DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 8/8/2025 has been entered.
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.
Claim(s) 6, 11-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yamaguchi (JPH11-60640).
Yamaguchi teaches an example of a copolymer having 56.6% styrene, 32% phenylmaleimide, 1.4% maleic anhydride, and 10% acrylonitrile with a Mw of 100,000 (Table 1). 100,000 falls in the range of claim 12 and 1.4% falls in the range of claim 11.
With 1.4% maleic anhydride, each polymer has 100,000 × 1.4% = 1400 g/mol maleic anhydride per mol. Maleic anhydride has a molecular weight of 98.06 g/mol. So, each polymer has (1400 g/mol) / (98.06 g/mol) = 14.3 units maleic anhydride.
Yamaguchi does not explicitly recite the glass transition temperature. However, Yamaguchi teaches a copolymer having the same monomer units (styrene, acrylonitrile, maleic anhydride, phenylmaleimide) in about the same amounts (56.6% styrene, 32% phenylmaleimide, 1.4% maleic anhydride, and 10% acrylonitrile) as the examples in the instant specification. As glass transition temperature is dependent on the ratio of monomers present in the copolymer, the copolymer of Yamaguchi has a glass transition temperature that falls in the claimed range. Case law holds that a material and its properties are inseparable. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
The amount of styrene in the example of Yamaguchi is outside the claimed range of 45-55 mass%. However, Yamaguchi teaches the amount of styrene can range from 36-90 wt% (¶11) which overlaps the claimed range.
Yamaguchi teaches amounts which overlap claimed ranges. It is well settled that where prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See MPEP 2144.05; In re Harris, 409, F3.d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 3d 1379, 1382 (Fed. Cir 1997); In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). In light of the cited patent case law, it would have been obvious to one of ordinary skill in the art to use a range within the claimed range because a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art and Yamaguchi suggests the amounts. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Yamaguchi. See MPEP 2123.
Claim(s) 6, 11-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chun (US 2006/0241277).
Chun teaches copolymers of 53.3 wt% styrene, 38.4 wt% phenylmaleimide, 1.8 wt% maleic anhydride, and 6.5 wt% acrylonitrile having a molecular weight of 105,000 and a Tg of 176.4˚C (Table 1). Similar copolymers falling in the scope of the claims are also present in Table 1. 1.8 wt% maleic anhydride falls in the scope of 1.3-10 mass% of claim 11. 105,000 falls in the range of claim 12.
With 1.8 wt% maleic anhydride, each polymer has 105,000 × 1.8% = 1890 g/mol maleic anhydride per mol. Maleic anhydride has a molecular weight of 98.06 g/mol. So, each polymer has (1890 g/mol) / (98.06 g/mol) = 19.3 units maleic anhydride.
The amount of acrylonitrile in the example of Chun falls outside the scope of the claimed range of 7-20 mass%. However, Chun teaches the acrylonitrile monomer is present in 1-10 wt% (¶ 30) which overlaps the claimed range.
Chun teaches amounts which overlap claimed ranges. It is well settled that where prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See MPEP 2144.05; In re Harris, 409, F3.d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 3d 1379, 1382 (Fed. Cir 1997); In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). In light of the cited patent case law, it would have been obvious to one of ordinary skill in the art to use a range within the claimed range because a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art and Chun suggests the amounts. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Chun. See MPEP 2123.
Response to Arguments
Applicant’s arguments are persuasive with regards to the anticipation rejections. Specifically, the examples of Yamaguchi and Chun now fall outside the scope of the claimed ranges.
Applicant’s arguments regarding the non-obviousness of the claimed invention are not persuasive.
Applicant argues that the Declaration filed on 7/16/2025 provides additional data that demonstrates the unexpectedly superior balance of (1) high heat resistance (Vicat softening temperature) and (2) excellent chemical resistance, attainable only within the specifically claimed ranges.
