DETAILED ACTION
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 Per amendment dated 10/27/25, claims 1-8 are currently pending in the application, with claims 4-8 being withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
The terminal disclaimer filed on 10/28/25 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of Appl. No. 17/622,640 has been reviewed and is accepted. The terminal disclaimer has been recorded.
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 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over Sohn et al. (US 2012/0142875 A1, of record).
Regarding claims 1 and 3, Sohn teaches terpolymers comprising units of N-substituted maleimide monomer (5-60 wt.%), unsaturated nitrile monomer (5-50 wt.%), and a-alkylstyrene monomer (5-50 wt.%), having a weight average molecular weight (Mw) of 70,000 to 300,000, and a glass transition temperature in the range of 140 to 200oC (Ab.). Disclosed a-alkylstyrene monomers include a-methyl styrene and a-ethylstyrene [0016], and disclosed genus of unsaturated nitrile monomers include acrylonitrile [0014]. It is noted that the genus of aromatic vinyl monomers in the instant disclosure encompasses o-methyl styrene and ethyl styrene [0011].
Working Examples in TABLE 2 are directed to copolymers of N-phenyl maleimide monomer (reads on maleimide monomer), a-methyl styrene (reads on aromatic vinyl monomer), and acrylonitrile (reads on vinyl cyanide). Additionally, disclosed Example 1 is drawn to a copolymer of N-phenyl maleimide (at 30 wt.%), a-methylstyrene (at 46 wt.%) and acrylonitrile (at 24 wt.%), having a weight average molecular weight of 120,000 and a Tg of 170oC (TABLE 2).
Sohn is silent on a copolymer comprising units of vinyl cyanide in claimed amount, having claimed weight average molecular weight and Tg, in one single embodiment as in the claimed invention.
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. See MPEP § 2144.05.
Given the generic teaching in Sohn on a copolymer comprising unsaturated nitrile monomer units, such as those of acrylonitrile, at 5 to 50 wt.%, a weight average molecular weight of 70,000 to 300,000, and a glass transition temperature as ranging from 140 to 200oC, 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 comprising units of acrylonitrile in amounts within the prescribed range, having a weight average molecular weight and glass transition temperature within the disclosed ranges, including those within the scope of the claimed invention.
Regarding claim 2, for reasons stated above, one of ordinary skill in the art would have found it obvious to prepare copolymer of instant claim 1 from Sohn’s generic teachings. Additionally, a skilled artisan would reasonably expect the copolymers of overlapping scope to have the claimed property on the basis that material and their properties are inseparable, absent evidence to the contrary. 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. In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972).
Claims 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over Terada (US 2010/0240813 A1, of record).
Regarding claims 1 and 3, 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]).
Additionally, disclosed copolymer [S-PMI-3] is a styrene/N-phenylmaleimide/acrylonitrile copolymer at 50/40/10 mass ratio, having a weight average molecular weight of 151,000 and a glass transition temperature of 169oC [0233]-[0237]
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), on weight average molecular weight and glass transition temperature ranges, 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.
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 stated in paragraph 9 above, 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.
Response to Arguments
In view of the amendment (dt. 10/27/25) and the filing of a proper terminal disclaimer (dt. 10/28/25), the rejections of record are withdrawn and rewritten herein above, relying on the art of record. It is further noted that although Examiner is not levying new grounds on rejection in order to maintain compact prosecution, Applicant is alerted to conflicting claims over Appl. No. 17610049 for future reference.
Applicant’s arguments have been duly considered. Regarding the Sohn reference, Applicant argues that all the Examples require 20 wt.% or more of vinyl cyanide, that copolymers B-1 to B-6 in Comparative Examples 1-6 show that when Mw exceeds 110,000 and the vinyl cyanide monomer content exceeds 15 mass%, the composition’s fluidity (MFR) decreases significantly and its yellowness index worsens, that the claims cannot be obvious because Sohn does not recognize the Mw and vinyl cyanide monomer content as result effective variables.
Regarding the Terada reference, Applicant argues that Terada’s Examples rely on S-PMI-3 and S-PMI-4 having a molecular weight of 151,000 and 149,000, respectively, that are outside of the scope of the present claims, that copolymers B-1 to B-6 constituting Comparative Examples 1-6 show that when the copolymer's Mw exceeds 110,000, the resin composition's fluidity (MFR) significantly decreases, and its yellowness index (YI) worsens and when the Mw is below 50,000, the resin composition's impact resistance and chemical resistance are greatly impaired. Applicant further argues that Terada’s objective is to improve properties of a composition comprising polyphenylene ether as an essential component, in contrast in that of the present invention that relates to compositions containing ABS resin.
Applicant concludes that a person of ordinary skill in the art would not be motivated to alter Sohn or Terada of provide for the effects of the present invention.
In response, as an initial matter, it is noted that Sohn and Terada teach maleimide-containing copolymers having a weight average molecular weight of at 70,000 at a minimum. The generic teachings of Sohn and Terada references obviate the claimed limitations of a maleimide-based (co)polymers having a Mw and Tg as claimed for reasons stated in the rejections above. The argument that Sohn and Terada references fail to recognize Mw and vinyl cyanide monomer content in the copolymer as result effective variables is not deemed persuasive and Examiner maintains that a skilled artisan would have found it obvious to prepare any of the copolymer comprising disclosed monomer units, a Tg and Mw within the scope of cited references.
Although the disclosed Examples therein teach copolymers having a Mw and/or a vinyl cyanide content outside of the claimed ranges, 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 arguments on unexpected results, referring to the data in the instant disclosure, although the inventive compositions in TABLE 3 of the instant disclosure demonstrate superior flow characteristics compared to Comparative Examples 1-6 in Table 4 that rely on B-1 to B-6 copolymers, the data on superior performance is limited to the specific exemplified embodiments having narrow ranges for molecular weight and Tg. However, it is not clear why such specific copolymers would be representative of claim 1 that is of a much broader scope, i.e., the data on record is not reasonably commensurate in scope with the claim language to overcome the applied art.
Regarding the argument that Terada’s objective differs from that of the present invention relating to compositions containing ABS resin, it is noted that claim 1 is drawn to a maleimide-based copolymer, which copolymer is obviated by Terada for reasons stated above. A skilled artisan would reasonably expect Terada’s maleimide-based polymer component comprising acrylonitrile units, and having Mw and Tg of overlapping scope to change its material characteristics or be patentably distinct in compositions comprising polyphenylene ether, absent evidence to the contrary.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Chun et al. (US 2006/0241277 A1) and Yamaguchi (JPH11-60640, machine translation) teach imide substituted copolymers formed from copolymers comprising units of an aromatic vinyl monomer, vinyl cyanide monomer and a dicarboxylic acid monomer by performing imidization reaction.
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.
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