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 1-7) in the reply filed on 9/16/2025 is acknowledged.
Groups II-V (claims 8-11) are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 9/16/2025.
Response to Amendment
The amendment filed on 1/27/2026 has been entered. Claim(s) 1 and 3 is/are currently amended. Claim(s) 1-11 is/are pending with claim(s) 8-11 withdrawn from consideration. Claim(s) 1-7 is/are under examination in this office action.
Response to Arguments
Applicant's argument filed on 1/27/2026, with respect to 102 rejection has been fully considered but is moot in view of the new grounds of rejection presented below.
Applicant's argument filed on 1/27/2026, with respect to 103 rejection has been fully considered but is not persuasive.
Applicant argued that Kobata does not teach the excellent dispersibility obtained by the solvent selection. The claimed dispersion composition has excellent dispersibility, and this effect is shown in the Examples of the present Specification. Comparative Example 6, where the solvent is a combination of Butyl acetate and isopropanol, is evaluated as "D" as to the dispersibility. In contrast, Example 1, where only the kind of solvents is different from the solventof Comparative Example 6, has good dispersibility of "A".
In response, dispersibility is not part of the claims. Even if dispersibility is included in the claims, it is a property of the claimed product. “Products of identical chemical composition cannot have mutually exclusive properties." 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. “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)). See MPEP 2112.01. Since the prior art teaches the same product as the current invention, the recited property is expected to be present.
If applicant intends to show criticality of the claimed solvent (the dispersing medium) that gives unexpected result, a showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. See MPEP 716.02(d). Applicant has not provided such data.
Applicant argued that Kobata does not disclose that "the total content of a structure derived from the(meth)acrylic acid component in the dispersion composition is in a range of from 3 to 70 wt.%". The total content of a structure derived from the (meth)acrylic acid component in Example 10 of Kobata is calculated to be 89.9 wt%.
In response, disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments; and patents are relevant as prior art for all they contain; nonpreferred and alternative embodiments constitute prior art (see MPEP 2123). Kobata teaches that the amount of (c) (meth)acrylic acid esters is 10 to 98.95 parts by mass based on 100 parts by mass as the total solid content of components (a) to (c) [0030 and 0033]. This range of 10-98.95 wt% overlaps the claimed range of from 3 to 70 wt%. A prima facie case of obviousness exists where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" (MPEP 2144.05.I).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kono et al (WO 2020071214 A1, English version US 20210395511 A1 is referenced herein).
Regarding claim 1, Kono teaches a dispersion of resin component (C-1) in Example 1 comprising 100 parts of a polyolefin resin (A-1), modified with (meth)acrylic acid component (B-1) comprising 2.7 parts of 2-hydroxyethyl acrylate (HEA) and 26.7 parts of cyclohexyl methacrylate (CHMA); the modified copolymer is dispersed in a solvent comprising cyclohexane and 1-butanol [0107 and Table 2].
The examiner submits that the polyolefin resin (A-1) reads on the claimed polyolefin resin; the HEA reads on the claimed (C) (meth)acrylate ester of formula (I); the CHMA reads on the claimed (D) (meth)acrylate ester of formula (II); and the solvent reads on the claimed (B) dispersing medium comprising an alcohol solvent and an aliphatic hydrocarbon solvent.
The ratio of (B-1)/((A-1)+(B-1)) is (2.7+26.7)/(100+2.7+26.7) = 22.7%, as calculated by the examiner. This ratio falls within the claimed range of 3-70 wt%.
The resin dispersion in Example 1 has a solid content of 50% [0107], falling within the claimed range of 30-80%.
The mass ratio of 1-butanol to cyclohexane in the solvent is 4/20 [0107], falling within the claimed range of 99/1 to 10/90.
Even though this example teaches a combination of toluene/cyclohexane/1-butanol as the solvent, Kono generally teaches that toluene and cyclohexane can be used singly or as a mixed solvent of two or more [0076-0077]; and in addition, in order to improve the storage stability of the dispersion solution, butanol may be added 1 to 20% by mass with respect to the above organic solvent [0078].
It would have been obvious to one of ordinary skill in the art at the time of filing to select cyclohexane as the sole organic solvent in addition to 1-20% of 1-butanol in Kono’s composition, as it is expressly disclosed as being useful in this capacity. It has been established that selection of a known material based on its suitability for its intended use is prima facie obvious (Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)). See MPEP 2144.07. In other words, the dispersing medium can consist of cyclohexane and 1-butanol only; and the total content of cyclohexane and 1-butanol in the dispersing medium is 100% by weight, meeting the claimed 80% or more by weight.
Regarding claim 2, Kono’s Example 1 has 2.7 parts of HEA and 26.7 parts of CHMA as stated above. Thus, HEA is 12.8 mol% relative to 100 mol% as a total content of HEA and CHMA, as calculated by the examiner, falling within the claimed range of 20 mol% or less.
Regarding claim 3, Kono’s Example 1 has 2.7 parts of HEA and 26.7 parts of CHMA as stated above. Thus, CHMA is 87.2 mol% relative to 100 mol% as a total content of HEA and CHMA, as calculated by the examiner, falling within the claimed range of 25 mol% or more.
Regarding claim 4, Kono teaches the modified resin in Example 1 having weight average molecular weight of 200,000 [0107], falling within the claimed range of from 5,000 to 400,000.
Regarding claim 5, Kono teaches that the polyolefin resin can be modified with maleic acid, maleic anhydride, fumaric acid, citraconic acid, citraconic anhydride, mesaconic acid, itaconic acid, itaconic anhydride, aconitic acid, and aconitic anhydride [0032].
