DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Any new grounds of rejection set forth below are necessitated by Applicant’s amendment. For this reason, the present action is properly made final.
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, 3-17 are pending.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 3-17 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites the branched polymer is soluble in organic solvent. Support for this cannot be found. While [0044] of the PGPUB cites a specific solvent of THF, this does not support all organic solvents known to in the art, including all polar and non-polar solvents.
Claims 3-17 are subsumed by this rejection because of their dependence.
Appropriate correction and/or clarification is required.
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.
Claim 8 is 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 8 recites “(intermediate and out layers may or may not be cross linked)” and it would not be clear why the parenthesis are recited. Specifically, it is unclear whether the limitation(s) within the parenthesis are part of the claimed invention. See MPEP § 2173.05(d).
Appropriate correction and/or clarification is required.
Double Patenting
Claims 1-12 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of copending Application No. 17/439,655 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding claims 1-12: Claim 1 of copending 655 claims a the multi-stage flexible acrylic resin and branched polymer as stage d). However, this arrives at claim 1 of the present invention since it is a composition comprising both the multi-stage flexible acrylic resin and branched polymer.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 103
Claims 1, 3-17 are rejected under 35 U.S.C. 103 as being unpatentable over Guo et al. (US 2015/0183944) in view of Rhein et al. (5,270,397).
Regarding claim 1: Guo is directed to a composition comprising:
A multi-stage flexible acrylic resin composition.
Additives including stabilizer, plasticizers, impact modifiers, or other additives to prevent reduce or mask discoloration or deterioration cause by heating ageing exposure to light or weathering can be added ([0046]-[0047] Guo), although a branched polymer of claim 1 is not specifically recited.
Rhein is directed to an branched emulsion polymer used as an agent for modifying the impact resistance of rigid thermoplastic resin such as polymethylmethacrylate. The polymer is a product of reactants comprising one or more ethylenically unsaturated ester monomers, e.g. MMA, a chain transfer agent, and a crosslinker having two or more polymerizable double bonds in the molecule (resulting in a branched polymer) in an amount of 0.1-10 weight percent (col. 4 ll. 58-60 Rhein). While a relative amount of chain transfer agent and crosslinker is not mentioned, the amount of chain transfer agent is used in order to approximate the molecular weight of the rigid phase polymer which is to be modified with the emulsion polymer (col. 6 ll. 32-39 Rhein). Case law holds that “discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.” See MPEP 2144.05(II). Therefore, it would have been obvious to have selected an amount of crosslinker and chain transfer agent such that the amount of crosslinker in moles is less than the amount of chain transfer agent in moles.
One skilled in the art would have been motivated to have included the branched polymer of Rhein in the composition of Guo since Guo lists additives of impact modifiers, wherein Rhein teaches an impact modifier that is utilized for rigid polymethyl methacrylate resin (abstract Rhein). Therefore, it would have been obvious to one skilled in the art at the time the invention was filed to have included the branched polymer of Rhein in the composition of Guo to arrive at claim 1 of the present invention.
The composition is prepared by stirring the components as in the working examples (equivalent to blending the multi-stage flexible acrylic resin and additives including the branched emulsion polymer of Rhein).
The outer layer is not crosslinked (abstract Rhein) (equivalent to the branched polymer is not crosslinked). Further, the emulsion polymer core is optionally crosslinked. Finally, the amount of crosslinking agent is 0.1-10 precent by weight of the core (col. 4 ll. 58-60), which is the same amount recited in claim 1, and therefore one skilled in the art would expect to be within the scope of a non-crosslinked branched polymer.
The branched polymer is soluble in an organic solvent. Given the range in polarity and large range of possible organic solvents, one skilled in the art would conclude the branched polymer is soluble in at least a single organic solvent.
Regarding claim 3: The branched polymer of Rhein includes methyl methacrylate (equivalent to the structure wherein R is a hydrocarbyl group of 1 carbon atom and R’ is a monoethylenically unsaturated aliphatic group having 3 carbon atoms).
Regarding claim 4: A chain transfer agent of dodecyl mercaptan is disclosed (col. 7 ll. 58-63 Rhein).
Regarding claim 5: A crosslinking monomer of allyl methacrylate is utilized in the working examples.
Regarding claim 6: A crosslinker is used in an amount of 0.1-10 weight percent (col. 4 ll. 58-60 Rhein).
Regarding claim 7: While an amount of chain transfer agent is not mentioned, the amount of chain transfer agent is used in order to approximate the molecular weight of the rigid phase polymer which is to be modified with the emulsion polymer (col. 6 ll. 32-39 Rhein). Case law holds that “discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.” See MPEP 2144.05(II). Therefore, it would have been obvious to have selected an amount of chain transfer agent within the scope of claim 7.
Regarding claim 8: The multi-stage flexible polymer of Guo is a multi-stage sequential polymer composition comprising a first stage crosslinked acrylic polymer composition which forms a core, one or more intermediate layer acrylic polymer composition, and an outer acrylic polymer composition wherein the core and intermediate layer(s) and outer layer differ in intermediate layers differ in glass transition temperatures (abstract Guo).