The Declaration presents new data regarding Chemical resistance measured as “A”, “B”, or “C”, which indicates the critical strain where A is 0.6 or more, B is 0.3 or more and less than 0.6, and C is less than 0.3. See item 8.5 on pg. 7 of the Declaration filed on 7/16/2025.
The data in the Declaration presents seven inventive examples (A1-A7) and three comparative examples (B6-B8). It is noted that the instant specification also includes comparative examples B1-B4).
Examples B1-B4 all include an average number of dicarboxyl8ic anhydride monomer units contained in one copolymer molecule outside the claimed range of 1-20.
Example B6 has an amount of styrene of 55.8 mass% which is outside the range of 45-55 mass%. Example B6 has a Vicat softening temperature of 111˚C and a chemical resistance of “A”.
Example B7 has 6.7 mass% acrylonitrile (outside the range of 7-20 mass%) and Example B8 contains no acrylonitrile. (It is noted that the table in the Declaration is not clear, but the discussion at item 11 clarifies this.)
Example B7 has a Vicat softening temperature of 113˚C and a chemical resistance of “B”.
Applicant argues that even a slight deviation from these ranges results in a failure to achieve this balance.
Applicant also argues that the data in the Declaration are commensurate in scope as the claimed range is 45-55 wt% vinyl aromatic monomer and not 40-55 wt% vinyl aromatic monomer. And Applicant argues that there is a sufficient number of data falling in the claimed range.
Applicant argues that regarding the criticality of the 7 mass% lower limit for vinyl cyanide monomer, the 7 mass% defines the threshold for commercially significant and superior chemical resistance.
MPEP 716.02 contains the requirements for establishing unexpected results.
MPEP 716.02(d) requires the data to be commensurate in scope with the claimed invention. The inventive data shows styrene present in 45.6-50.8 mass% while the range is 45-55 mass%. Comparative example B6 has an amount of styrene closer to the endpoint of 55 mass% than the inventive data. This, combined with the Applicant’s argument that even a slight deviation from these ranges results in a failure to achieve this balance, establishes that the data is not commensurate. In other words, there is no indication that the claimed range at the upper endpoint of styrene (55 mass%) would behave more like inventive examples (styrene present in 45.6-50.8 mass%) or like the comparative example (styrene at 55.8 mass%).
The claimed range of vinyl cyanide is 7-20 mass% while the data only presents values at 8-8.2 mass% for acrylonitrile. The claimed range of the maleimide monomer unit is 25-50 mass%, while the amounts used are 39.9-45.1 mass%. The claimed range of dicarboxylic anhydride unit is 0.1-10 mass% while the data shows 0.5-2.0 mass%. There is no data supporting an amount of anhydride of up to 10 mass%, or an amount of maleimide as low as 25 mass%, or an amount of vinyl cyanide up to 20 mass%, especially as slight deviations can affect the balance.
Additionally, each component is recited as a genus such as aromatic vinyl monomer unit which is much more broad than the species shown such as styrene. Each genus includes numerous species that are not necessarily represented by the data. For example, aromatic vinyl monomer units include styrene, methylstyrene, vinyl naphthalene, vinyl pyridine, styrenesulfonate, and vinyltoluene, just to name a few. There is no indication that using styrene sulfonate instead of styrene would be expected to provide the same alleged unexpected results. The same issues are present with the other claimed genuses.
Applicant argues that there is no requirement that the Applicant should recite the properties as a limitation if the properties are inherent. However, properties alleged as unexpected have not been shown to be inherent and the burden rests with the Applicant to establish unexpected results. See MPEP 716.02(b). Applicant is directed to MPEP 2112 where the requirements to use inherency in a prior art rejection are discussed. Applicant is invited to cite to where using inherency to overcome prior art rejections is discussed in the MPEP.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT C BOYLE whose telephone number is (571)270-7347. The examiner can normally be reached Monday-Thursday, 10am-4pm.
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/ROBERT C BOYLE/Primary Examiner, Art Unit 1764