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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/7/2025 has been entered.
Status of Claims
Claim 1 has been amended, claims 7 and 8 have been cancelled, and claims 13-15 have been added. Claims 1-6 and 9-15 are pending.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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.
Claims 1-6, 9, and 13-14 are 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.
Regarding Claims 1 and 4,
The applicant states in claim 1 that “the imide-based monomer is introduced at once in an amount of 10 wt% to 24 wt% before the start of the polymerization…” and then later states that “and is continuously introduced in an amount of 76 wt% to 99 wt%..”. However, if 10 wt% is required to be added prior to the start of polymerization, the addition of 99 wt% would not be possible after the start of the polymerization, rendering the claim to be indefinite. Similarly, claim 4 states the same range of addition for the imide-based monomer, rendering this claim to be indefinite. The applicant is required to review the claim language and revise as necessary.
Claims 2-3, 5-6, 9, and 13-14 are rejected based upon their dependency on claim 1.
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.
Claims 1-6 and 9-15 are rejected under 35 U.S.C. 103 as being unpatentable over Nakanishi (WO 2021006265, herein using English language version US 20220356285).
Regarding Claims 1 and 3-4,
Nakanishi teaches a copolymer comprised of an aromatic vinyl monomer, a vinyl cyan monomer, and a maleimide monomer (Abstract). Nakanishi further teaches that maleimide can be introduced in the direct method (Paragraph 44, using maleimide as monomer) and additionally teaches that 0 to 30% by mass of this monomer is added prior to initiation of the polymerization (Paragraph 48), which contains the 10 to 24 wt% range of the instant claims. Nakanishi teaches that this is done to improve the distribution of the maleimide monomer in the final polymer (Paragraph 47), providing the ordinarily skilled artisan the motivation to work within the stated range. Nakanishi also teaches that the remainder of the maleimide monomer is charged in portions or continuously during the polymerization (Paragraph 49). This results in the added amount of monomer to be between 70 and 100% by mass, which overlaps with the 76 to 99% by mass of claim 4. As such, it would have been obvious prior to the effective filing date of the instant application to have selected the overlapping portion of the ranges because the selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP 2144.05.I. While Nakanishi is silent on the polymerization conversion, Nakanishi does teach that he polymerization conditions are not particularly limited (Paragraph 41) and teaches that the molecular weight of the final polymer is preferably between 50,000 and 200,000 (Paragraph 42). The ordinarily skilled artisan would be motivated to target a value in this range because Nakanishi states that flowability is impaired at higher molecular weights while impact resistance suffers when falling below the lower bound (Paragraph 42). As such, it would have been obvious to have stopped the polymerization at any conversion rate to meet the desired molecular weight range.
Finally, Nakanishi teaches that the entire amount of the vinyl cyan monomer is charged prior to the initiation of polymerization (Paragraphs 47 and 48).
Regarding Claim 2,
Nakanishi teaches that the aromatic vinyl monomer may be added in its entirety prior to the start of the polymerization (Paragraph 47), meeting the requirements of claim 2.
Regarding Claims 5 and 6,
Nakanishi teaches that 0 to 30% by mass of this monomer is added prior to initiation of the polymerization (Paragraph 48), which contains the 10 to 20 wt% range of the instant claims. Nakanishi teaches that this is done to improve the distribution of the maleimide monomer in the final polymer (Paragraph 47), providing the ordinarily skilled artisan the motivation to work within the stated range. Nakanishi also teaches that the remainder of the maleimide monomer is charged in portions or continuously during the polymerization (Paragraph 49). This results in the added amount of monomer to be between 70 and 100% by mass, which overlaps with the 76 to 99% by mass of claim 4. As such, it would have been obvious prior to the effective filing date of the instant application to have selected the overlapping portion of the ranges because the selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP 2144.05.I.
Regarding Claim 9,
Nakanishi teaches that the polymerization reaction is not particularly limited (Paragraph 40). While Nakanishi does not explicitly state the usage of suspension polymerization, because Nakanishi does teach the use of bulk polymerization and solution polymerization (Paragraph 40) to obtain the desired polymers, one of ordinary skill in the art would note that different polymerization types are permitted. Because suspension polymerization is known in the art, it would have been obvious prior to the effective filing date of the instant application to have used any suitable polymerization method, including suspension polymerization.
Regarding Claims 10-11 and 15,
Nakanishi teaches the composition of the polymer as discussed above in regard to claim 1. Regarding the glass transition temperature, Nakanishi teaches that it is preferable to have a glass transition temperature of the polymer between 175 and 185 °C (Paragraph 34) and further demonstrates in Table 1 (Examples A-1, A-3, A-6, and A-7) and Table 2 (Examples B-1, B-3, and B-4) polymers with glass transition temperatures greater than 178 °C. While Nakanishi does not teach the use of equations 1 and 2 as presented in claims 10 and 11, Nakanishi does state that modifications to the polymerization procedure, including the continuous addition of the maleimide monomer, are made to improve the distribution in the final polymer (Paragraph 47), noting in particular the uneven incorporation of monomers and their reactivity differences as the reason for this problem. As such, Nakanishi is addressing the same problem as that of the instant application, as the equations are serving to measure the evenness of the distribution of the monomers in the resulting polymer. Further, because Nakanishi is polymerizing the monomers under conditions broadly similar to those of the instant application, it would logically follow that the polymer of Nakanishi would also meet the requirement of less than 15 °C change in glass transition temperature and of the percentage of vinyl cyan monomer in the polymer.
Regarding Claim 12,
Nakanishi teaches that the polymer may be mixed with polymers such as acrylonitrile-butadiene-styrene (ABS) and styrene-acrylonitrile (SAN) (Paragraph 53), which the applicant lists in the specification as thermoplastic resins, meeting the requirement of the instant claim.
Regarding Claims 13 and 14,
Nakanishi teaches the addition of the full amount of vinyl cyan monomer prior to the start of polymerization (Paragraph 48). Further, Nakanishi teaches that the aromatic vinyl monomer is preferably added in amounts of 10-90% of the mass prior to polymerization (Paragraph 48) with the remainder added during the polymerization (Paragraph 49). This range overlaps with the range of the instant claims. Because Nakanishi notes that the maleimide and aromatic vinyl monomer have a strong tendency to generate an alternating copolymer (Paragraph 47), one of ordinary skill in the art would no doubt recognize that the amount of these two monomers would need to be controlled in order to generate small composition distributions (Paragraph 47). As such, it would have been obvious prior to the effective filing date of the instant application to have adjusted the amount of the aromatic vinyl monomer present at the start of the polymerization and how much is added as the polymerization proceeds in order to control the monomer distribution in the final polymer. Further, it would have been obvious to have selected the overlapping portions of the ranges because the selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP 2144.05.I.
Nakanishi also teaches that 5 to 20% by weight of the monomers should be vinyl cyan monomers (Abstract), which overlaps with the ranges of claims 13 and 14. It would have been obvious prior to the effective filing date of the instant application to have selected the overlapping portions of the ranges because the selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP 2144.05.I.
Response to Arguments
Applicant’s arguments with respect to claim(s) 11/7/2025 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
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ADAM J BERRO whose telephone number is (703)756-1283. The examiner can normally be reached M-F 8:30-5.
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, Heidi Kelley can be reached at 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/A.J.B./Examiner, Art Unit 1765
/JOHN M COONEY/Primary Examiner, Art Unit 1765