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 10/31/2025. Claims 1-8 and 11-14 are current pending.
Claims 9-10 and 15 are canceled.
Claims 1-8 and 11-14 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 01/02/2026 has been entered.
Claim Rejections - 35 USC§ 103
Claims 1-8 and 11-14 are rejected under 35 U.S.C. 103 as being unpatentable over Koppers et al.
(US6,809,148) in view of Araki et al. (JP2011195760A).
Regarding Claim 1, Koppers teaches a polymer dispersion obtained by aqueous emulsion
polymerization of monomers in the presence of surfactants (6: 10-15). Koppers further teaches the
monomers comprising a) from 25 to 70% by weight of at least one conjugated aliphatic diene, b) from 25
to 70% by weight of at least one vinyl aromatic monomer, c) from 2.5 to 15% by weight of at least one
monoester of a C2-C10-alkanediol with acrylic acid or methacrylic acid, d) from 0 to 1.0% by weight of
ethylenically unsaturated monomers which have at least one acid group, or salts thereof (ab.),
wherein the exemplary monomers c) are hydroxyalkyl (meth)acrylates (4: 45-53), and wherein the
exemplary monomers d) include acrylic acid and methacrylic acid (5:21-23). From the disclosure, the
weight ratio of vinyl aromatic compounds to conjugated dienes is 0.36 : 1 to 2.8 : 1, overlapping with the
claimed at least 1.5 : 1. Thus, Koppers teaches the polymer dispersion comprising the claimed components a) to d) in the amount overlapping the claimed ranges, respectively. Regarding the claimed component e), instant claimed each of e1) to e3) in the amount up to 10 wt %, including each of e1) to e3) being 0%. In addition, Koppers teaches the monomers comprising ethylenically unsaturated nitriles from 0 to 5 wt.% of the polymerized monomers (ab.), overlapping the range of the claimed e3).
Koppers furthermore teaches the polymer dispersion contains the surfactants including nonionic emulsifiers (6: 62-63) in the amount of 0.1 to 7.5 wt.% based on the weight of the monomers (6: 40-45).
The difference between Koppers and instant Claim 1 is that Koppers is silent that the non-ionic surfactants having an HLB of 17-19.
However, Araki teaches a polymer latex obtained from aqueous emulsion polymerization of
ethylenically unsaturated monomers in the presence of an emulsifier (ab.) wherein the ethylenically
unsaturated monomers are selected from vinyl aromatic compounds such as styrene, conjugated diolefins such as butadiene and isoprene, α,β-unsaturated mono- or dicarboxylic acids such as acrylic acid and methacrylic acid, hydroxyalkyl (meth)acrylates, and (meth)acrylic acid esters ([0018]). Araki further teaches the emulsifier is a nonionic emulsifier having HLB of 13 to 19. Araki furthermore teaches that when the HLB from 13 to 19, the polymer latex has good water dispersibility and coating film made from the polymer latex has good water resistance ([0036]). In view of such benefits, one skilled artisan would have been motivated before the effective filling date of instant application to use the nonionic emulsifier taught by Araki for the nonionic emulsifiers of Koppers to obtain a modified polymer latex having good water dispersibility and water resistance. Further, Koppers discloses that one application of the polymer dispersion is for roof coverings (14: 33-43) and Araki discloses that applications of the polymer latex include rooftop waterproof protection ([0040]). Thus, one skilled artisan would have a reasonable expectation of success in replacing the emulsifier of Koppers by the emulsifier taught by Araki.
Regarding Claim 2, Koppers teaches suitable vinyl aromatic monomers including styrene and α-methylstyrene. ( 4:30-32).
Regarding Claim 3, Koppers teaches the vinyl aromatic compounds are present in the monomer
mixture in an amount of 25 to 70 wt.% based on the total weight of ethylenically unsaturated monomers
(claim 1), falling within the claimed 24 to 70 wt.% based on the total weight of ethylenically unsaturated monomers.
Regarding Claim 4, Koppers teaches suitable conjugated dienes are 1,3-butadiene or isoprene
(4:25-27).
Regarding Claim 5, Koppers teaches that, based on the total weight of ethylenically unsaturated
monomers, the conjugated dienes are present in the monomer mixture in an amount of 25 to 70 wt.%
(claim 1), overlapping with the claimed 16 to 45 wt.%.
