DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
2. The amendment filed by Applicant on October 15, 2025 has been fully considered. The amendment to instant claim 1 is acknowledged. Specifically, claim 1 has been amended to include a limitation of the maleimide-based copolymer having an average particle diameter of 75 to 300 micron. This limitation was not previously presented and was taken from instant specification. In light of the amendment filed by Applicant, all previous rejections are withdrawn. The new grounds of rejections necessitated by Applicant’s amendment are set forth below. Thus, the following action is properly made final.
Claim Rejections - 35 USC § 102/103
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.
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.
3. Claim 1 is 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 Funemi et al (JPS63145351, based on machine translation).
4. Funemi et al discloses a heat-resistant composition comprising vinyl chloride-N-cyclohexylmaleimide copolymer resin having an average particle size of 60-200 micron ([0001], page 1, lines 20-24 of the translation), specifically exemplified particle size of 90-180 micron (Table).
5. Though Funemi et al does not explicitly recite the content of a cumulative oversize at 1000 micron, based on the teachings of Funemi et al that i) the average particle size has an upper limit of 200 micron, ii) all exemplified particles are having particle size of 180 micron or less and ii) the particle size is extremely important for added stabilizer to act effectively (see p. 2, lines 8-10 of the translation), the maleimide-based copolymer of Funemi et al will inherently contain, or alternatively, would be reasonably expected to have substantially no particles with a size of larger than 200 micron, and in any case less than 5%wt of particles having a cumulative oversize of 1000 micron as well. 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 either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
6. In the alternative, based on the teachings of Funemi et al of the importance of the maleimide copolymer having particle size in the range of 60-200 micron, such as in exemplified size range of 90-180 micron, it would have been obvious to a one of ordinary skill in the art to produce and use, or obvious to try to produce and use the maleimide copolymer particles having size essentially within the range of 90-180 micron, substantially excluding the particles having size of 1000 micron at all, given such is desired to provide the heat resistant composition. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045).
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.
7. Claims 1-2, 4, 6 are rejected under 35 U.S.C. 103 as being unpatentable over Ueda et al (JP-2001055449, based on translation submitted in IDS on 02/22/23) in view of Funemi et al (JPS63145351, based on machine translation).
8. Ueda et al discloses a maleimide copolymer in powder state having a weight average particle size of 1000 micron or less, preferably 500 micron or less ([0009]), with maximum particle size of most preferably 1.00 mm or less ([0010]), wherein the comonomers used in the copolymer include aromatic vinyl-based monomers or vinyl chloride ([0019]). The maleimide copolymer is added to ABS resin to increase heat resistance ([0004]). The maleimide of the copolymer comprises N-cyclohexylmaleimide ([0014]).
9. Given the most preferable maximum particle size is less than 1000 micron, therefore, it would have been obvious to and reasonable for a one of ordinary skill in the art to expect that the cumulative oversize at 1000 micron will be lower than 5%mass, as well.
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 either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
10. As to instant claim 2, the maleimide copolymer is having Tg of 160-220⁰C ([0022]).
11. As to instant claims 4, 6, Ueda et al discloses a method for producing a thermoplastic composition comprising mixing and melting the maleimide copolymer and a thermoplastic resin in an extruder ([0028]-[0029]), wherein the thermoplastic resin comprises a graft copolymer of aromatic vinyl monomer and a vinyl cyanide monomer grafted onto a rubber polymer of polybutadiene or styrene-butadiene rubber ([0024]), i.e. ABS (as also defined in instant specification, see paragraph [0029] of instant specification).
12. Though Ueda et al discloses the use of maleimide-based, including N-cyclohexylmaleimide-based, copolymer with other comonomers, including vinyl chloride, having particle size of preferably less than 500 micron, Ueda et al does not explicitly recite said particle size being in the range of 75-300 micron.
13. However, Funemi et al discloses a heat resistant composition comprising vinyl chloride-N-cyclohexylmaleimide copolymer resin having an average particle size of 60-200 micron ([0001], page 1, lines 20-24 of the translation), specifically exemplified particle size of 90-180 micron (Table).
