have found it obvious to include the polymers of the instantly claimed molecular range since it has been held that in the case where the claimed ranges “overlap or lie inside range disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 f. 2d 257,191 USPQ 90(CCPA 1976). See MPEP 2144.05.I.
Generally, differences in ranges will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such ranges is critical. See MPEP 2144.05, In re Boesch, 617 F2d 272, 205 USPQ 215 (CCPA 1980); In re Aller, 220 F2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) and In re Hoeschele, 406 F2d 1403, 160 USPQ 809 (CCPA 1969).
Ghosh further teaches that the anionic dispersing agent/surfactant comprises sodium octyl sulfosuccinate ([0027]), which meets the claimed surfactant additive thus HLB, and the nonionic dispersing agent/surfactant comprises polyoxyethylene ([0028]).
Ghosh does not disclose polyglycerol.
SAKANISHI teaches a polyglycerol alkyl ether exhibits superior emulsifying activity to those of polyalkylene oxide surfactant ([0004], [0006]- [0009] and [0014]), wherein the polyglycerol alkyl ether comprises branched aliphatic hydrocarbon chain and polyglycerol chain ([0009], [0011] and [0014]), and having a formula ([0011]):
RO-(-C3H6O2)n-H
which meets the claimed term of polyglycerol in light of the instant disclosure (Table 1); and wherein n is 2 to 10, R is exemplified as hexyldecyl ([0023] and [0067]), thus a molecular weight of 374 to 966, calculated by the examiner, which meets the claimed molecular weight.
SAKANISHI teaches that the polyglycerol alkyl ether can be used as emulsifiers for synthetic resins including acrylate polymers([0012] and [0047]), which provides superior emulsifying activity stably over time and temperature due to the presence of polyglycerol chain whose hydrophilicity hardly varies with temperature([0006],[0008] and [0014]).
At the time the invention was made it would have been obvious for a person of ordinary skill in the art to replace the polyoxyethylene nonionic dispersing agent/surfactant of Ghosh with the polyglycerol alkyl ether of SAKANISHI. The rationale to do so would have been the motivation provided by the teachings of SAKANISHI that to do so would provide superior emulsifying activity stably over time and temperature ([0007] and [0014]).
Regarding claim 30, Ghosh exemplifies an emulsion comprising 1514.44 pounds of ethylhexylacrylate based polymer A (solid content of 45.6% )in 2628.82 pounds of emulsion ([0103], Table 3 and 5), which is equivalent to about 26 wt.% estimated by the examiner, i.e., 1514.44X45.6%/2628.82, which meets the claimed amount.
Regarding the viscosity and stability of claims 50 and 51, Ghosh and Sakanishi teach all of the claimed ingredients in the claimed amount, absent evidence to the contrary, one of ordinary skill in the art would have reasonable basis to expect that the claimed viscosity and storage stability would naturally arise and be achieved by a composition with all the claimed ingredients under similar storage conditions. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Claim 15 stands rejected under 35 U.S.C. 103 as being unpatentable over Ghosh in view of SAKANISHI as applied to claims 1, 4-5, 7, 8, 14, 30 and 47-51 above, and further in view of Silvers.
The combined teachings of Ghosh and SAKANISHI are set forth above.
Ghosh further teaches the emulsion comprises buffers and amine stabilizers ([0050]).
Ghosh does not expressly disclose the presence of an trialkanol amine.
Silvers teaches that triethanolamine can stabilize acrylic latex emulsion by buffering the emulsion ([0029]).
At the time the invention was made it would have been obvious for a person of ordinary skill in the art to include the triethanolamine of Silvers in the emulsion of Ghosh and SAKANISH. The rationale to do so would have been the motivation provided by the teachings of Silvers that to do so would predictably provide buffering of the emulsion to stabilize the emulsion ([0029]), and further since it has been held that it is prima facie obviousness to use a known material based on its suitability for its intended use, in the instant case, a buffering agent for acrylic emulsions. See MPEP 2144.06(II) and 2144.07; In re Fout, 675 F2d 297, 213 USPQ 532 (CCPA 1982); Sinclair & Carroll Co v Interchemical Corp, 325 US 327, 65 USPQ 297 (1945); In re Leshin, 227 F2d 197, 125 USPQ 416 (CCPA 1960) and Ryco, Inc v Ag-Bag Corp, 857 F2d 1418, 8 USPQ2d 1323 (Fed Cir 1988).
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 AIQUN LI whose telephone number is (571)270-7736. The examiner can normally be reached Monday-Friday 9:00 am -4:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached at 571-2721302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AIQUN LI/Ph.D., Primary Examiner, Art Unit 1766
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