Regarding Claim 6, , Koppers teaches the preferred hydroxyalkyl (meth)acrylate is 2-
hydroxyethyl acrylate (Example E2).
Regarding Claim 7, Koppers teaches based on the total weight of ethylenically unsaturated
monomers, the monoester of a C2-C10-alkanediol with (meth)acrylic acid is present in the amount of 2.5
to 15 wt.% and exemplifies the amount of HEA being 5 wt.%, falling within the claimed 2 to 9 wt.%.
Regarding 8, Koppers teaches, based on the total weight of the ethylenically unsaturated
monomers, the acid monomers being 0 to 1 wt.%, overlapping the claimed no greater than 0.1 wt.%.
Regarding Claim 11, Araki teaches that polyoxyethylene alkyl ether being preferred emulsifier and the amount of the nonionic emulsifier is 0.5 to 10 wt.% of the polymer ([0036]), overlapping the claimed 2 to 9 wt.%.
Regarding Claim 12, Koppers teaches that both anionic emulsifier and nonionic emulsifier are used for the polymerization (6: 60-65).
Regarding Claim 13, The example polymer latexes are not core/shell particles.
Regarding Claim 14, Koppers teaches the polymer latex are suitable for roof coating
materials (14: 33-43).
Claims 1-8 and 11-14 are rejected under 35 U.S.C. 103 as being unpatentable over Araki et al.
(JP2011195760A) in view of Koppers et al. (US6,809,148).
Regarding Claim 1, Araki teaches a polymer latex comprising a composite resin composition
which is obtained by emulsion polymerization of an ethylenically unsaturated monomer composition in
the presence of an emulsifier (claim 1) wherein suitable emulsifier is a nonionic emulsifier having HLB
of 13 to 19 ([0036]). Araki further teaches that the amount of the emulsifier being from 0.5% by mass to 10% by mass with respect to the composite resin composition (Id.), the amounts overlapping the claimed 2 to 10 wt.%.
Araki furthermore teaches the ethylenically unsaturated monomer composition comprising vinyl aromatic compounds such as styrene, conjugated diolefins such as butadiene and isoprene, hydroxyalkyl (meth)acrylates, α,β-unsaturated mono- or dicarboxylic acids such as acrylic acid and methacrylic acid, and .), vinyl cyanide compounds such as acrylonitrile ([0018]). The aforementioned compounds fall in the instant claimed monomer categories a) to e), respectively.
The difference between Araki and instant Claim 1 is that Araki is silent on the wt.% of each monomers based on the total weight of monomers.
However, Koppers teaches a polymer dispersion obtained by aqueous emulsion polymerization of
monomers in the presence of emulsifiers (6: 10-15). Koppers further teaches the monomers comprising, of the polymerized monomers, a) from 25 to 70% by weight of at least one conjugated aliphatic diene, b) from 25 to 70% by weight of at least one vinyl aromatic monomer, such as styrene c) from 2.5 to 15% by weight of at least one monoester of a C2-C10-alkanediol with acrylic acid or methacrylic acid, d) from 0 to 1.0% by weight of ethylenically unsaturated monomers which have at least one acid group, or salts thereof and ethylenically unsaturated nitriles from 0 to 5 wt.% ( ab ). The weight ratio of vinyl aromatic monomer to conjugated dienes is 0.36 : 1 to 2. 8 : 1.
One skilled artisan would have been motivated before the effective filling date of instant
application using the wt% of monomer components taught by Koppers for the emulsion monomers of
Araki to obtain a modified polymer latex because the polymer latex of Araki and Koppers are obtained from common monomers and the latexes direct to the similar end use-waterproof rooftop material. Araki concerns to provide a rooftop waterproof material and Koppers discloses that the polymer dispersion having improved water tightness (2: 49-53) and useful for roof coverings (14: 33-43).
Regarding Claim 2, Araki teaches the vinyl aromatic compounds include styrene and α- methylstyrene ([0018]).
Regarding Claim 3, Koppers teaches the vinyl aromatic compounds are present in the monomer
mixture in an amount of 25 to 70 wt.% based on the total weight of ethylenically unsaturated monomers (claim 1).
Regarding Claim 4, Araki teaches the examples of the conjugated diolefins are butadiene,
isoprene, and chloroprene ([0018]).