14. Since both Funemi et al and Ueda et al are related to maleimide-based copolymer particles, including copolymers of N-cyclohexylmaleimide with vinyl chloride, having particle size of less than 500 micron and improved heat resistance, and thereby belong to the same field of endeavor, wherein Funemi et al specifies said particles having size in the range of 60-200 micron or 90-180 micron, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Funemi et al and Ueda et al, and either to prepare, or obvious to try to prepare said maleimide copolymer particles of Ueda et al having size of 60-200 micron or 90-180 micron as taught by Funemi et al, since particles with such size are having improved heat resistance and are used in heat resistant compositions, or to use, or obvious to try to use, at least partially the N-cyclohexylmaleimide -vinyl chloride copolymer particles having size in the range of 60-200 micron or 90-180 micron of Funemi et al as the N-cyclohexylmaleimide copolymer particles to be combined with ABS resin in the composition of Ueda et al to further improve heat resistance of the composition of Ueda et al as well, and since it would have been obvious to choose material based on its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958). The key to supporting any rejection under 35 USC 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 USC 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141
14. Claims 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Ueda et al (JP-2001055449, based on translation submitted in IDS on 02/22/23) in view of Funemi et al (JPS63145351, based on machine translation), in further view of Fujioka et al (US 5,478,903).
15. The discussion with respect to Ueda et al (JP-2001055449, based on translation submitted in IDS on 02/22/23) in view of Funemi et al (JPS63145351, based on machine translation), set forth in paragraphs 7-13 above, is incorporated here by reference.
16. Though Ueda et al does not explicitly recite the maleimide copolymer to be mixed with the thermoplastic resins including ABS having melt viscosity of 1000 Pa.s or more,
Fujioka et al discloses maleimide copolymers, including vinyl chloride as a comonomer (col. 7, lines 38-40), that are melt-kneaded with thermoplastic resins including ABS to improve heat resistance (col. 15, lines 22-37), wherein said maleimide copolymers are cited as having Tg of 150-230⁰C and further viscosity at a temperature of 260⁰C in the range of 10,000-10,000,000 poise (col. 12, lines 12-20), i.e. 1,000-1,000,000 Pa.s).
17. Since Fujioka et al and Ueda et al in view of Funemi et al are related to maleimide copolymers having Tg of 160-220⁰C that are melt-mixed with ABS resins, and thereby belong to the same field of endeavor, wherein Fujioka et al recites said used maleimide copolymers as further having viscosity at 260⁰C (i.e. melt viscosity) of 1,000 Pa.s or more, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Ueda et al in view of Funemi et al and Fujioka et al, and to prepare and use, or obvious to try to prepare and use the maleimide copolymer of Ueda et al in view of Funemi et al having melt viscosity of 1,000 Pa.s or more as well, since the maleimide copolymers having such viscosity are taught in the art as being mixed with ABS resins to improve heat resistance, as shown by Fujioka et al, and it would have been obvious to a one of ordinary skill in the art to choose material based on its suitability, thereby arriving at the present invention. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958). The key to supporting any rejection under 35 USC 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 USC 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141
Response to Arguments
18. Applicant's arguments filed on October 15, 2025 have been fully considered but they are moot in light of new grounds of rejections and discussion set forth above.
19. In addition, with respect to Applicant’s arguments regarding the criticality of the claimed particle size as shown by examples of instant specification, it is noted that:
1) the examples of instant specification are based on the specific maleimide copolymer comprising N-phenyl maleimide, styrene and maleic anhydride comonomers (A1-A8)
and a specific copolymer comprising styrene, acrylonitrile, N-phenyl maleimide and maleic anhydride comonomers (A-9), wherein said copolymers are mixed with specific ABS or SAN resin in the specific relative amounts. However, the scope of instant claims is significantly broader than the specific copolymers (A1-A9), and also instant claim 1 does not specify the particles being used in any composition. Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support.” In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). See MPEP 716.02(d).
2) Instant claims are silent with respect to any properties of the composition, specifically “risk of dust explosion” as argued by Applicant.
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 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 IRINA KRYLOVA whose telephone number is (571)270-7349. The examiner can normally be reached 9am-5pm EST M-F.
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, Arrie Lanee Reuther can be reached at 571-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/IRINA KRYLOVA/Primary Examiner, Art Unit 1764
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