DETAILED ACTION
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior office action.
All outstanding objections and rejections made in the previous Office Action, and not repeated below, are hereby withdrawn.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 1/9/26 has been entered.
Claim Rejections - 35 USC § 112
Claims 5 and 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.
Specifically, claims 5 and 14 depend upon canceled claims 4 and 13 respectively. Therefore, the scope of the claims cannot be determined.
For the purposes of examination in the instant action, the claims will be treated as depending upon claims 1 and 10 respectively.
Claim Rejections – Keiskuke
Claim(s) 10-11 and 14-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP 2017-160371 (herein Keisuke) as evidenced by US 2010/0068433 (herein Gibanel) and optionally in view of US 2012/0194621 (herein Ikegami).
In setting forth the instant rejection, the machine translation for Keisuke supplied in the IDS filed 9/6/22 is relied upon.
As to claim 10, Keisuke discloses a polymer fine particles (see abstract, paragraphs 10-16 and examples) having an acid value of 10 to 50 mgKOH/g (paragraph 29 and examples, which overlaps the claimed range). The acid value is exemplified as 24 and the particle size is exemplified as 417 nm. Moreover, the particles are for a structure is disclosed comprising the particles arranged that develop color. See abstract, paragraph 17 and examples.
As to the new limitation, the main component in the particles is styrene in the examples. Further, the last line of paragraph 25 states that they are polystyrene fine particles. Lastly, paragraph 31 states that the monomer having a refractive index of 1.50 or more (styrene in paragraph 32) is present in 10 wt% or more. This amount overlaps the claimed range. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). Also see MPEP 2144.05 stating that when there is overlap with the claimed ranges and the prior art, a prima facie case of obviousness exists. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to select any amount within the disclosed ranges, including amounts within the scope of the instant claims.
This is especially true given that the acrylic acid is present in an amount to yield an acid value down to 10 mgKOH/g. See abstract. Since acrylic acid has a molecular weight of 72, the acid number can be calculated via 56.1 * w/72 *1000. Thus, the acrylic acid must be present between about 1.3 wt% (10 mgKOH/g) up to about 6 wt%. Note that no other monomers are required. Thus, suggesting a polymer that is about 1.3 wt% acrylic acid and 98.7 wt% styrene. Nevertheless, the guidance of Keisuke suggests ability to modify the amounts via routine experimentation and arrive at the claimed invention.
Keisuke is silent on the Tg being above 60 oC. However, the Tg can be calculated via the Fox equation from the amounts of the monomers in the polymer. See paragraph 62 of Gibanel for evidence. Given that the monomers are styrene and acrylic acid in Keisuke, which have a Tg of 100 oC and 106 oC (see paragraph 62 of Gibanel for evidence), it is clear that the Tg of Keisuke would be within the claimed range and be about 100 oC given the amount of styrene.
Furthermore, Ikegami discloses that the Tg of the particles should generally be above 25 oC up to 120 oC in order to balance hardness, scratch resistance and ease of processing (exemplified as about 100, see table 2). See paragraph 31. Both Katusaki and Ikegami are directed towards ink-jet compositions comprising polymer fine particles.
It would have been obvious at the time of the invention to have modified Keisuke with an appropriate Tg as taught by Ikegami in order to balance both the hardness, scratch resistance and ease of processing. See paragraph 31 of Ikegami.
As to claim 11, Keisuke discloses that the particles have a uniform resin composition. See paragraph 21 and examples.
As to claim 14, example 1 comprises acrylic acid and other examples comprise acrylic and/or methacrylic acid. Moreover, see paragraph 26-27.
As to claim 15, an emulsion comprising the particles are dispersed in water to form an emulsion. Also see paragraph 18.
As to claim 16, a structure is disclosed comprising the particles arranged that develop color. See abstract, paragraph 17, 35 and examples.
As to claims 17-18, the particles are utilized as paints, ink-jet inks (for printing), etc., which reads on an article (when printed/painted) comprising a structure on a substrate (e.g. paper, wall). See paragraph 47 Moreover, paint when applied is a film.
Claim(s) 1-2 and 5-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP 2017-160371 (herein Keisuke) in view of JP 2009-249527 (herein Katusaki) as evidenced by US 2010/0068433 (herein Gibanel) and optionally in view of US 2012/0194621 (herein Ikegami).
In setting forth the instant rejection, the machine translations for Keisuke and Katusaki supplied in the IDS filed 9/6/22 are relied upon.
As to claim 1, Keisuke discloses a polymer fine particles (see abstract, paragraph 10-16 and examples) having a number average particle diameter of 100 to 400 nm (paragraph 20 and examples), a coefficient of variation (CV) value of 20% or less (paragraph 21 and examples) and an acid value of 10 to 50 mgKOH/g (paragraph 29 and examples). The acid value is exemplified as 24 and the particle size is exemplified as 417 nm.