Regarding Claim 5, Koppers teaches based on the total weight of ethylenically unsaturated
monomers, the conjugated dienes are present in the monomer mixture in an amount of 25 to 70 wt.%
(claim 1), overlapping with the claimed 16 to 45 wt.%.
Regarding Claims 6-7, Araki exemplifies that 2-hydroxyethyl methacrylate being 2 wt.% of the
total weight of the monomers (synthesis example 1). Koppers teaches the exemplary monomers c) are hydroxyalkyl (meth)acrylates (4: 45-53) and monomers c) are 2.5 to 15 wt.% of the monomer composition.
Regarding Claim 8, Koppers teaches based on the total weight of the ethylenically unsaturated
monomers, the acid monomers being 0 to 1 wt.%, overlapping the claimed no greater than 0.1 wt.%.
Regarding Claim 11, Araki teaches that polyoxyethylene alkyl ether being preferred emulsifier and the amount of the nonionic emulsifier is 0.5 to 10 wt.% of the polymer ([0036]), overlapping the claimed 2 to 9 wt.%.
Regarding Claim 12, Araki exemplifies that both anionic emulsifier and nonionic emulsifier are used for one polymerization ([0047]).
Regarding Claim 13, Araki has no disclosure on core/shell particles.
Regarding Claim 14, Araki teaches the polymer latex is used for rooftop protection. ([0040]).
Double Patenting
Claims 1-8 and 11-13 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of U.S. Patent No. 10,836,876 ('876) in view of Araki et al. (JP2011195760A).
Regarding Claim 1, claim 3 of '876 claims a polymer latex obtained from the emulsion
polymerization in aqueous medium of a mixture of ethylenically unsaturated monomers comprising: (a)
20 to 60 wt.-% of at least one aliphatic conjugated diene; (b) 30 to 70 wt.-% of at least one aromatic vinyl
compound; (d) 0.1 to 7 wt.-% of at least one ethylenically unsaturated acid; and (e ) 0 to 20 wt.-% of at least one further ethylenically unsaturated compound which can be hydroxy alkyl esters of (meth)acrylic acid. The monomers (b), (a), ( e) and (d) correspond to instant claimed monomers a) to d). And the weight ratio of the vinyl aromatic compounds to conjugated diene is 0.5 : 1 to 3.5, overlapping with instant claimed at least 1.5 : 1. The wt.% of monomers (e ) and the wt.% of monomer (d) overlap the wt.% of corresponding instant claimed monomers c) and monomers d). The instant claimed monomers e) can be 0.
The difference between claim 3 of '876 is that claim 3 of '876 is silent on the latex comprising 2
to 10 wt.-% based on total weight of monomers of non-ionic surfactants having an HLB of 17 to 19.
However, Araki teaches a polymer latex obtained from aqueous emulsion polymerization of
ethylenically unsaturated monomers in the presence of an emulsifier, Araki further teaches the monomers
can be vinyl aromatic compounds such as styrene, conjugated dienes such as butadiene, hydroxyethyl
(meth)acrylate, and (meth)acrylic acid ([0018]). Araki furthermore teaches the emulsifier is a nonionic
emulsifier having HLB of 13 to 19. Araki discloses that when the HLB from 13 to 19, the polymer latex
has good water dispersibility and coating film made from the polymer latex has good water resistance
([0036]). In view of such benefits, one skilled artisan would have been motivated before the effective
filling date of instant application to incorporate the emulsifier taught by Araki in the polymer latex of
'876 claim 3 to obtain a modified polymer latex for good water dispersibility and water resistance.
Regarding Claims 2-3, claim 3 of '876 claims the vinyl aromatic compound is selected from at
least one of styrene, a-methyl styrene, p-methylstyrene, and in the amount of 30 to 70 wt.-% of the total
amount of the monomers, overlapping with instant claimed 24 to 70 wt. %.
Regarding Claims 4-5, claim 3 of '876 claims the conjugated diene is selected from 1,3-butadiene
2,3-dimethyl-1,3-butadiene, isoprene and combinations thereof; and in the amount of 20 to 60 wt.% of the
total amount of the monomers, overlapping with instant claimed 16 to 45 wt. %.
