PDETAILED ACTION
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 .
Election/Restrictions
Claims 9-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected claims, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on November 01, 2024.
Claim Rejections - 35 USC § 112
Claim 18 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.
In claim 18, it is unclear how a liquid epoxy resin can define the epoxy resin (D) per claim 1, which as part of the powdery and/or granular material is necessarily in solid form, not liquid form.
Claim Interpretation
Consistent with Applicant’s previous comments filed March 03, 2025, the presently claimed “powdery and/or granular material” is being interpreted as a material wherein all of the included components (A), (D) and (FP) are either in powdered or granular form.
Response to Arguments
Applicant’s arguments and amendments filed March 18, 2026 with respect to the 35 USC 112 rejection have been fully considered and are persuasive in overcoming the rejection. However, upon further review and consideration of the prior art of record, a new ground of rejection is made in view of US 2017/0362395 (Inoubli). Accordingly, the previous allowability of claims 1, 15 and 16 is rescinded.
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 (i.e., changing from AIA to pre-AIA ) 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.
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.
Claims 1, 3, 5, 7, 8, 15, 16, 18, 19 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over US 2017/0362395 (Inoubli).
Inoubli discloses a polymer composition in the form of a dry powder [0017] comprising
an epoxy resin (meets Applicant’s epoxy resin (D)); and
multistage polymer particles comprising a polymeric core (A1) derived from butadiene units [0092] and a grafted shell polymer (B1) derived from vinyl monomers such as (meth)acrylate monomers [0076]/[0095-0098] (meets Applicant’s graft copolymer having an elastic body derived from butadiene and a graft part derived from (meth)acrylate monomers), wherein the multi stage polymer particles make up “at least 50 wt.% of the composition” [0040] and “at most 99 wt.%” [0115] (meets Applicant’s polymer particles (A) content of 50 to 99 wt.%) (e.g., abstract, [0016-0017], [0038-0051], [0058], [0076], [0092-0098], [0115] examples, claims).
As to claims 1 and 5, while not expressly set forth in the working example, it is within the purview of Inoubli’s inventive disclosure, and obvious to one having ordinary skill in the art, to formulate a powdered composition for the expected additive effect and with the reasonable expectation of success comprising:
1 to 50 wt.% epoxy resin (meets Applicants’ epoxy resin (D) and content thereof); and
50 to 99 wt.% multistage polymer particles comprising a polymeric core (A1) derived from butadiene units and a grafted shell polymer (B1) derived from (meth)acrylate monomers (meets Applicants’ graft copolymer having an elastic body derived from butadiene and a graft part derived from (meth)acrylate monomers and content thereof).
As to claim 3, Inoubli is silent in describing the graft ratio of the grafted polymer shell, thus implying that any graft rate (inclusive of that presently claimed) can be satisfactorily used, absent evidence of criticality therefor.
As to claim 7, it would be expected that a similarly-constituted powdered composition per Inoubli would necessarily have the same properties (inclusive of that presently claimed). “Products of identical chemical composition cannot have mutually exclusive properties” because a chemical composition and its properties are inseparable, In re Spada 15 USPQ2d 1655, MPEP 2112.01 (II). Where the claimed and prior products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of obviousness has been established, In re Best 195 USPQ 430. Where applicant claims a composition in terms of function, property or characteristic and the composition of the prior art is the same as that of the claim but the function property or characteristic is not explicitly disclosed, a rejection under 103 is appropriate (MPEP 2112).
As to claim 8, Inoubli’s powdered composition has a volume medium particle size of from 1 to 500 µm [0124]. Thus, it would have been obvious to one having ordinary skill in the art to formulate a powdered composition having a volume average particle size as presently claimed with the reasonable expectation of success in accordance with the desired application, absent evidence of criticality therefor.
As to claim 15, Inoubli is silent in describing the molecular weight of the grafted polymer shell, thus implying that any molecular weight (inclusive of that presently claimed) can be satisfactorily used, absent evidence of criticality therefor.
As to claim 16, Inoubli’s multistage polymer particles have a particle size of from 20 to 800 µm [0075], i.e., larger than 90 nm. Thus, it is within the purview of Inoubli;s inventive disclosure to use multistage polymer particles necessarily having a particle size as presently claimed.
As to claim 18, Inoubli discloses the use of a liquid epoxy resin [0176].
As to claim 19, Inoubli discloses the grafted polymer shell can be derived from a mixture of (meth)acrylic monomers inclusive of methyl methacrylate and butyl acrylate [0097].
As to claim 21, Inoubli discloses the epoxy resin can be a bisphenol type epoxy resin [0070].
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 5, 7, 8, 16, 18, 19 and 21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of copending Application No. 17/698248 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims embrace similarly-constituted powdery and/or granular materials wherein the resin (B) is an epoxy resin. The present claims are unlimited as regards total volume of pores, etc.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
Claims 2 and 6 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. US 2017/0362395 (Inoubli) does not disclose or suggest the further inclusion of a free polymer as presently claimed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ana L Woodward whose telephone number is (571)272-1082. The examiner can normally be reached M-F 8am-5pm.
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/ANA L. WOODWARD/ Primary Examiner, Art Unit 1765