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 .
Claim Rejections - 35 USC § 102
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 13 and 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Rachwal (US 2011/0305862 A1).
Regarding claims 13 and 14, Rachwal teaches a thermoplastic compound comprising a polyvinyl chloride (PVC) matrix, blended with from 5 to 90 weight percent of a composite polymer modifier (pages 5-6, claims 1, 11, and 12). Rachwal further discloses that the composite polymer modifier comprises between 1 and 99 weight percent of one or more fillers and from 1 to 99 weight percent of a polymeric processing aid (p. 5, claim 1). These are the only required components of the polymer modifier, and the components are taught as adding up to 100 percent by weight. Rachwal further reaches that the polymeric processing aid is an acrylic polymer (claim 2), and specifies that the acrylic polymer contains 10-90 weight percent of methyl methacrylate monomer units ([0028]). The acrylic polymer of Rachwal therefore reads on the claimed “(meth)acrylic copolymer” because it is a copolymer of methacrylate monomers.
Given that the composite polymer modifier of Rachwal comprises between 5 and 90 weight percent of the overall composition, as described above, the PVC polymer may comprise between 10 and 95 weight percent of the overall composition. Furthermore, since the weight percentage of filler may comprise 1 to 99 weight percent of the polymer modifier, the overall composition may comprise from 10 to 95 weight percent of PVC and from 0.05 to 89.1 weight percent of the filler. The amount of filler in terms of parts per 100 parts of the PVC resin may therefore range from about 0.053 to about 890 phr, which overlaps and therefore anticipates the claimed range of “more than 40 phr.”
Rachwal is silent with regard to the claimed glass transition temperature of the acrylic copolymer. However, 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 anticipation has been established (See MPEP 2112.01). In the present case, the instant Specification employes a processing aid that is an acrylic copolymer having a molecular weight of 4,500,000 g/mol, comprises 90 weight percent of methyl methacrylate and 10 weight percent of butyl acrylate ([0137], Example 2, which uses the same copolymer as described at [0135], Comparative Example 3). This polymer is further shown as having a glass transition temperature of 107°C ([0145]). Meanwhile in Rachwal, the acrylic polymer is taught as having a molecular weight ranging from 50,000 to 10,000,000 g/mol (p. 6, claim 2), and comprising a weight distribution of monomers which overlaps those of the instant Specification as described above. The claimed glass transition temperature will therefore necessarily be present in Rachwal as applied above.
Therefore, Rachwal teaches the same composition as claimed. Turning towards the phrasing of claims 13 and 14, the claims are drawn to articles of the composition of claim 1, which are formed from the process of claim 1. These claims are recognized as product-by-process claims. Product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps (see MPEP 2113.I.). In the instant case, the process of claim 1 is not expected to impart any particular structure to the articles claimed of claims 13 and 14; this position appears supported by the fact that claims 1 and 2 appear to directly illustrate that compositions of the claimed formulation may be formed from more than one separate process. Therefore, the limitations of claims 13 and 14 only require articles formed from the composition of claim 1. As described above, Rachwall teaches a composition which reads on the claimed composition. Rachwal additionally teaches the formation of a sheet ([0073]), which therefore reads on the claimed “article” and “flooring sheet.”
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 1-12 and 15-25 are rejected under 35 U.S.C. 103 as being unpatentable over Rachwal (US 2011/0305862 A1).
Regarding claims 1-3, Rachwal teaches a thermoplastic compound comprising a polyvinyl chloride (PVC) matrix, blended with from 5 to 90 weight percent of a composite polymer modifier (pages 5-6, claims 1, 11, and 12). Rachwal further discloses that the composite polymer modifier comprises between 1 and 99 weight percent of one or more fillers and from 1 to 99 weight percent of a polymeric processing aid (p. 5, claim 1). These are the only required components of the polymer modifier, and the components are taught as adding up to 100 percent by weight. Rachwal further reaches that the polymeric processing aid is an acrylic polymer (claim 2), and specifies that the acrylic polymer contains 10-90 weight percent of methyl methacrylate monomer units ([0028]), which overlaps the claimed range of “at least 80 wt%,” establishing a prima facie case of obviousness. The acrylic polymer of Rachwal therefore reads on the claimed “(meth)acrylic copolymer” because it is a copolymer of methacrylate monomers.
