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
Claims 21-31 and 34-36 are still withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions, there being no allowable generic or linking claim.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 17-19 and 32 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nathalie (FR 2699540).
On pages 2, 3, 5, and 6 Nathalie teach a copolymer prepared from
at least 60% of a monomer (I), consistent with methyl methacrylate;
up to 20% of a monomer (III), consistent with the present formula (I), exemplified by maleic anhydride (See page 5, line 7); and
up to 20% of a monomer (II), consistent with the present formula (II), exemplified by norbornene (See page 4, line 36);
wherein the ratio of norbornene/maleic anhydride is preferably 0.2 to 3.5. (See page 6, lines 20-21).
It is noted that the middle of the ratio (between 0.2 and 3.5) of norbornene/maleic anhydride taught by Nathalie is 1.95, and when this ratio is plugged into applicant’s relationship formula = 0.3 X 1.95 ≤ 1 ≤ 0.9 X 1.95. Thus, 0.585 ≤ 1 ≤ 1.755 satisfies the relationship. The ratio of norbornene/maleic anhydride taught in Nathalie of preferably 0.2 to 3.5 would clearly encompass any copolymer that satisfies the present recited formula relationship.
All the molecular weights for the copolymers in the examples of Nathalie range from 55,430 to 226,530.
In Example 6, the copolymer is exemplified as comprising 94.5% of methyl methacrylate, 2.3% of N-cyclohexylmaleimide (present formula I), and 3.2% of norbornene (present formula II), the molecular weight (mw) for the copolymer being 168,800.
Regarding claims 19 and 32, although these claims recite that the optional monomers are present, the claimed lower range of percentage for these monomer is still zero.
Thus, the requirements for rejection under 35 U.S.C. 102(a)(1) are met.
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.
Claim(s) 20 and 33 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Nathalie (FR 2699540).
While Nathalie does not expressly teach the disclosed Vicat softening temperature properties of the claimed copolymer, it is reasonable that the copolymer of Nathalie would possess the presently claimed properties since the composition of Nathalie’s copolymer is essentially the same as the claimed composition and the USPTO does not have at its disposal the tools or facilities deemed necessary to make physical determinations of the sort. In any event, an otherwise old composition is not patentable regardless of any new or unexpected properties. In re Fitzgerald et al , 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP § 2112 - § 2112.02.
Even if assuming that the prior art references do not meet the requirements of 35 U.S.C. 102, it would still have been obvious to one of ordinary skill in the art, at the time the invention was made, to arrive at the same inventive composition because the disclosure of the inventive subject matter appears within the generic disclosure of the prior art.
Claim(s) 17-20, 32 and 33 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (KR 20070100661).
In ¶’s 12, 18-24, 50, and 54 Lee et al. teach a copolymer prepared from
50 to 97% of an acrylate based monomer, exemplified by methyl methacrylate;
1 to 38% of maleic anhydride monomer; and
1 to 38% of norbornene monomer;
wherein the molecular weights for the copolymers are taught to be from 5,000 to 400,000.
Regarding claims 19 and 32, these are claims to optional monomers and thus are not required.
While Lee et al. does not specify the ratio of the maleic anhydride monomer to the norbornene monomer as expressed in the relationship in claim 17, the claimed ratio is still within the scope of Lee et al. One of ordinary skill in the art would have found it prima facie obvious to determine a workable or even optimum ratio of the two monomers in the copolymer. “[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.” In re Boesch, 617 F.2d 272, 276, 205 USPQ 215, 219 (CCPA 1980); “[W]here the general conditions of a claim are disclosed in the art, it is not inventive to discover the optimum or workable ratio by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claims 20 and 33, the Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However; the reference(s) teaches the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties, i.e. (the Vicat softening temperature properties) would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties. " In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990}. 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. See MPEP § 2112.01.
If it is the applicant's position that this would not be the case: (1) evidence would need to be provided to support the applicant's position; and (2) it would be the Office's position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
it would have been obvious to one having ordinary skill in the art, at the time the invention was made, to arrive at the claim copolymer, given the ranges taught in Lee et al., with a reasonable expectation of success.
Response to Arguments
Applicant's arguments filed 2/12/2026 have been fully considered but they are not persuasive.
Regarding Nathalie, contrary to applicant’s arguments, Nathalie clearly teach the present copolymer in the section cited above. The copolymer is even exemplified in Example 6 of Nathalie. Contrary to applicant’s argument, adherence to the claimed relationships of the monomer is demonstrated above.
Regarding the argument that the molar composition of the copolymer taught in Nathalie, given as "MMAthat /NCHMI/NB ===: 94.5/2.3/3.2" is not enable by the prior art, this is not found persuasive as the claim copolymer is still taught by the prior art.
Regarding the molecular weights taught in Nathalie, while applicant argues that “one cannot pick the molecular weights from” the examples, it is noted that ALL the molecular weights for the copolymers in the examples of Nathalie fall within the range of from 55,430 to 226,530, which clearly teaches the range of molecular weight in Nathalie.
In response to applicant's argument that Nathalie does not teach the relationship of the repeat unit formula recited in claim 1, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Regarding Lee et al., applicant appears to be completely ignoring the teaching of Lee et al. cited in the rejection, such as ¶ 12, and focusing on the examples. It is well settled that prior art teachings are not limited to any particular embodiment/example. In re Boe, 148 USPQ 507 (CCPA 1966). Disclosed examples and preferred embodiments (even if the embodiments tested by appellant were preferred) do not constitute a teaching away from a broader disclosure. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). The copolymer with the ranges claim by applicant are clearly taught by Lee et al. in ¶’s 12, 18-24, 50, and 54.
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 KELECHI CHIDI EGWIM whose telephone number is (571)272-1099. The examiner can normally be reached M-Th 9-7.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, 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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/KELECHI C EGWIM/Primary Examiner, Art Unit 1762
KCE
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