DETAILED 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 .
Claim Rejections - 35 USC § 112
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 10 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 10 depends from canceled claim 9, therefore claim 10 is indefinite. For the purpose of examination, claim 10 will be interpreted as depending from claim 8.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-5, 7 and 15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Henton et al. (US 4,778,851).
Regarding claims 1-5 and 15: Henton et al. (US ‘851) discloses rubber modified epoxy compounds [abstract], wherein Example 1, Sample No. 2 [Ex. 1, Sample No. 2; 7:54-8:19] prepares a dispersion of grafted rubber latex (19.4 g polymer solids) and 13.6 g epoxy resin {corresponding to ~ 59 wt% grafted rubber and ~ 41 wt% epoxy resin} [Ex. 1, Sample No. 2; 7:54-8:19]. Henton et al. (US ‘851) discloses the grafted rubber comprises a core prepared from 93% butadiene, 5% styrene and 2% acrylonitrile, and a graft prepared from 66% styrene, 25.4% acrylonitrile and 8.4% glycidyl methacrylate; having an 80% diameter of 12,000 Å (1.2 µm) [Ex. 1; 6:61-7:26]. Henton et al. (US ‘851) discloses the epoxy resin (DER 383) has a viscosity of 9,000-11,500 centipoise (9,000-11,5000 mPa·s) [Ex. 1; 7:26-35].
The claimed effects and physical properties, i.e. a total volume of the pores which have an average pore diameter of 0.03 µm to 1.00 µm is not less than 0.0600 mL/g; and an amount of granules having a volume-average particle size of not less than 1000 µm is not more than 3.00% by weight, with respect to 100% by weight of said powdery and/or granular material [instant claim 1]; a total of an amount of granules having a volume-average particle size of not less than 600 µm and less than 1000 µm and an amount of granules having a volume-average particle size of not less than 1000 µm is not more than 6.00% by weight, with respect to 100% by weight of said powdery and/or granular material [instant claim 2]; a total volume of the pores which have an average pore diameter of 0.03 µm to 4.50 µm is not less than 0.1100 mL/g [instant claim 3]; a total of an amount of granules having a volume-average particle size of not less than 600 µm and less than 1000 µm and an amount of granules having a volume-average particle size of not less than 1000 µm is not more than 1.90% by weight, with respect to 100% by weight of said powdery and/or granular material [instant claim 4]; a force required to break a block of said powdery and/or granular material is not more than 30000 Pa, where: the block is a block obtained by applying, to said powdery and/or granular material which is being allowed to stand, a load of 6.3 kg at 60 °C for 2 hours by placing a 6.3 kg weight on 30 g of said powdery and/or granular material contained in a cylindrical container having a diameter of 50 mm; and the force is a value obtained by measurement using a rheometer [instant claim 5]; total volume of the pores is not less than 0.0800 ml/g [instant claim 15], would inherently be achieved, as “Products of identical chemical composition can not have mutually exclusive properties.” 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. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) [see MPEP 2112.01].
Regarding claim 7: Henton et al. (US ‘851) discloses preparing a coating [abstract; 2:43-56] by mixing the rubber modified epoxy with a polyamide resin [10:25-35].
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Henton et al. (US 4,778,851) as applied to claim 1 above.
Regarding claim 6: Henton et al. (US ‘851) discloses the basic claimed composition [as set forth above with respect to claim 1]; wherein Henton et al. (US ‘851) discloses particles of less than about 20 µm [6:16-34].
Henton et al. (US ‘851) does not specifically disclose Ex. 1, Sample No. 2 having an average particle size of not more than 0.23 µm. However, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) [See MPEP 2144.05].
Allowable Subject Matter
Claims 8 and 11-14 are allowable.
Claim 10 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: While Henton et al. (US 4,778,851) discloses the process includes freeze drying the grafted rubber resin [Ex. 1; 6:61-7:26], and subsequently removing water from the grafted rubber/epoxy resin dispersion by rotary evaporation, Henton et al. (US ‘851) does not disclose an agglutinating step of spraying the grafted rubber latex and the epoxy resin in a presence of a flocculant [instant claim 8]. While Henton et al. (US ‘851) discloses the process includes shearing the grafted rubber latex and epoxy resin [Ex. 1, Sample No. 2; 7:54-8:19], Henton et al. (US ‘851) does not disclose shearing the grafted rubber latex with a latex containing the epoxy resin and 1-30 parts by weight (with respect to 100 parts of the epoxy resin) of an emulsifying agent [instant claim 12].
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-15 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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.
See attached form PTO-892.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL F PEPITONE whose telephone number is (571)270-3299. The examiner can normally be reached on 7:00 AM - 3:30 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached on 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL F PEPITONE/Primary Examiner, Art Unit 1767