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 .
This communication responds to the amended claim set filed 11/17/2025. Claims 1-5 are current pending. Elected Claims 1-4 are under examination. Claim 5 is withdrawn.
Claims 1-4 are rejected for the reasons set forth below.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a previous Office Action.
Continued Examination
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/17/2025 has been entered.
Claim Interpretation
Claim 1 recites “when” at (i), (ii), and (iv). As a conjunction, “when” means “in the event,” “if.” Therefore, each of (i), (ii) and (iv) is not a mandatory limitation. Consequently, the limitation is not addressed if the prior art does not disclose the when clause of (i), (ii) or (iv).
.The “when” clause of (iv) directs to a process. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." (MPEP § 2113). Therefore, if a reference discloses an acrylic polymer that meets other mandatory limitations of instant Claim 1 and the acrylic polymer having a coagulability of 95 mass% or more, the reference anticipates the instant claim 1, no matter what the coagulation process is.
Examiner also interprets that the coagulability of (iv) is an inherent property of the claimed acrylic polymer. Therefore, if a reference discloses a copolymer meets the structural limitation of the acrylic polymer of instant Claim 1, the coagulability is inherently present. “Products of identical chemical composition cannot 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 (See MPEP 2112.01 II). "[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C. 102, on ‘prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same." The burden of proof is similar to that required with respect to product-by-process claims. (See MPEP 2112 V).
Claim Rejections - 35 USC § 102
Claim 1 is rejected under 35 U.S.C. 102 (a) (1) as being anticipated by Nishio et al. (US3,623,878).
Nishio teaches a copolymer emulsion obtained by emulsion polymerization (3: 55-60). Attention is drawn to preparation 1 wherein a copolymer was prepared from polymerization of butyl methacrylate and glycidyl methacrylate (4:10-30). glycidyl methacrylate is an unsaturated monomer having an epoxy group. The particle size of the solid copolymer is 100 nm to 300 nm (Id.). Therefore, Nishio teaches some of the copolymer have a particle size of 150 nm to 300 nm. The disclosure is sufficiently specific to anticipate instant (iii).
Claim Rejections - 35 USC § 103
Claims 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Liu et al.
(US2019/0309140 Al).
Regarding Claim 1, Liu teaches polymeric particles comprising an alkaline swellable core and
shell layers (claim 2), wherein the alkaline swellable core is formed from emulsion polymerization of one
or more monomers include acrylic acid and methacrylic acid and one or more monomers include
(meth)acrylates (claim 4), therefore, the core polymer comprising constituent units of (meth)acrylate. Liu
further teaches that the shell units are formed from a reaction product from one or more monomers
include monomethyl maleate, monomethyl fumarate, and monomethyl itaconate (claim 6). Liu exemplifies the polymeric particles obtained by emulsion polymerization (Example 3). Liu furthermore teaches the polymeric particles having an average particle size up to about 300 nm (ab.), overlapping the claimed 150 nm to 300 nm.
Regarding Claims 2-3, Liu teaches a latex composition comprising the polymeric particles
([0044]). Liu further teaches the composition may contain crosslinking agents ([0046]).
Regarding Claim 4, Liu teaches coatings made from the latex composition ([0052-0053]).
Claims 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Yang et al.
(US2014/0302265 Al).
Regarding Claim 1, Yang teaches a carboxylic acid-modified nitrile copolymer latex polymerized from a monomer mixture comprising ethylenically unsaturated acid monomers (claim 3), wherein the ethylenically unsaturated acid monomers comprise at least one selected from monomers including monobutyl fumarate, monobutyl maleate and mono-2-hydroxypropyl maleate (claim 6). Yang further teaches the carboxylic acid-modified nitrile copolymer further comprising (meth)acrylate monomers ([0030]). Therefore, Yang discloses a copolymer comprising units of (meth)acrylate and units of at least one of monobutyl fumarate, monobutyl maleate and mono-2-hydroxypropyl maleate. monobutyl fumarate, monobutyl maleate and mono-2-hydroxypropyl maleate read on the claimed unsaturated monomer having the carboxy group contains a butenedioic acid mono chain alkyl ester. Yang further teaches the copolymer has an average particle diameter of 90 nm to 200 nm, overlapping the claimed 150 nm to 300 nm.
Regarding Claims 2-3, Yang teaches that a latex composition comprising the carboxylic acid modified nitrile copolymer latex and a crosslinking agent ([0016]).
Regarding Claim 4, Yang teaches a dip-molded article comprising the crosslinked latex
composition ([0076-0084 ]).
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Candau et al.
(US2009/0041691 Al).
Candau teaches hollow latex particles having a particle size of 150 to 375 nm ([0095]), wherein
the latex particles are derived from monomers including acrylic acid, methacrylic acid, monomethyl
maleate, monomethyl fumarate and monomethyl itaconate ([0105]).
Response to Arguments
Applicant's arguments filed 11/17/2025 have been fully considered but they are not persuasive.
As explained at paragraph 6, the “when” clause directs to optional limitations which are not required to be addressed if a reference does not disclose the “when” clause condition. Additionally, each of the above cited prior art disclose a substantially identical acrylic copolymer to that of instant Claim 1, as such the coagulability is necessarily present. Particularly, Yang discloses gloves made from the copolymer latex by dip-forming with a coagulant. One ordinary skilled artisan would reasonably infer that the coagulability is 95 mass% or more because the gloves have good mechanical properties (Table 1). Although Yang discloses a different coagulation process, the patentability is determined by the product.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HUIHONG QIAO whose telephone number is (571)272-8315. The examiner can normally be reached 9AM - 5PM.
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/HUIHONG QIAO/Examiner, Art Unit 1763
/CATHERINE S BRANCH/Primary Examiner, Art Unit 1763