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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 9/15/2026 has been entered.
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Claims 21-31 and 34-36 are still withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions, there being no allowable generic or linking claim.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 § 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) 17-20, 32 and 33 is/are rejected under 35 U.S.C. 103 as obvious over 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.
In page 6, lines 4-6, Nathalie teach that it is within the scope of their invention to include an additional 4th monomer polymerizable with the other monomers. While Nathalie does not explicitly recite the amount of the additional monomer, in page 6, lines 6-8, they teach that one of the ordinary skill in the art would be able to determine the amount, so long as it does not affect the transparency of the final polymer.
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 all of 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.
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;
1 to 38% of norbornene monomer; and
1 to 38% of an olefin 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 9/15/2026 have been fully considered but they are not persuasive.
Regarding the argument that independent claim 17 is amended to require the presence of the optional fourth monomers, as noted above, both references teach a fourth monomer, and thus meet this requirement of claim 17.
Contrary to applicant’s assertions, both references individually teach the claimed copolymers having four monomers, and "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}.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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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