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 .
Continued Examination Under 37 CFR 1.114
2. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 July 20, 2026 has been entered.
Response to Amendment
3. The amendment filed by Applicant on July 20, 2026 has been fully considered. The amendment to instant claim 1 and addition of new claims 9-15 are acknowledged. In light of the amendment, all previous rejections are withdrawn. The new grounds of rejections are set forth below.
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.
4. Claims 1-2, 4, 6, 9, 11-15 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 Noguchi et al (US 2011/0319567) and Funemi et al (JPS63145351, based on machine translation).
5. 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 maleimide copolymer comprises:
a) 35-75%wt of maleimide monomer unit ([0014]),
b) 25-65%wt of aromatic vinyl monomer comprising styrene ([0017]-[0018], as to
instant claim 9, 15) and further
c) 1-15%wt of additional monomer units including maleic acid and half-esters thereof ([0019]-[0021]).
The maleimide copolymer is added to ABS resin to increase heat resistance ([0004]). The maleimide of the copolymer comprises N-cyclohexylmaleimide or N-phenylmaleimide ([0013], as to instant claim 14).
6. Given the most preferable maximum particle size is less than 1000 micron, and preferably 500 micron or less, 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, and the cumulative amount from 75-850 micron will be at least 60%mass, or in the range of 60-90%mass, as well, especially since the exemplified copolymers are having a weight average particle diameter of about 350 micron ([0035]). 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.
7. As to instant claim 2, the maleimide copolymer is having Tg of 160-220⁰C ([0022]).
8. 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).
9. Though Ueda et al discloses the monomer units c) in the maleimide copolymer being maleic acid and half esters, Ueda et al does not recite said comonomer units c) being maleic anhydride, i.e. an unsaturated dicarboxylic anhydride.
10. However, Noguchi et al discloses a maleimide copolymer comprising 50-60%mass of a styrene monomer unit, 30-50%mass of a maleimide monomer unit and further 0-10%mass of an unsaturated dicarboxylic anhydride monomer unit, including maleic anhydride ([0031], [0085]), having Mw of 90,000-130,000 (Abstract, as to instant claim 13), and Tg of 175-190⁰C ([0039], as to instant claim 2), wherein said maleimide copolymer comprises excellent heat resistance, and is used in combination with ABS resins, AS resins, AES resins to improve heat resistance and provide excellent balance of physical properties and beautiful appearance to the compositions comprising those resins when molded ([0018], [0076], as to instant claim 5).
11. Since both Noguchi et al and Ueda et al are related to maleimide copolymers comprising maleimide units, styrene units and maleic acid-derivative units, used as additives to ABS, AES resin compositions to improve heat resistance, and thereby belong to the same field of endeavor, wherein Noguchi et al teaches the maleic acid-derivative comonomer of the maleimide copolymer as being maleic anhydride, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Noguchi et al and Ueda et al, and to include, or obvious to try to include the maleimide-styrene-maleic anhydride terpolymer of Noguchi et al as the maleimide-styrene-maleic acid-derivative unit terpolymer used as the additive to improve heat resistance of the ABS, AES compositions of Ueda et al, since it would be obvious 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).
12. Though Ueda et al discloses the use of maleimide-based copolymer 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 maleimide 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 Funemi et al and Ueda et al in view of Noguchi et al are related to maleimide-based copolymer particles, 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 in view of Noguchi et al, and either to prepare, or obvious to try to prepare said maleimide copolymer particles of Ueda et al in view of Noguchi et al having size of 60-200 micron or 90-180 micron, as taught by Funemi et al, depending on the specifically desired process of molding, since particles with such size are having improved heat resistance and are used in heat resistant compositions, as shown by Funemi et al, 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:
PNG
media_image1.png
18
19
media_image1.png
Greyscale
(A) Combining prior art elements according to known methods to yield predictable results;
PNG
media_image1.png
18
19
media_image1.png
Greyscale
(B) Simple substitution of one known element for another to obtain predictable results;
PNG
media_image1.png
18
19
media_image1.png
Greyscale
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
PNG
media_image1.png
18
19
media_image1.png
Greyscale
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
PNG
media_image1.png
18
19
media_image1.png
Greyscale
(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
PNG
media_image1.png
18
19
media_image1.png
Greyscale
(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
15. Given in the composition of Ueda et al in view of Noguchi et al and Funemi et al the major amount of the used maleimide copolymer particles are having size of 60-200 micron or 90-180 micron, and less than 30%wt of the particles are having size of 500 micron or more ([0009] of Ueda et al), therefore, it would be reasonably expected that the cumulative amount of particles having size from 75 micron to 850 micron will be at least 60%mass, or 60-90%mass, as claimed in instant invention as well (as to instant claims 11 and 15) and the average particle diameter will be in the range of about 75-300 micron or about 100-300 micron as well (as to instant claims 1 and 12). 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.