Regarding claim 9: The combination of Guo and Rhein doesn’t mention a g’ of no more than 0.9. However, the composition produced in Guo and Rhein is substantially identical to the composition produced in the instant invention.
Case law holds that the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I).
Hence, Guo and Rhein suggests a composition having a g’ value within the scope of the claims. Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). 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, since one skilled in the art would not understand how to obtain the claimed properties with only the claimed reactants, claimed amounts, and substantially similar process of making.
Regarding claims 10-11: 10-60 parts of the impact modifier are admixed with 100 parts of the molding compound to be modified (col. 6 ll. 60-65 Rhein). Hence, 25 parts of the branched polymer of Rhein and 100 parts of the polymer to be modified of Guo is well within the scope of Guo and Rhein, as well as claims 10-11 of the present invention.
Regarding claim 12: The combination of Guo and Rhein doesn’t mention a melt flow index of at least 40g/10 minutes. However, the composition produced in Guo and Rhein is substantially identical to the composition produced in the instant invention.
Case law holds that the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I).
Hence, Guo and Rhein suggests a composition having a melt flow index within the scope of the claims. Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). 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, since one skilled in the art would not understand how to obtain the claimed properties with only the claimed reactants, claimed amounts, and substantially similar process of making.
Regarding claim 13: Other polymers that can be admixed include acrylate polymers and polyvinyl chloride (col. 6 ll. 54-64 Rhein).
Regarding claim 14: An extruded film is disclosed by Guo.
Regarding claim 15: A sheet having a thickness of 150 to 500 microns is disclosed ([0045] Guo).
Regarding claim 16: The sheets are transparent and shows no signs of crease whitening (see Table 3 and [0045] wherein the sheets are used for automotive windshields, and are therefore transparent).
Regarding claim 17: The combination of Guo and Rhein doesn’t mention the branched polymer is 100% soluble in THF.
However, the branched polymer produced in Rhein is substantially identical to the branched polymer of the present invention.
Case law holds that the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I).
Hence, Rhein suggests a branched having a solubility in THF within the scope of the claims. Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
Response to Arguments
Applicant's arguments filed 12/29/2025 herein “Remarks” have been fully considered but they are not persuasive.
Applicant argues (p. 6-8 Remarks) the Examiner correlates the emulsion polymer of Rhein to the branched polymer of claim 1. Rhein’s polymer is defined as having a crosslinked core, elastomeric phase, and a rigid shell. See col. 4 l. 28. Rhein expressly teaches the rigid core is a crosslinked homo or copolymer, and the elastomeric phase is crosslinked. Rhein expressly teaches the elastomer phase is an essential component. Col. 5 ll. 26-27. Rhein further states sufficient crosslinking is essential to ensure the crosslinked polymer is not essentially swollen during polymerization. Col. 5 ll. 29-30. The Examiners reliance on the fact Rhein’s rigid shell is not crosslinked therefore overlooks Rhein’s rigid shell is not crosslinked. The core is not an isolated polymer from the shell.
This argument is not found persuasive since the shell is not crosslinked, and therefore characterizing the branched polymer as a crosslinked polymer is not an accurate characterization. Further, the present invention allows up to 10 weight percent of a crosslinking agent (col. 4 ll. 58-60 Rhein), which is the same amount as recited in present claim 1. Finally, the core is “optionally crosslinked” col. 4 ll. 43-53 Rhein, and therefore a non-crosslinked core appears to be within the scope of Rhein.
Applicant argues (p. 8-9 Remarks) assuming arguendo Rhein’s shell could be viewed in isolation, the shell layer nonetheless fails to teach or suggest Applicants branched polymer.
This argument is not found persuasive since claim 1 requires a crosslinking agent. Likewise, the “crosslinked” polymer of Rhein contains the same amount of crosslinker. Hence, one skilled in the art would easily conclude the “crosslinked” polymer of Rhein is within the scope of claim 1.
Applicant argues (p. 9 Remarks) Rhein fails to teach or suggest a soluble branched polymer as recited in claim 1. Rhein teaches when its emulsion polymer is subjected to a solvent for the rigid test, the elastomer phase of the rigid phase covalently bonded therewith remain undissolved and the undissolved portion should exceed the combined weight of the core and elastomer by 15%, preferably 30-80 wt%. Thus Rhein confirms the emulsion polymer is crosslinked.
This argument is not found persuasive since a branched polymer that is soluble in organic solvent recited in claim 1 is not supported by the present application. Further, Rhein does not mention a specific solvent and therefore it is impossible to determine the present branched polymer would be soluble in the same solvent, since the solvent is unknown.
Applicant argues (p. 10 Remarks) Applicant’s branched polymer by contrast is non-crosslinked capable of uniformly blending with a flexible acrylic resin to produce a composition with reduced melt viscosity and reduced whitening, and Rhein’s emulsion polymer cannot behave like Applicant’s branched polymer. One skilled in the art would expect Rhein’s crosslinked particles to scatter light and cause haze and not maintain transparency. Rhein’s polymer would also be expected to disrupt the optical clarity uniformity, and mechanical performance required to Applicant’s composition.