Regarding Claims 6-7, claim 3 of '876 claims the monomer e) can be hydroxy alkyl esters of (meth)acrylic acid in the amount of 0 to 20 wt. of the total amount of monomers, overlapping with the
claimed 2 to 9 wt,%.
Regarding Claim 8, claim 3 of '876 claims the ethylenically unsaturated acid is selected from at
least one of (meth)acrylic acid, itaconic acid, etc., and in the amount of 0.1 to 7 wt.-% of the total amount
of the monomers, overlapping with the claimed 0.1 wt. % at most.
Regarding Claim 11, Araki teaches that polyoxyethylene alkyl ether being preferred emulsifier and the amount of the nonionic emulsifier is 0.5 to 10 wt.% of the polymer ([0036]), overlapping the claimed 2 to 9 wt.%.
Regarding Claim 12, Araki exemplifies that both anionic emulsifier and nonionic emulsifier are used for one polymerization ([0047]).
Regarding Claim 13, claim 1 and claim 3 of '876 does not claim the polymer latex has a
core/shell structure.
Response to Arguments
Applicant's arguments filed 10/31/2025 have been fully considered but they are not persuasive.
Applicant’s argument: instant data shows the combination of the specific polymer latex and non-ionic surfactant set forth in Claim 1 achieved beneficial balanced combination of properties.
Examiners’ answer: instant data shows the combination of the specific polymer latex and non-ionic surfactant achieved beneficial balanced combination of properties; however, instant data shows the polymer latex having 2.5 wt.% non-ionic surfactant is superior than the polymer latex having 1.8 wt.% non-ionic surfactant. Therefore, the lower range of the non-ionic surfactant is arguably acceptable. Nonetheless, the inventive examples only tested the non-ionic surfactant at 2.5 wt.% and 5 wt.%; thus, there are no data support the claimed upper range of the non-ionic surfactant. Therefore, the claims are not commensurate in scope with the evidence used to support unexpected results.
Applicant’s argument: Koppers consistently uses throughout its examples monomer mixtures with a lower weight ratio of vinyl aromatic compounds to conjugated dienes, mostly <1.0, which is still well outside of the claimed range of at least 1.5: 1.
Examiners’ answer: as discussed above, from the disclosure of Koppers, the calculated weight ratio of vinyl aromatic monomer to conjugated dienes is 0.36 : 1 to 2. 8 : 1, overlapping the claimed at least 1.5:1. All disclosures of prior art "including unpreferred embodiments" must be considered (see MPEP 2123 I)
Applicant’s argument: conjugated dienes are not preferred monomers in Araki and the methyl methacrylate and 2-ethylhexyl acrylate in a total amount of 56 wt% based on the total weight of monomers, which is significantly outside the claimed range of up to 10 wt%.
Examiners’ answer: (meth)acrylate monomers are the main component in the preferred embodiments of Araki, however, the rejection set forth at paragraph 9 is based on Araki in view of Koppers. One ordinary skilled artisan in the field would have been motivated before the effective filing date of instant application to use the wt% of each monomer categories for the corresponding monomers of Araki due to the reasons set forth above. The teaching of the preferred embodiments of Araki does not negate a finding of obviousness under 35 USC 103.
Applicant’s argument: The non-ionic emulsifier described in Araki are significantly different from those claimed as well as those disclosed by Koppers.
Examiner’s answer: the preferred surfactant of Araki is polyoxyethylene alkyl ether which can be one of the claimed alkyl ethoxylates. Further Koppers discloses nonionic ethoxylated surfactants can be used (8: 1-35).
Applicant’s argument: claim 3 of the '876 patent does not clearly and unambiguously disclose
the combination of (i) a weight ratio of vinyl aromatic compounds to conjugated dienes of at least
1.5: 1 and (ii) the definition of ethylenically unsaturated monomers (e)
Examiner’s answer: the calculated weight ratio of vinyl aromatic compounds to conjugated dienes from the claim is 0.5 : 1 to 3.5, overlapping with instant claimed at least 1.5 : 1. The instant claimed amount of monomers ( e) can be 0, therefore claim 3 of '876 claims all the monomer components.
Conclusion
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/HUIHONG QIAO/Examiner, Art Unit 1763
/CATHERINE S BRANCH/Primary Examiner, Art Unit 1763