16. Claims 1-15 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 Noguchi et al (US 2011/0319567) and Funemi et al (JPS63145351, based on machine translation), in further view of in further view of Fujioka et al (US 5,478,903).
17. The discussion with respect to Ueda et al (JP-2001055449, based on translation submitted in IDS on 02/22/23) in view of Noguchi et al (US 2011/0319567) and Funemi et al (JPS63145351, based on machine translation), set forth in paragraphs 4-15 above, is incorporated here by reference.
18. Though Ueda et al does not explicitly recite the maleimide copolymer, that is used to be combined with ABS resins to improve heat resistance, as having melt viscosity of 1000 Pa.s or more,
Fujioka et al discloses maleimide copolymers, 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.
19. Since Fujioka et al and Ueda et al in view of Noguchi et al and Funemi et al are related to maleimide copolymers having Tg of 160-220⁰C that are melt-mixed with ABS resins to improve heat resistance, 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 Noguchi et al and 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 Noguchi et al and 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:
PNG
media_image1.png
18
19
media_image1.png
Greyscale
(A) Combining prior art elements according to known methods to yield predictable results;
PNG
media_image1.png
18
19
media_image1.png
Greyscale
(B) Simple substitution of one known element for another to obtain predictable results;
PNG
media_image1.png
18
19
media_image1.png
Greyscale
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
PNG
media_image1.png
18
19
media_image1.png
Greyscale
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
PNG
media_image1.png
18
19
media_image1.png
Greyscale
(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
PNG
media_image1.png
18
19
media_image1.png
Greyscale
(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
20. Claims 1-2, 4, 6, 9, 11-15 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 Nishino et al (EP 3,299,415, submitted in IDS on 02/22/23) and Funemi et al (JPS63145351, based on machine translation).
21. 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 maleimide copolymer comprises:
a) 35-75%wt of maleimide monomer unit ([0014]),
b) 25-65%wt of aromatic vinyl monomer comprising styrene ([0017]-[0018], as to
instant claim 9, 15) and further
c) 1-15%wt of additional monomer units including maleic acid and half-esters thereof ([0019]-[0021]).
The maleimide copolymer is added to ABS resin to increase heat resistance ([0004]). The maleimide of the copolymer comprises N-cyclohexylmaleimide or N-phenylmaleimide ([0013], as to instant claim 14).
22. Given the most preferable maximum particle size is less than 1000 micron, and preferably 500 micron or less, 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, and the cumulative amount from 75-850 micron will be at least 60%mass, or in the range of 60-90%mass, as well, especially since the exemplified copolymers are having a weight average particle diameter of about 350 micron [0035]). 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.
23. As to instant claim 2, the maleimide copolymer is having Tg of 160-220⁰C ([0022]).
24. 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).
25. Though Ueda et al discloses the monomer units c) in the maleimide copolymer being maleic acid and half esters, Ueda et al does not recite said comonomer units c) being maleic anhydride, i.e. an unsaturated dicarboxylic anhydride.
26. However, Nishino et al discloses a heat resistant composition comprising a maleimide copolymer (A) and a resin (B) which is at least one of ABS resin, ASA resin, AES resin or SAN resin ([0005], [0025]),
wherein the maleimide copolymer (A) comprises 40-70%mass of maleimide-based unit, 20-60%mass of a styrene-based unit, 0-10%mass of an unsaturated dicarboxylic anhydride monomer unit ([0015]), having Tg of 175-200⁰C and Mw of 80,000-150,000 ([0016], as to instant claims 2, 13, 9, 15).
Specific example 1 shows a maleimide copolymer comprising 51%mass of styrene units, 48%mass of N-phenylmaleimide units and 1%mass of maleic anhydride unit, having Tg of 186⁰C and Mw of 101,000 ([0061]).
27. Since both Nishino et al and Ueda et al are related to maleimide copolymers comprising maleimide units, styrene units and maleic acid-derivative units, used as additives to ABS, AES resin compositions to improve heat resistance, and thereby belong to the same field of endeavor, wherein Nishino et al teaches said maleimide copolymer comprising maleic anhydride as the maleic acid-derivative comonomer, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Nishino et al and Ueda et al, and to use, or obvious to try to use the maleimide-styrene-maleic anhydride terpolymer of Nishino et al as the maleimide-styrene-maleic acid-derivative unit terpolymer used as the additive to improve heat resistance of the ABS, AES compositions of Ueda et al, since it would be obvious 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).
