DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 4/13/26 has been entered.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . Per amendment dated 4/13/26, claims 1, 2, 4-10 are currently pending in the application, with claims 4-8 being withdrawn from further consideration drawn to a nonelected invention, there being no allowable generic or linking claim.
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.
Claims 1, 2, 9 and 10 are rejected under 35 U.S.C. 103 as being unpatentable Chun et al. (US 2006/0241277 A1, of record), alone, or in view of CN 103059790 A (CN’790, machine translation).
Regarding claim 1, Chun teaches an imide substituted copolymer resin comprising units of 45-56 wt. % of an aromatic vinyl monomer such as of styrene, 2-10 wt. % of a vinyl cyanide monomer, 35-45 wt. % of a maleimide monomer and 0-5 wt. % of an unsaturated dicarboxylic anhydride monomer [0023], [0025]. Chun further teaches use of chain transfer agents for controlling the molecular weight of the resin [0035].
Disclosed Example 2 is drawn to a copolymer of styrene (57.8 wt.%), N-phenyl maleimide (34.4 wt.%) and acrylonitrile (6.3 wt.%), having a molecular weight (Mw) of 102,000 (that falls within the claimed range), a glass transition temperature of 172.5oC (very close to the claimed upper limit of 172oC), and having a superior fluidity (Table 1, [0082]).
Chun is silent on a copolymer comprising monomer units in claimed amount, and having a weight average molecular weight and Tg as in the claimed invention in one single embodiment.
At the outset, it is noted that 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). See MPEP § 2144.05.
Given the teaching in Chun on suitable amounts of styrene, acrylonitrile and maleimide monomer units in the copolymer, the teaching in Examples on polymers and molecular weight (Mw) thereof having high fluidity, and recognizing that N-phenyl maleimide would contribute to increasing Tg due to its rigid cyclic structure, it would have been obvious to one of ordinary skill the art, as of the effective filing date of the claimed invention, to prepare polymers comprising monomer units in any amount within the prescribed range, including those within the scope of the claimed invention, and having a Mw and Tg within the claimed ranges so as to provide for improved fluidity, absent evidence to the contrary.
In the alternative, the secondary reference CN’790 teaches that N-phenyl maleimide N-substituted phenyl maleimide, because it has a rigid five-membered ring structure, can obviously increase the glass transition temperature and the thermal decomposition temperature of the polymer [0015].
Thus, given the teaching in the secondary reference on the impact of N-substituted phenyl maleimide on Tg, i.e., conversely polymer mobility, and the teaching in Chun on suitable amounts of styrene, acrylonitrile and maleimide monomer units in the copolymer, the teaching in Examples on polymers and molecular weight (Mw) having high fluidity, it would have been obvious to one of ordinary skill the art, as of the effective filing date of the claimed invention, to prepare polymers from the prescribed range of monomer units, including those having monomers units, Mw and Tg within the claimed ranges so as to provide for improved fluidity because a high Tg, absent evidence to the contrary.
Regarding claim 2, for reasons stated above, one of ordinary skill in the art would have found it obvious to prepare a copolymer within the scope of instant claim 1. Additionally, a skilled artisan would reasonably expect a copolymer of overlapping scope to have the claimed property on the basis that material and their properties are inseparable, absent evidence to the property. As a practical matter, the Patent Office is not equipped to manufacture products by the myriads of processes put before it and then obtain prior art products and make physical comparisons.
Regarding claims 9 and 10, Chun teaches aromatic amine for iridization, including aniline, toluidine, chlorophenylamine, with aniline being preferable, i.e., providing for the claimed N-phenyl maleimide [0046].
Claims 1, 2, 9 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Terada (US 2010/0240813 A1, of record).