Given that the composite polymer modifier of Rachwal comprises between 5 and 90 weight percent of the overall composition, as described above, the PVC polymer may comprise between 10 and 95 weight percent of the overall composition. Furthermore, since the weight percentage of filler may comprise 1 to 99 weight percent of the polymer modifier, the overall composition may comprise from 10 to 95 weight percent of PVC and from 0.05 to 89.1 weight percent of the
filler. The amount of filler in terms of parts per 100 parts of the PVC resin may therefore range from about 0.053 to about 890 phr, which overlaps the claimed range of “more than 40 phr,” establishing a prima facie case of obviousness.
Rachwal is silent with regard to the claimed glass transition temperature of the acrylic copolymer. However, 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 obviousness has been established (See MPEP 2112.01). In the present case, the instant Specification employes a processing aid that is an acrylic copolymer having a molecular weight of 4,500,000 g/mol, comprises 90 weight percent of methyl methacrylate and 10 weight percent of butyl acrylate ([0137], Example 2, which uses the same copolymer as described at [0135], Comparative Example 3). This polymer is further shown as having a glass transition temperature of 107°C ([0145]). Meanwhile in Rachwal, the acrylic polymer is taught as having a molecular weight ranging from 50,000 to 10,000,000 g/mol (p. 6, claim 2), and comprising a weight distribution of monomers which overlaps those of the instant Specification as described above. The claimed glass transition temperature will therefore necessarily be present in Rachwal as applied above.
Rachwal differs from claims 1 and 2 because it is silent with regard to the particularly claimed orders of mixing ingredients. However, any order of mixing ingredients is prima facie obvious (see MPEP 2144.04.IV.C.). Therefore, it would have been obvious to one having ordinary skill in the art at the time of filing to form the composition of Rachwal via the claimed process, which simply requires a particular combination of mixing steps.
Regarding claim 4, Rachwal teaches the blending of components as aqueous solutions and powderizing said blend (p. 6, claim 7), which reads on the claimed process.
Regarding claim 5, Rachwal teaches that the composition contains 1 to 99 weight percent of each of the polymeric processing aid (the acrylic polymer) and the organic filler (p. 5, claim 1), which encompasses the claimed range of “between 1 wt% and 50 wt%,” establishing a prima facie case of obviousness.
Regarding claim 6, Rachwal teaches the powderizing of the composition (p. 6, claim 7).
Regarding claims 7 and 8, Rachwal is silent with regard to the claimed particle size and homogeneity of the claimed composition P1. However, Rachwal as described above teaches a composition containing all of the claimed components P1, formed from a process which would have been prima facie obvious to one having ordinary skill in the art. As described above, products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. The claimed particle size and homogeneity of the claimed composition P1 will therefore necessarily be present in the teachings of Rachwal, as a substantially identical composition is formed from a process which is not patentably distinct from the claimed process.
Regarding claim 9, As described above, Rachwal teaches the incorporation of an acrylic polymer which reads on the claimed “(meth)acrylic copolymer.”
Regarding claim 10, Rachwal teaches that the acrylic copolymer comprises between 10 and 90 weight percent of methyl methacrylate ([0028]), and has a molecular weight ranging from 50,000 to 10,000,000 g/mol ([0027]). In both cases, the ranges taught by Rachwal overlap the claimed ranges, establishing prima facie cases of obviousness.
