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/Restriction
Applicant’s confirmation of the election without traverse of Group I, claims 1-9 in the reply filed on 12/10/2025 is acknowledged.
Claims 10-12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim.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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1, 3, 4 and 6-9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Isaka et al. (JP-62141046).
In the abstract, Isaka et al. teaches an aqueous dispersion comprising 25 wt% an ethylene-acrylic acid copolymer having an acrylic acid content of 2.8 mol% and a crystallization temperature of 76°C, neutralized with at least 20% (which includes 70% more) of ammonia, based on the amount of carboxyl groups in the copolymer.
In ¶’s 18-22 of the present application, applicant explains that as the content of (meth)acrylic acid in an ethylene/(meth)acrylic acid copolymer decreases, heat of crystallization decreases, and upon referring to the methacrylic acid content and heat of crystallization of ethylene/methacrylic acid copolymers used in examples disclosed in the description of the present application.
Therefore the ethylene copolymer disclosed in Isaka et al. would meet the heat of crystallization that satisfies the requirement of less than or equal to -30 J/g set forth in the present claims, in view of its acrylic acid content, and the requirements for rejection under 35 U.S.C. 102(a)(1) are met.
Claim(s) 1, 3, 4 and 6-9 is/are rejected under 35 U.S.C. 102((a)(1)/(a)(2)) as being anticipated by Ito et al. (US 2013/0012632).
In ¶ 5 and examples 201 and 301, Ito et al. teaches an aqueous dispersion liquid comprising 10 mass% of an ethylene-methacrylic acid copolymer with an ethylene content of 96 mass% and methacrylic acid content of 4 mass%, neutralized with 40% or more (which includes 70% more) of ammonia, based on the amount of carboxyl groups in the copolymer (¶ 29).
In ¶’s 18-22 of the present application, applicant explains that as the content of (meth)acrylic acid in an ethylene/(meth)acrylic acid copolymer decreases, heat of crystallization decreases, and upon referring to the methacrylic acid content and heat of crystallization of ethylene/methacrylic acid copolymers used in examples disclosed in the description of the present application.
Therefore the ethylene copolymer disclosed in Ito et al. would meet the heat of crystallization that satisfies the requirement of less than or equal to -30 J/g set forth in the present claims, in view of its acrylic acid content, and the requirements for rejection under 35 U.S.C. 102((a)(1)/(a)(2)) are met.
Claim(s) 1-4 and 6-9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fujiwara et al. (JP-2012214571).
In the abstract and Examples 1-6, Fujiwara et al. discloses an aqueous dispersion comprising an ethylene/acrylic acid copolymer which has been neutralized with ammonia, wherein the degree of neutralization is more preferably up to 80%, which includes 70% more (¶ 60). The polymer is contained in amount of 35 % by mass and the viscosity is 580 mPa.s. The particle size is between 153 nm 728 nm (0.153 to 0.728 µm).
In ¶’s 18-22 of the present application, applicant explains that as the content of (meth)acrylic acid in an ethylene/(meth)acrylic acid copolymer decreases, heat of crystallization decreases, and upon referring to the methacrylic acid content and heat of crystallization of ethylene/methacrylic acid copolymers used in examples disclosed in the description of the present application.
Therefore the ethylene copolymer disclosed in Fujiwara et al. would meet the heat of crystallization that satisfies the requirement of less than or equal to -30 J/g set forth in the present claims, in view of its (meth)acrylic acid content, and the requirements for rejection under 35 U.S.C. 102(a)(1) are met.
Claim(s) 1, 3, 4 and 6-9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Maier et al. (WO 2019/180118).
In Examples 2 and 5, Maier et al. teach an aqueous dispersion comprising an ethylene/acrylic acid copolymer (EAA#3) which has been neutralized with ammonia, wherein the content of the polymer is 30 and 35 % by mass respectively, the viscosity is 170 and 213 mPa-s respectively.
In ¶’s 18-22 of the present application, applicant explains that as the content of (meth)acrylic acid in an ethylene/(meth)acrylic acid copolymer decreases, heat of crystallization decreases, and upon referring to the methacrylic acid content and heat of crystallization of ethylene/methacrylic acid copolymers used in examples disclosed in the description of the present application.
Therefore the ethylene copolymer disclosed in Maier et al. would meet the heat of crystallization that satisfies the requirement of less than or equal to -30 J/g set forth in the present claims, in view of its acrylic acid content, and the requirements for rejection under 35 U.S.C. 102(a)(1) are met.
Claim(s) 1-4 and 6-9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hashizume (JP 2019070092).
In Tables 1 and 2, Examples 1-4 and Comp. Ex 1-4, and ¶ 92, Hashizume teaches an aqueous dispersion comprising an ethylene/acrylate/maleic anhydride copolymer (Bondine HX-8290) or ethylene acrylic acid copolymer (Primacor 5980i) neutralized with ammonia. The dispersion has a solid concentration of 35% by mass and a viscosity of 200 mPa-s. The particles have an average size of between 120 and 160 nm (0.120 to .160 µm).
In ¶’s 18-22 of the present application, applicant explains that as the content of (meth)acrylic acid in an ethylene/(meth)acrylic acid copolymer decreases, heat of crystallization decreases, and upon referring to the methacrylic acid content and heat of crystallization of ethylene/methacrylic acid copolymers used in examples disclosed in the description of the present application.
Therefore the ethylene copolymer disclosed in Hashizume would meet the heat of crystallization that satisfies the requirement of less than or equal to -30 J/g set forth in the present claims, in view of its (meth)acrylic acid content, and the requirements for rejection under 35 U.S.C. 102(a)(1) are met.
Claim Rejections - 35 USC § 102/103
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) 5 is/are rejected under 35 U.S.C. 102(((a)(1)/(a)(2))) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Isaka et al., Ito et al., Maier et al., Hashizume or Fujiwara et al.
While Isaka et al., Ito et al., Maier et al., Hashizume or Fujiwara et al., above, do not expressly teach all the physical properties in the present claim 5, it is reasonable that the aqueous dispersion of Isaka et al., Ito et al., Maier et al., Hashizume or Fujiwara et al. would possess the presently claimed properties since the composition of the aqueous dispersions of Isaka et al., Ito et al., Maier et al., Hashizume or Fujiwara et al. are 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.
Response to Arguments
Applicant's arguments filed 12/10/2025 have been fully considered but they are not persuasive.
Regarding Isaka et al., Ito et al. or Fujiwara et al., it is well settled that anticipatory 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). As demonstrated above, each of the references teach neutralization in ranges encompassing that currently being claimed. This is clear, even if it is not exemplified. Thus, the processes added to the product claims are still taught.
Regarding Maier et al. and Hashizume, while they may not expressly recite the aqueous dispersion composition to be prepared by neutralization with 70 mol% or more of the ammonia, even though product-by-process claims are limited and defined by the process, determination of patentability is based on the product itself. The patentability of the product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. See In re Marosi, 218 USPQ 289 (Fed. Cir. 1983) and In re Thorpe, 227 USPQ 964 (Fed. Cir. 1985). See also MPEP § 2113.
Although applicant argues that their examples show a special advantage for the claimed 70 mol% or more of the ammonia, the examples and table are not commensurate in scope with the claims. The reference examples have neutralization % from 90 to 200, while the comparative example were all at 60%. This does not demonstrate what the results for 70%, or even 80%, would be; from the results, 70% may or may not be beneficial. Thus, no special benefit for this process feature is shown.
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.
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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