28. Though Ueda et al discloses the use of maleimide-based copolymer 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.
29. However, Funemi et al discloses a heat-resistant composition comprising maleimide 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).
30. Since Funemi et al and Ueda et al in view of Nishino et al are related to maleimide-based copolymer particles, 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 in view of Nishino et al, and either to prepare, or obvious to try to prepare said maleimide copolymer particles of Ueda et al in view of Nishino et al having size of 60-200 micron or 90-180 micron, as taught by Funemi et al, depending on the specifically desired process of molding, since particles with such size are having improved heat resistance and are used in heat resistant compositions, as shown by Funemi et al, 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:
PNG
media_image1.png
18
19
media_image1.png
Greyscale
(A) Combining prior art elements according to known methods to yield predictable results;
PNG
media_image1.png
18
19
media_image1.png
Greyscale
(B) Simple substitution of one known element for another to obtain predictable results;
PNG
media_image1.png
18
19
media_image1.png
Greyscale
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
PNG
media_image1.png
18
19
media_image1.png
Greyscale
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
PNG
media_image1.png
18
19
media_image1.png
Greyscale
(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
PNG
media_image1.png
18
19
media_image1.png
Greyscale
(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
31. Given in the composition of Ueda et al in view of Nishino et al and Funemi et al the major amount of the used maleimide copolymer particles are having size of 60-200 micron or 90-180 micron, and less than 30%wt of the particles are having size of 500 micron or more ([0009] of Ueda et al), therefore, it would be reasonably expected that the cumulative amount of particles having size from 75 micron to 850 micron will be at least 60%mass, or 60-90%mass, as claimed in instant invention as well (as to instant claims 11 and 15) and the average particle diameter will be in the range of about 100-300 micron as well (as to instant claim 12). 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.
32. Claims 1-15 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 Nishino et al (EP 3,299,415, submitted in IDS on 02/22/23) and Funemi et al (JPS63145351, based on machine translation), in further view of Fujioka et al (US 5,478,903).
33. The discussion with respect to Ueda et al (JP-2001055449, based on translation submitted in IDS on 02/22/23) in view of Nishino et al (EP 3,299,415, submitted in IDS on 02/22/23) and Funemi et al (JPS63145351, based on machine translation), set forth in paragraphs 20-31 above, is incorporated here by reference.
34. Though Ueda et al does not explicitly recite the maleimide copolymer, that is used to be combined with ABS resins to improve heat resistance, as having melt viscosity of 1000 Pa.s or more,
Fujioka et al discloses maleimide copolymers, 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.
35. Since Fujioka et al and Ueda et al in view of Nishino et al and Funemi et al are related to maleimide copolymers having Tg of 160-220⁰C that are melt-mixed with ABS resins to improve heat resistance, 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 Nishino et al and 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 Nishino et al and 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:
PNG
media_image1.png
18
19
media_image1.png
Greyscale
(A) Combining prior art elements according to known methods to yield predictable results;
PNG
media_image1.png
18
19
media_image1.png
Greyscale
(B) Simple substitution of one known element for another to obtain predictable results;
PNG
media_image1.png
18
19
media_image1.png
Greyscale
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
PNG
media_image1.png
18
19
media_image1.png
Greyscale
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
PNG
media_image1.png
18
19
media_image1.png
Greyscale
(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
PNG
media_image1.png
18
19
media_image1.png
Greyscale
(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
36. Applicant's arguments filed on July 20, 2026 have been fully considered but they are moot in light of new grounds of rejections and discussion set forth above.
37. 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) Instant claims are silent with respect to any properties of the composition, specifically “improved dispersibility”, “superior appearance”, “reduced number of surface streaks”, lower “risk of dust explosion” as argued by Applicant.
2) 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. That is, the provided properties are based on the specific compositions of the claimed maleimide copolymer and ABS resin or SAN resin. However, instant claim 1 is related to maleimide copolymer only, and not to a composition with ABS or SAN resins; the scope of instant claims is significantly broader than the specific copolymers (A1-A9). 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).
3) Further, the particle size of the maleimide copolymer shown in inventive examples 1-6 is limited to 136-252 micron; the particle diameters of Comparative example 2 are cited as less than 75 micron, however, it is not clear what was actual value of “less than 75 micron” which value maybe as low as 1 micron or even of nanosize. No examples showing the properties of the composition comprising maleimide copolymer having particle size of 75-135 micron and 252-300 micron were presented.
It is further noted that both Comparative examples 1 and 3 are having low risk of explosion as well as all inventive examples.
Conclusion
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/IRINA KRYLOVA/Primary Examiner, Art Unit 1764
Prosecution Insights