Regarding claim 11, Rachwal is silent with regard to the claimed glass transition temperature range of the acrylic copolymer. However, 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 obviousness has been established (See MPEP 2112.01). In the present case, the instant Specification employes a processing aid that is an acrylic copolymer having a molecular weight of 4,500,000 g/mol, comprises 90 weight percent of methyl methacrylate and 10 weight percent of butyl acrylate ([0137], Example 2, which uses the same copolymer as described at [0135], Comparative Example 3). This polymer is further shown as having a glass transition temperature of 107°C ([0145]). Meanwhile in Rachwal, the acrylic polymer is taught as having a molecular weight ranging from 50,000 to 10,000,000 g/mol (p. 6, claim 2), and comprising a weight distribution of monomers which overlaps those of the instant Specification as described above. The claimed glass transition temperature range will therefore necessarily be present in Rachwal as applied above.
Regarding claim 12, as described above, the composite polymer modifier of Rachwal comprises between 5 and 90 weight percent of the overall composition. Also as described above, the PVC polymer may comprise between 10 and 95 weight percent of the overall composition. Furthermore, since the weight percentage of organic filler may comprise 1 to 99 weight percent of the polymer modifier, the overall composition may comprise from 10 to 95 weight percent of PVC and from 0.05 to 89.1 weight percent of the organic filler. The amount of filler in terms of parts per 100 parts of the PVC resin may therefore range from about 0.053 to about 890 phr, which encompasses the claimed range of “between 40 phr and 350 phr,” establishing a prima facie case of obviousness.
Regarding claim 15, Rachwal is silent with regard to the particularly claimed orders of mixing ingredients. However, any order of mixing ingredients is prima facie obvious (see MPEP 2144.04.IV.C.). Therefore, it would have been obvious to one having ordinary skill in the art at the time of filing to form the composition of Rachwal via the claimed process, which simply requires a particular combination of mixing steps.
Regarding claims 16 and 17, Given that the composite polymer modifier of Rachwal comprises between 5 and 90 weight percent of the overall composition, as described above, the PVC polymer may comprise between 10 and 95 weight percent of the overall composition. Furthermore, since the weight percentage of organic filler may comprise 1 to 99 weight percent of the polymer modifier, the overall composition may comprise from 10 to 95 weight percent of PVC and from 0.05 to 89.1 weight percent of the organic filler. The amount of filler in terms of parts per 100 parts of the PVC resin may therefore range from about 0.053 to about 890 phr, which overlaps the claimed ranges of “between 40 phr and 300 phr,” and “between 50 phr and 300 phr,” establishing prima facie cases of obviousness.
Regarding claims 18 and 19, Given that the composite polymer modifier of Rachwal comprises between 5 and 90 weight percent of the overall composition, as described above, the PVC polymer may comprise between 10 and 95 weight percent of the overall composition. Furthermore, since the weight percentage of polymeric processing aid (acrylic polymer) may comprise 1 to 99 weight percent of the polymer modifier (p. 5, claim 1), the overall composition may comprise from 10 to 95 weight percent of PVC and from 0.05 to 89.1 weight percent of the acrylic polymer. The amount of acrylic polymer in terms of parts per 100 parts of the PVC resin may therefore range from about 0.053 to about 890 phr, which overlaps the claimed ranges of “between 0.01 and 20 phr” and “between 0.15 and 4 phr,” establishing prima facie cases of obviousness. Furthermore, Rachwal exemplifies the usage of the polymer modifier in Example formulation 2 (p. 5, Table 2), wherein in example composition 2, the inventive Modifier B is included in 4 phr with respect to the PVC resin. This Modifier B is 65% acrylic polymers ([0058]), and therefore the formulation contains 2.6 phr of the acrylic polymers, which falls within both ranges of “between 0.01 and 20 phr” and “between 0.15 and 4 phr,” establishing prima facie cases of obviousness.
Regarding claims 20 and 21, Rachwal teaches that the inorganic mineral filler may be, inter alia, calcium carbonate, fumed silica, precipitated silica, zeolite, and perlite (p. 6, claim 3), all of which read on the claimed list.