This argument is not found persuasive since “[i]t is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant”, In re Linter, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972); In re Dillon, 91 9 F.2d 688,16 USPQ2d 1897 (Fed. Cir. 1990) cert. denied, 500 U.S. 904 (1991). Also, while there must be motivation to make the claimed invention, there is no requirement that the prior art provide the same reason as the applicant to make the claimed invention, Ex parte Levengood, 28 USPQ2d 1300,1302 (Bd. Pat. App. & Inter. 1993). See MPEP 2144 (IV).
Applicant argues (p. 10-11 Remarks) there is no reason to combine Guo and Rhein in the manner proposed. Guo teaches flexible multistage acrylic resins designed for transparent films in which control of melt flow and optical uniformity is essential. Rhein teaches a multiphase emulsion polymer with a crosslinked elastomer phase and remains as individual particles in PMMA. The two references operate through fundamentally different material architectures and address different performance objectives. The two references address different materials, structures, and intended functions, and neither suggests Rhein’s crosslinked multiphase emulsion polymer would provide any benefit to Guo.
This argument is not found persuasive since the only mention of transparency in Guo is in the background section at [0002]. Likewise, while optical uniformity is mentioned, it is only mentioned in regards to color of the working examples. Further, one skilled in the art would have been motivated to have included the branched polymer of Rhein in the composition of Guo since Guo lists additives of impact modifiers, wherein Rhein teaches an impact modifier that is utilized for rigid polymethyl methacrylate resin (abstract Rhein).
Applicant argues (p. 12 Remarks) the improvements of impact resistance in Guo’s flexible acrylic composition, which do not concern impact strength. One skilled in the art would have no reason to expect Rhein’s material would enhance any property relevant to flexible film formation in Guo.
This argument is not found persuasive since Guo specifically teaches an impact modifier can be added as an additive. Rhein specifically states the branched polymer can be used in synthetic resins of polymethyl methacrylate as well as acrylate copolymers (col. 6 ll. 54-64 Rhein).
Applicant argues (p. 12 Remarks) impermissible hindsight.
This argument is not found persuasive since case law holds “[a]ny judgement on obviousness is in a sense necessarily a reconstruction based on hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill in the art at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper.” In re McLaughlin 443 F.2d 1392, 1395, 170 USPQ 209, 212 (CCPA 1971). See MPEP 2145 (X)(A). In the instant case, the present office action takes into account only knowledge which was within the level of ordinary skill in the art at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, and therefore impermissible hindsight is not required to arrive at the present invention.
Applicant argues (p. 13-14 Remarks) unexpected results. The present invention demonstrates Examples A1-A3 and A6-A9 incorporating the claimed non-crosslinked branched polymer into the flexible acrylic resin results in compositions that exhibit significantly higher melt flow indices while maintaining low haze and eliminating crease whitening. They also contain additive at 15% loading show substantial increase in melt flow while still showing no haze. These properties are maintained even at reduced film thickness and the spiral flow and extrusion data in Tables 4-5 further demonstrate enhanced processability across a wider operating window.
The burden of showing unexpected results rests on the person who asserts them by establishing that the difference between the claimed invention and the closest prior art was an unexpected difference. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). Further, the showing of unexpected results must be commensurate in scope with the claims. See In re Peterson, 315 F.3d 1325, 1330-31 (Fed. Cir. 2003). In the present case, not amounts of monomers of the branched polymer are recited in claim 1 beyond relative amounts of crosslinker and chain transfer agent. In contrast, the working examples utilize specific monomers in specific amounts. Likewise, a specific multistage flexible acrylic resin was utilized. On contract, claim 1 includes any multistage flexible acrylic resin. Therefore, the claims are not considered to be commensurate in scope with the evidence.
Applicant argues (p. 14-15 Remarks) the prior art teaches away from the claimed invention. Rhein teaches the crosslinking is such that the crosslinked polymer is not swollen during subsequent polymerization. Col. 5 ll. 29-30. Rhin further demonstrates crosslinking by showing the elastomeric phase and portions of the rigid phase covalently bonded with it remain undissolved when exposed to solvent.
This argument is not found persuasive since a branched polymer that dissolves in a solvent is not supported in the present application. Further, one skilled in the art would expect the polymer of Rhein to dissolve in THF. A specific solvent is not mentioned in Rhein, and therefore not possible to determine the solubility in THF.
Regarding the double patent rejection response set forth on page 16 of the Remarks, Applicant's request for abeyance is acknowledged to the extent that Applicant's lack of response to the cited rejection will not be treated as non-responsive under 37 CFR 1.111(b). However, since the rejection is considered proper it will be maintained until such time as a complete response is filed, or conditions appropriate for removal of the rejection are presented.
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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT T BUTCHER whose telephone number is (571)270-3514. The examiner can normally be reached Telework M-F 9-5 Pacific Time Zone.
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/ROBERT T BUTCHER/Primary Examiner, Art Unit 1764