DETAILED CORRESPONDENCE
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 .
Applicants' arguments have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn due to Applicant's amendments and/or arguments. The following rejections and/or objections are either reiterated or newly applied.
Claim Rejections - 35 USC § 103
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 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.
Claims 1-2, and 4 are rejected under 35 U.S.C. 103 as being unpatentable over US 20160106635 A1 (Yan et al.).
Regarding Claims 1-2 and 4, Yan essentially teaches the claimed invention and discloses in the entire document, particularly in the abstract and claims and at paragraphs, [15-16, 41, 52] and [0064-0065, 0138-39], a methyl silicon core ([138, 349]), a PMMA copolymer shell ([15], [21], [41-42]), and zwitterionic compound sulphobetaines ([0065]). Because the materials are the same, silicon and polymers inherently have chains. Yan doesn’t disclose the exact language of (a) physical attachment engagement entanglement chains as claimed or (b) the amount of zwitterionic in a residue; however, (a1) an attachment as claimed is inherently present due to the materials themselves and (b1) the core shell morphology and lowering the amount of zwitterionic compound is optimizable given its surfactant effect.
One of ordinary skill in the art before the effective filing of the pending patent application would have considered it prima facie obvious to have from Yan a binding polymer that is capable of forming an interpenetrating polymer network of entanglements where the core and shell formation inherently exhibit due to the morphology of the material and the zwitterionic used to effect the surfactant properties.
Further re claim 2, the ratio is [54-55] expressed in a ratio by weight of the water phase monomer to the oil or core phase monomer is preferably in the range of from about 1:3 to about 1:50 or more, preferably from about 1:6 to 1:50 and the weight ratio of oil phase composition to water phase monomer is from 50:50 to 98:2, respectively.
When faced with a mixture, one of ordinary skill in the art would be motivated by common sense to select a 1:1 ratio, a ratio that falls within the presently claimed amount, absent evidence of unexpected or surprising results. Case law holds that "[h]aving established that this knowledge was in the art, the examiner could then properly rely... on a conclusion of obviousness, 'from common knowledge and common sense of the person of ordinary skill in the art within any specific hint or suggestion in a particular reference.'" In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969). Such a ratio reads on pending Claim 2 with a 1:1 ratio of methacrylic acid monomer to methyl methacrylate monomer.
Response to Arguments
Applicant’s amendments and arguments filed 08/01/25 have been fully considered but are moot because of the new ground of rejection as applied to the claims as amended. Regarding the molecular chains argued by applicant, note the following: the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See Mpep 2141.02:
V. DISCLOSED INHERENT PROPERTIES ARE PART OF "AS A WHOLE" INQUIRY
"In determining whether the invention as a whole would have been obvious under 35 U.S.C. 103, we must first delineate the invention as a whole. In delineating the invention as a whole, we look not only to the subject matter which is literally recited in the claim in question... but also to those properties of the subject matter which are inherent in the subject matter and are disclosed in the specification. . . Just as we look to a chemical and its properties when we examine the obviousness of a composition of matter claim, it is this invention as a whole, and not some part of it, which must be obvious under 35 U.S.C. 103." In re Antonie, 559 F.2d 618, 620, 195 USPQ 6,8 (CCPA 1977) (emphasis in original) (citations omitted) (The claimed wastewater treatment device had a tank volume to contractor area of 0.12 gal./sq. ft. The court found the invention as a whole was the ratio of 0.12 and its inherent property that the claimed devices maximized treatment capacity regardless of other variables in the devices. The prior art did not recognize that treatment capacity was a function of the tank volume to contractor ratio, and therefore the parameter optimized was not recognized in the art to be a result-effective variable.). See also In re Papesch, 315 F.2d 381, 391, 137 USPQ 43, 51 (CCPA 1963) ("From the standpoint of patent law, a compound and all its properties are inseparable.").for the requirements of rejections based on inherency.
Obviousness cannot be predicated on what is not known at the time an invention is made, even if the inherency of a certain feature is later established. In re Rijckaert, 9 F.2d 1531, 28 USPQ2d 1955 (Fed. Cir. 1993). See MPEP § 2112
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 TAMRA L. DICUS whose telephone number is (571)272-2022. The examiner can normally be reached M-F 8:00 am 4:00 pm.
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TAMRA L. DICUS
Primary Examiner
Art Unit 1787
/TAMRA L. DICUS/Primary Examiner, Art Unit 1787