Regarding claim 6, Kono teaches that the polyolefin resin is preferably a chlorinated polyolefin resin [0040].
Regarding claim 7, Kono teaches degree of chlorination of 10 wt% for A-1 before being modified with the (meth)acrylic acid component [0106 Table 1], falling within the claimed range of 30 wt% or less.
Claim(s) 1-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kobata (US 20200247929 A1).
Regarding claim 1, Kobata teaches a polymer composition containing a modified chlorinated polyolefin obtained by copolymerizing polymerizable monomers including (b) a chlorinated polyolefin having an allyloxy group and (c) one or more compounds selected from among (meth)acrylic acid esters, (meth)acrylic acids and styrene in the coexistence of (a) a compound having an allyloxy group and a hydroxyl group [abstract and 0013]. A hydroxyl-containing compound other than the compound (a) may also be added [0025].
The (c) one or more compounds selected from among (meth)acrylic acid esters, (meth)acrylic acids and styrene include cyclohexyl methacrylate [0029].
The hydroxyl-containing compound other than the compound (a) includes 2-hydroxyethyl methacrylate [0027].
The examiner submits that the modified chlorinated polyolefin reads on the claimed modified polyolefin resin (A); the 2-hydroxyethyl methacrylate reads on the claimed (C) (meth)acrylate ester of formula (I); the cyclohexyl methacrylate reads on the claimed (D) (meth)acrylate ester of formula (II).
Kobata teaches that the amount of (c) is 10 to 98.95 parts by mass based on 100 parts by mass as the total solid content of components (a) to (c) [0030 and 0033]. This range of 10-98.95 wt% overlaps the claimed range of from 3 to 70 wt%. A prima facie case of obviousness exists where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" (MPEP 2144.05.I).
Example 10 discloses a modified chlorinated polyolefin (P-10) with a solid content of 46% [0085].
It would have been obvious to one of ordinary skill in the art at the time of the invention to form a modified chlorinated polyolefin according to Kobata having solid content about 46%, as Kobata demonstrates this solid content to be suitable for such modified chlorinated polyolefins. This represents the use of a suitable solid content in modified chlorinated polyolefin which are compositionally similar to the Example 10 and which is used in similar application. "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416-21 (2007). See MPEP 2141.
The solid content of 46% falls within the claimed range of from 30 to 80 wt%.
Kobata teaches that polymerization is carried out in an organic solvent comprising admixture of aliphatic solvents such as hexane and alcohol-based solvents such as butanol [0037-0038].
It would have been obvious to one of ordinary skill in the art at the time of filing to select admixture of butanol and hexane as the solvent in Kobata’s composition, as it is expressly disclosed as being useful in this capacity. It has been established that selection of a known material based on its suitability for its intended use is prima facie obvious (Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)). See MPEP 2144.07.
The admixture of butanol and hexane reads on the claimed (B) a dispersing medium comprising an alcohol solvent and an aliphatic hydrocarbon solvent; and its content is 100% in the dispersing medium, meeting the claimed 80% or more by weight.
Kobata does not expressly disclose the ratio of butanol to hexane. Nevertheless, the obviousness analysis may “take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). For example, the analysis may “include recourse to logic, judgment, and common sense available to the person of ordinary skill that do not necessarily require explication in any reference or expert opinion.” Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009). The Patent Trial and Appeal Board has held that mixing equivalent components in a 1:1 ratio represented no more than application of the “logic, judgment, and common sense available to the person of ordinary skill” in the art. Ex parte Swanzy, Appeal 2017-004875 at 8-9.
In this case, Kobata discloses butanol and hexane as equally suitable alternatives to one another and therefore recognizes the equivalence of the two solvents. It would have would have been prima facie obvious, using no more than ordinary creativity, logic, judgment, and common sense, to combine butanol and hexane in equal amounts (i.e. in a 1:1 ratio) based on the fact that both are disclosed in parallel as being equally suitable for use in this capacity. The butanol/hexane ratio of 1/1 falls within the claimed range of 99/1 to 10/90.
Regarding claim 2, Kobata’s Example 10 has 3 parts of 2-hydroxyethyl methacrylate and 352 parts of cyclohexyl methacrylate as stated above. Thus, 2-hydroxyethyl methacrylate is 0.6 mol% relative to 100 mol% as a total content of 2-hydroxyethyl methacrylate and cyclohexyl methacrylate, as calculated by the examiner, falling within the claimed range of 20 mol% or less.
Regarding claim 3, Kobata’s Example 10 has 3 parts of 2-hydroxyethyl methacrylate and 352 parts of cyclohexyl methacrylate as stated above. Thus, cyclohexyl methacrylate is 99.4 mol% relative to 100 mol% as a total content of 2-hydroxyethyl methacrylate and cyclohexyl methacrylate, as calculated by the examiner, falling within the claimed range of 25 mol% or more.
Regarding claim 4, Kobata teaches the modified resin having weight average molecular weight of 70,000 to 200,000 [0043], falling within the claimed range of from 5,000 to 400,000.
Regarding claim 5, Kobata teaches that the polyolefin resin can be modified with maleic acid and itaconic acid [0017].
Regarding claim 6, Kobata teaches that the polyolefin resin is chlorinated polyolefin resin as stated above.
Regarding claim 7, the chlorinated polyolefin HARDLEN F-6P has chlorine content of 20% [0079], falling within the claimed range of 30 wt% or less.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIANGTIAN XU whose telephone number is (571)270-1621. The examiner can normally be reached Monday-Thursday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones can be reached on (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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/JIANGTIAN XU/Primary Examiner, Art Unit 1762