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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 15-26, and the species n-butyl acrylate in the reply filed on 8/17/2026 is acknowledged.
Claims 27-28 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 8/17/2026.
Claim Objections
Claims 15-26 are objected to because of the following informalities: “A” must be added to the beginning of claim 1. Appropriate correction is required.
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.
Claim 19 is 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. The limitation “wherein C1 to C2 alkoxy radial or halogen” is indefinite. It is not clear what variable of the structure contains the alkoxy radial or halogen. The limitation “wherein R3 is an unbranched or branched” since it is unclear what is branched or unbranched. The last line of the claim is also indefinite. It is unclear what portion of the structure is optionally substituted.
Claim 26 is 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. The limitation “are used in” is indefinite because it is an active method step in a composition claim. For the purpose of applying prior art the limitation is being interpreted as an intended use of the composition.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 15-26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Weitzel (6,605,663).
Regarding claims 15-18: Weitzel teaches a polyvinyl alcohol-stabilized (meth)acrylic ester polymer, wherein the polymers are in the form of an aqueous dispersion powder and have a particle size Dw of 800 nm (Example 1), wherein the (meth)acrylic ester polymer is based on:
10 to 70 wt% of vinyl esters of carboxylic acids having from 5 to 15 carbon atoms (column 3, lines 7-25);
Leaving 30 to 90 wt% of the remaining monomers n-butyl acrylate and methyl methacrylate (column 3, line 62 to line 4, line 27; Example 1). The polymer of Example 1 comprises 63 wt% n-butyl acrylate (monomer (b)) and 37 wt% of methyl methacrylate (monomer (c)) (Example 1).
The range of vinyl esters of carboxylic acids overlaps the claimed range.
The subject matter as a whole would have been obvious to one having ordinary skill in the art prior to the effective filing date of the claimed invention, since it has been held that choosing the overlapping portion, of the range taught in the prior art and the range claimed by the applicant, has been held to be a prima facie case of obviousness, see In re Malagari, 182 USPQ 549, In re Geisler 43 USPQ2d 1365 (Fed. Cir. 1997); In re Woodruff, 16 USPQ2d 1934 (CCPA 1976) and MPEP 2144.05.
Regarding claim 19: Weitzel teaches the claimed silane (column 3, lines 50-55).
Regarding claim 20: Weitzel teaches glycidyl methacrylate or glycidyl acrylate (column 3, lines 48-50).
Regarding claim 21: Weitzel teaches 0 wt% of the claimed monomers (f) (Example 1).
Regarding claim 22: Weitzel teaches none of the claimed monomers (Examples).
Regarding claim 23: Weitzel teaches the claimed polyvinyl alcohol (column 5; Examples).
Regarding claim 24: Weitzel teaches no emulsifiers (column 5, lines 51-52; Examples).
Regarding claim 25: Since the polymer is the same as claimed, produced in the same was as the polymer in instant specification, and has a claimed Dw, it will possess the claimed polydispersity. The courts have stated that a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position.
Regarding claim 26: This claim is being interpreted as an intended use of the polyvinyl alcohol-stabilized (meth)acrylic ester polymers. The polymers of Weitzel is capable of functioning in the claimed capacity (column 7, lines 33-45).
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN USELDING whose telephone number is (571)270-5463. The examiner can normally be reached on M-F 8am to 6:30pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached on 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN E USELDING/ Primary Examiner, Art Unit 1763