As to the new limitation, the main component in the particles is styrene in the examples. Further, the last line of paragraph 25 states that they are polystyrene fine particles. Lastly, paragraph 31 states that the monomer having a refractive index of 1.50 or more (styrene in paragraph 32) is present in 10 wt% or more. This amount overlaps the claimed range. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). Also see MPEP 2144.05 stating that when there is overlap with the claimed ranges and the prior art, a prima facie case of obviousness exists. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to select any amount within the disclosed ranges, including amounts within the scope of the instant claims.
This is especially true given that the acrylic acid is present in an amount to yield an acid value down to 10 mgKOH/g. See abstract. Since acrylic acid has a molecular weight of 72, the acid number can be calculated via 56.1 * w/72 *1000. Thus, the acrylic acid must be present between about 1.3 wt% (10 mgKOH/g) up to about 6 wt%. Note that no other monomers are required. Thus, suggesting a polymer that is about 1.3 wt% acrylic acid and 98.7 wt% styrene. Nevertheless, the guidance of Keisuke suggests ability to modify the amounts via routine experimentation and arrive at the claimed invention.
Keisuke is silent on the Tg being above 60 oC. However, the Tg can be calculated via the Fox equation from the amounts of the monomers in the polymer. See paragraph 62 of Gibanel for evidence. Given that the monomers are styrene and acrylic acid in Keisuke, which have a Tg of 100 oC and 106 oC (see paragraph 62 of Gibanel for evidence), it is clear that the Tg of Keisuke would be within the claimed range and be about 100 oC given the amount of styrene.
Furthermore, Ikegami discloses that the Tg of the particles should generally be above 25 oC up to 120 oC in order to balance hardness, scratch resistance and ease of processing (exemplified as about 100, see table 2). See paragraph 31. Both Katusaki and Ikegami are directed towards ink-jet compositions comprising polymer fine particles.
Thus, the difference between Keisuke and the claimed invention is that the CV taught in overlapping ranges and exemplified at about 20%. However, Keisuke discloses that when the CV is large, the particles are difficult to obtain.
Moreover, Katsuaki discloses similar polymer fine particles for developing color. See abstract, paragraph 13 and examples. Katsuaki discloses that the CV value is less than 5% in order to yield particles that have improved optical characteristics and structured films. See paragraph 26 and examples.
It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). Also see MPEP 2144.05 stating that when there is overlap with the claimed ranges and the prior art, a prima facie case of obviousness exists. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to select any amount within the disclosed ranges, including amounts within the scope of the instant claims. Moreover, it would have been obvious to utilize particles with a CV of 5% or less as suggested by Katsuaki because one would want to improve optical characteristics and structured films. See paragraph 26 and examples.
As to claim 2, Keisuke discloses that the particles have a uniform resin composition. See paragraph 21 and examples.
As to claim 5, example 1 comprises acrylic acid and other examples comprise acrylic and/or methacrylic acid. Moreover, see paragraph 26-27.
As to claim 6, an emulsion comprising the particles are dispersed in water to form an emulsion. Also see paragraph 18.
As to claim 7, a structure is disclosed comprising the particles arranged that develop color. See abstract, paragraph 17, 35 and examples.
As to claims 8-9, the particles are utilized as paints, ink-jet inks (for printing), etc., which reads on an article (when printed/painted) comprising a structure on a substrate (e.g. paper, wall). See paragraph 47 Moreover, paint when applied is film-like.
Moreover as to claims 8-9 and claims 17-18, Katsuaki discloses articles comprising coating the particles on a substrate and film like structures. See abstract, paragraph 12, 48 and 105 of Katsuaki. Therefore, it would have been obvious at the time of the invention to have utilized the particles of Keisuke for forming articles on substrates and film structures as suggested by Katsuaki because one would want to utilize similar particles for uses taught as their intended purpose.
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive.
Applicant argues that paragraph 31 teaches away from the claimed invention by the limitation that the monomer having a refractive index of 1.50 or more is present in 80 wt% or less.
In response, the examiner disagrees. This limitation is “preferable” and thus a narrower limitation. Disclosed examples do not constitute a teaching away from a broader disclosure. Patents are relevant as prior art for all they contain. Thus, rejections over prior art’s broad disclosure instead of a preferred embodiment are proper. See MPEP § 2123 and references cited therein for more information. A nonpreferred portion of a reference disclosure is just as significant as the preferred portion in assessing the patentability of claims." See In re Nehrenberg, 280 F.2d 161,126 USPQ 383 (CCPA 1960). In the instant case, the broader discloser teaches amounts of 10 wt% or more.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARK S KAUCHER whose telephone number is (571)270-7340. The examiner can normally be reached M-F 8-6 PM EST.
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/MARK S KAUCHER/Primary Examiner, Art Unit 1764