DETAILED ACTION
Notice of Pre-AIA or AIA Status
As previously set forth: The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
As previously set forth: There is no English translation on file for the foreign priority, thus the claims have an effective date of the filing of the PCT: 11/26/21
Response to Arguments
Applicant argues Jeon and Matsuyama merely rely on the size of the applied arts latex and this is not directly related to the MW, as evidence by the table of Applicant’s remarks. Therein, Applicant argues that Preparation examples 3 and 4 are within the particle size diameter, yet, are not within the claimed MW.
The Examiner disagrees. Preparation examples 3 and 4 are drawn to a different preparation method that than of Jeon, Matsuyama and the instant claims. Jeon, Matsuyama and the claims are drawn to the core/shell preparation examples 1 and 2 of the table. Examples 1 and 2 show that when the particle size is met, the claimed MW is met. Applicant has not show examples using the same preparation example that do not meet the claimed MW requirements. There is thusly still a reasonable expectation that the MW of Jeon and Matsuyama is within that of the instant claims since the same preparation method is used. Arguments herein are thusly not persuasive.
Applicant argues there are superior characteristics when using the claimed method of making, as shown with Ex 1 and Ex 2 vs. Comp Ex 2 and Comp Ex 3.
The examiner disagrees. Comp Ex 2 and Comp Ex 3 use a different method of making than Jeon and Matsuyama. Jeon and Matsuyama meet the claimed method of making and thus the superior characteristics are expected. Applicant’s arguments herein are not found persuasive.
Claim Rejections - 35 USC § 112
Rejection over Claim 4, and its dependents, 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 is overcome by amendment.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-5, 9-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jeon (WO 2019164176, published 8/29/19, wherein US 2020/0140597 is used as an equivalent English document).
Elements of this rejection are as previously set forth, reiterated below in its entirety in italics.
Jeon discloses preparation of ABS graft copolymers and methods of making thermoplastic resins therefrom (title). Said graft copolymers are formed from a 100% conjugated diene core [0029] (meeting the claimed rubbery polymer latex including a rubbery polymer) that is coagulated with a polymer latex coagulant [0041] (meeting the polymer coagulant). The polymer coagulant is added in amounts from 1-4parts of the diene rubber latex [0043] (meeting claim 4) wherein the coagulant comprises an acid such as acrylic acid [0047] and acrylate such as acrylic acid alkyl ester [0049] in a core/shell configuration wherein the core may be 100% acrylic alkyl ester and the shell comprises 90% acrylic acid ester and 10% acrylic acid [0058] (meeting the specifics of the polymer coagulant of claims 1- 2). The polymer coagulate has a particle size from 800-150 angstrom [0059] (converting to 80-150 nm, embracing claim 3). The particle size here will be directly related to the molecular weight (MW), thus, since the particle size of claim 3 is embraced it is the Examiner’s position the MW of the polymer coagulant of claim 1 is embraced/met by the reference. After coagulation, the resultant particle is further reacted with vinyl monomers [0068] in the same amounts as earlier steps [0069] which includes the use of 40-90% aromatic monomer and 10-60% vinyl cyanide monomer [0032] (meeting the ‘introducing an aromatic vinyl based monomer and a vinyl cyan based monomer’ and vinyl cyan wt% of claim 1).
Elements above embrace and render prima facie obvious (in light of the overlapping ranges thereof, see In re Wertheim) claims 1-5 and 9. A resin is formed using 20-40% of the above prepared graft copolymer and 60-80% of a non-graft resin [0077] wherein the non-graft resin may be a copolymer of a vinyl aromatic compound and a vinyl cyanide compound [0079], as required by claims 10-11.
Claim(s) 1-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Matsuyama (US 2017/0107373).
Elements of this rejection are as previously set forth, reiterated below in its entirety in italics.
Matsuyama discloses thermoplastic resin compositions and molded articles thereof (title). Matsuyama discloses the resin composition therein to comprise graft copolymer (B) (abstract). Graft copolymer B is further discussed in [0035+]. Therein there is a core that may be polybutadiene [0037] (meeting the rubbery polymer latex including a rubber polymer of claim 1) that is enlarged with an enlargement treatment [0046] of an acid group containing latex [0047] that comprises an acid group such as acrylic acid [0049] and an alkyl acrylate [0050] wherein the acid group monomer is 5-40% of the latex [0052]. The acid group containing copolymer latex is added in amounts of 0.1-10 parts to the core latex to enlarge the core [0058] (meeting the polymer coagulant latex and preparation of an enlarged rubbery polymer latex of claim 1). Then, monomers are graft polymerized onto this core-coagulant [0060], the monomers may be styrene [0060] (meeting the aromatic vinyl monomer) and acrylonitrile [0061] (meeting the vinyl cyan monomer) wherein the vinyl cyanide monomer is present in a range from 0-30 wt% [0067] (meeting the content of vinyl cyan based monomer of claim 1). The particle size of the acid-containing polymer latex is exemplified to be 110 nm [0126] (meeting the requirements of claim 3). The particle size here is a direct relation to the molecular weight (MW). Since the particle size of the latex is met, the weight average MW required by claim 1 must be met/embraced by the reference (meeting the MW of 550k-750k of claim 1).