Regarding claim 1, Terada teaches a copolymer (B) including constituent monomer units of an aromatic vinyl compound (40-68 wt.%), an unsaturated dicarboximide derivative (32-60 wt.%), and a copolymerizable compound, such as acrylonitrile (reads on vinyl cyanide), (0.01-20 wt.%), with said copolymer (B) having a weight average molecular weight of from 70,000 to 250,000, and a glass transition temperature of 165oC or higher, and 250oC or lower (Ab., [0079], [0084], [0088]-[0093]).
Terada is silent on a copolymer comprising units of acrylonitrile in claimed amount, and having claimed weight average molecular weight and Tg, in one single embodiment as in the claimed invention.
As stated in paragraph 7 above, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
Given the generic teaching in Terada on constituent monomers and amounts thereof in copolymer (B), and the ranges prescribed for the weight average molecular weight and glass transition temperature, it would have been obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention, to prepare copolymers within the scope of Terada, including those of the claimed invention, absent evidence to the contrary.
Regarding claim 2, for reasons stated above, one of ordinary skill in the art would have found it obvious to prepare a copolymer within the scope of instant claim 1. Additionally, a skilled artisan would reasonably expect a copolymer of overlapping scope to have the claimed property on the basis that material and their properties are inseparable, absent evidence to the property. As a practical matter, , the Patent Office is not equipped to manufacture products by the myriads of processes put before it and then obtain prior art products and make physical comparisons.
Regarding claims 9 and 10, Terada teaches a method in which an aromatic vinyl compound, an unsaturated dicarboxylic anhydride, and as required, a copolymerizable compound are copolymerized, and thereafter are allowed to react with ammonia and/or a primary amine to convert an acid anhydride group to an imide group. Disclosed primary amines include, for example, aromatic amines such as aniline, toluidine, chloroaniline, methoxyaniline and tribromoaniline [0078], [0080]-[0081]. Reacting said aromatic amines with a dicarboxylic anhydride, e.g., maleic anhydride, is capable of providing for the claimed monomer units.
Response to Arguments
In view of the amendment dated 4/13/26, the rejections of record based Sohn et al. are withdrawn.
Applicant’s arguments with respect to rejections based on Terada has have been duly considered. Applicant argues that Terada a broad range of Mw, of 70,000 to 250,000, and the Mw of its most relevant examples are 151,000 and 149,000, respectively, which are outside the scope of the present claims. Referring to the data in Tables 1-4, applicant argues that the copolymers A-1 to A-8 in Examples 1-8, as compared to comparative copolymers B-1 to B-7 in Comp. Ex. 1-7, provide for unexpectedly superior results, for example in terms of yellowness index (YI) and fluidity (MFR), which Terada fails to disclose, suggest or predict, and that for copolymers falling outside the scope of claim 1, the resin composition's fluidity (MFR) significantly decreases, its yellowness index (YI) worsens, and/or its impact resistance and chemical resistance are greatly impaired.
In response, while Terada teaches copolymers of a broad scope, nevertheless, the copolymers encompass those of the claimed invention. Moreover, a teaching contained in a reference’s broader disclosure may be relied upon despite not appearing in the reference’s examples. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). See MPEP 2123.
Regarding the asserted unexpected results, applicable to Terada as well as to Chun reference applied herein above, while the copolymers A1-A8 of inventive examples 1-8 appear to demonstrate one or more superior properties, compared to those of B1-B7, examiner maintains the comparison is limited to copolymers A1-A8 comprising units of specific monomer species in specific amounts, i.e., of styrene, acrylonitrile, N-phenyl maleimide, and optionally of maleic anhydride, while the polymer of claim 1 is of broader scope. Therefore, Examiner maintains that the showing of unexpected results is not reasonably commensurate in scope with the claim language.
Conclusion
Any inquiry concerning this communication or earlier communications from the
examiner should be directed to Satya Sastri at (571) 272 1112. The examiner can be reached Monday-Friday, 9AM-5.30PM (EST). If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Mr. Robert Jones can be reached at (571)-270-7733. The fax phone number for the organization where this application or proceeding is assigned is (571) 273 8300.
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/Satya B Sastri/
Primary Examiner, Art Unit 1762
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