Regarding claim 22, Rachwal teaches that the acrylic copolymer comprises between 10 and 90 weight percent of methyl methacrylate ([0028]), which overlaps the claimed range of “at least 50 wt%,” establishing a prima facie case of obviousness.
Regarding claims 23-25, Rachwal teaches that the acrylic copolymer comprises between 10 and 90 weight percent of methyl methacrylate ([0028]), and has a molecular weight ranging from 50,000 to 10,000,000 g/mol ([0027]). In both cases, the ranges taught by Rachwal overlap the claimed ranges, establishing prima facie cases of obviousness.
Response to Arguments
Applicant’s arguments, see Applicant’s Remarks, filed February 17, 2026, with respect to 35 USC 112 have been fully considered and are persuasive. The 35 USC 112 rejections of claims 8, 10, 16, and 23-25 have been withdrawn.
Applicant's remaining arguments have been fully considered but they are not persuasive.
Applicant argues that the methyl methacrylate content disclosed by prior art Rachwal is too broad to read on the claimed range. This argument is tantamount to allegations of insufficient specificity; however, insufficient specificity is relevant to rejections based on anticipation, not based on obviousness (see MPEP 2131.03.II.). The claimed range of methyl methacrylate contents is therefore prima facie obvious because the prior art range overlaps it, regardless of the asserted lacking specificity.
Applicant’s next arguments allege that Rachwal does not prefer compositions having at least 80 wt% of methyl methacrylate as claimed. However, patents are relevant as prior art for all of the information that they contain, and non-preferred and alternative embodiments nonetheless constitute prior art (see MPEP 2123.I and II).
Applicant next asserts that Rachwal fails to disclose or suggest the claimed glass transition temperature. Applicant argues that, because many copolymers falling within Rachwal’s disclosure would have Tg values below the claimed range, the Examiner has failed to show that the claimed glass transition limitation is necessarily present within the prior art. However, the presence of compositions within Rachwal which fall outside of the claimed composition (and which therefore do not possess the claimed glass transition temperature) does not rebut the existence of compositions which fall inside the claimed composition (and thus inherently possess the claimed glass transition temperature). The inherency analysis does not require that every embodiment of the prior art meets the claimed characteristics; rather, the inherency analysis requires that the claimed characteristic is definitely present within the prior art. In this case, the claimed composition is present within the prior art; therefore, the claimed glass transition temperature is present in Rachwal – inherently possessed by the embodiments thereof which fall within the claimed composition.
Applicant next argues that the examples of Rachwal fail to teach the claimed compositional amounts of filler. However, as described above, Rachwal teaches the incorporation of compositional amounts of filler which overlap the claimed range. Patents are relevant as prior art for all of the information that they contain, and non-preferred and alternative embodiments nonetheless constitute prior art (see MPEP 2123.I and II). Therefore, the lack of exemplified formulations which read on the claimed compositional amount does not rebut the broader teaching of Rachwal which includes the claimed range.
Applicant’s final remarks are directed towards the claimed process steps, in an attempt to overcome the prima facie obviousness of any order of mixing, the rationale of which was applied previously (and above) to read on the claimed process. Applicant asserts that Rachwal does not address the “structural and morphological consequences of the claimed two-stage blending, particularly in highly filled systems,” but provides no substantial arguments describing what said “consequences” are, or how they are unexpected. Therefore, the Applicant has not met the burden of explaining how said “consequences” render the claimed process non-obvious. The Examiner has shown that any order of mixing is prima facie obvious according to legal precedent (see MPEP 2144.04.IV.C.); it is therefore the Applicant’s burden to rebut said prima facie determination via a showing of unexpected results (see MPEP 716.02(a)).
Conclusion
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 JOSHUA CALEB BLEDSOE whose telephone number is (703)756-5376. The examiner can normally be reached Monday-Friday 8:00 a.m. - 5:00 p.m. EST.
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/JOSHUA CALEB BLEDSOE/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
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