Thus, elements above embrace and render obvious (in light of the overlapping ranges thereof, see In re Wertheim) all the method steps and % requirements of claim 1. Elements above also meet claims 2-5. The gel content is exemplified to be 88 wt% [0124] for the core butadiene latex, and it is the Examiner’s position that the overall latex would also have this same gel% (since this gel% would not be modified from the remaining reactions), thus meeting claim 6. The polymerization can be made by suspension or bulk polymerization [0071], thus not including an emulsifier, as required by claim 7.
The particle sizes of the end polymer may be controlled by known methods of controlling particle size distribution [0041] wherein rubbery polymers having different particle sizes are provided separately and mixed together to give a desired PSD [0043]. Such renders the use of any particle size distribution prima facie obvious. Further, taking the formula PSD= (D90-D10)/D50, example f-8 has a PSD of 0.47 (190-120)/150, meeting claim 8. Elements above meet claim 9 and the resin of the abstract of Matsuyama that includes graft copolymer B meets claim 10.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jeon in view of Matsuyama.
Elements of this rejection are as previously set forth, reiterated below in its entirety in italics.
Jeon discloses using emulsion polymerization (which would include an emulsifier). Jeon does not disclose not using an emulsifier in the graft polymerization.
Matsuyama includes elements as set forth above. Matsuyama discloses that the graft polymerization may be done using any known technique including emulsion polymerization (embracing that of Jeon), suspension polymerization and bulk polymerization [0071]. Matsuyama thusly teaches suspension and bulk polymerization to function equivalently to emulsion polymerization for the same graft polymerization process as Jeon.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to include in Jeon the use of suspension or bulk polymerization, as taught by Matsuyama, since they are recognized in the art as functional equivalents to emulsion polymerization for the graft polymerization process.
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jeon (WO 2019164176 wherein US 2020/0140597 is used as an equivalent English document) in view of Matsuyama, or, Matsuymana in view of Jeon.
Elements of this rejection are as previously set forth, reiterated below in its entirety in italics.
Jeon includes elements as set forth above. Jeon discloses methods of preparing ABS graft copolymers and methods of making resins therefrom (title). The ABS graft copolymer resin of Jeon is very similar to that of Matsuyama. Therein, the ABS graft copolymer resin has a core that may be polybutadiene [0029] further enlarged via a coagulant [0028], wherein the coagulant is an acid containing polymer [0043+]. Additional polymerization to include vinyl monomers thereon is then performed [0066+] wherein styrene and acrylonitrile may be added in this step (Examples 1-4). These are very similar end graft copolymer products. Jeon further discloses that these types of graft copolymers are great for making thermoplastic resin compositions [0076]. These are made by mixing 20-40% of the graft copolymer with 60-80% of a nongraft resin [0077], the non-graft resin may be a copolymer of vinyl aromatic compound and vinyl cyanide [0079]. Jeon’s graft copolymer is very similar to that of Matsuyama, but Jeon does not disclose the specific copolymer of Matsuyama.
Matsuyama includes elements as set forth above. Matsuyama is drawn to thermoplastic resins that include the above graft copolymer B. Matsuyama thusly teaches this graft copolymer to also be suitable for use for blending with other resins to make an end resin composition. Given the similarity and suitability of the resin of Matsuyama to form resin compositions, one would have a reasonable expectation of success when using the graft copolymer of Matsuyama in the composition of Jeon.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to include Jeon the graft copolymer of Matsuyama, to make an end resin comprising 20-40% of the graft copolymer with 60-80% of a nongraft resin [0077], wherein the non-graft resin may be a copolymer of vinyl aromatic compound and vinyl cyanide [0079] since it is recognized in the art as a suitably known (and very similar) graft copolymer for making resin compositions in the art.
Alternatively/Additionally it would have been obvious to one of ordinary skill in the art before the effective filing date to include in Matsuyama the use of the graft copolymer B to make an end resin comprising 20-40% of the graft copolymer with 60-80% of a nongraft resin [0077], wherein the non-graft resin may be a copolymer of vinyl aromatic compound and vinyl cyanide [0079], as taught by Jeon, since it is another suitably known resin one can make using a very similar copolymer. See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), wherein the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination.
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 1-4, 7, 9, 10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1, 2, 4, 13 of copending Application No. 17/771679 (reference application).
Elements of this rejection are as previously set forth, reiterated below in its entirety in italics
Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1 and 2 of ‘679 disclose those elements of instant claims 1-3, 7 wherein since the particle size of instant claim 3 is met the MW of instant claim 1 must be embraced. Claim 4 of ‘679 further meets instant claim 4 and claim 13 of ‘679 meets instant claims 9, 10.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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/ALICIA BLAND/ Primary Examiner, Art Unit 1759