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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Double Patenting
Claim 1 and 9-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2 and 9-15 of copending Application No. 18/565,896 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other.
Copending claim 2 recites a thermoplastic composition (for claim 1) comprising a graft copolymer and a non-graft copolymer which is an alkyl (meth)acrylate/alkyl-substituted styrene/vinyl cyanide copolymer, corresponding to claimed non-graft copolymer (B) (for claim 1). The graft copolymer of the copending claims comprises a seed which is 35 to 58 wt% alkyl acrylate and 42 to 65 wt% aromatic vinyl compound, corresponding to the claimed seed (for claim 1); a rubber core which is 78 to 91 wt% alkyl acrylate and 9 to 22 wt% vinyl aromatic monomer, corresponding to the claimed rubber core (for claim 1); and a shell which is 65 to 82 wt% vinyl aromatic compound, 12 to 30 wt% vinyl cyanide, and 3 to 15 wt% alkyl acrylate, corresponding to the claimed shell (for claim 1). Said graft copolymer satisfies the equations 180 ≤ 2*r2 ≤300, overlapping claimed equation 1 (for claim 1) and 25≤ r2-r1 ≤ 45,corresponding to claimed equation 2 (for claim 1), wherein r1 and r2 have the same definitions as in the instant claim.
Regarding claims 9-12, 15: Copending claims 9, 10, 11, 12 and 15 depend from claim 2 and recite limitations that overlap the scope of the instant claims 9, 10, 11, 12, and 15, respectively.
Regarding claim 13: Copending claim 13 recites a method of making a thermoplastic composition by kneading and extruding at 180 to 300 °C and 80 to 400 rpm a graft copolymer and a non-graft copolymer which are defined in the same manner as in copending claim 2, discussed above. Note that the ranges for the amounts of each monomer in the seed, core, and shell of the graft copolymer overlap the ranges recited in the instant claims.
Regarding claims 14: Copending claim 14 depends from claim 13 and states that the process further includes an alkyl acrylate/vinyl aromatic/vinyl cyanide graft copolymer having an average diameter of 50 to 150 nm.
The copending claims do not specifically recite a graft copolymer in which the seed, core, and shell comprise the disclosed monomers within the claimed ranges.
It has been held that in the case where the claimed ranges overlap or lie inside ranges disclosed in the prior art, a prima facie case of obviousness exists; see In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages; see In re Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (" (MPEP § 2144.05). Note that the ranges for the amounts of monomers in the copending claim overlap the ranges recited in the instant claims. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to prepare the claimed composition in view of the copending claims (for claim 1).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-15 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claims 1 and 13: Claims 1 and 13 each recite the limitation of a non-graft copolymer (B) which comprises an alkyl-substituted styrene-based compound; this limitation with regards to the phrase “alkyl-substituted styrene-based compound”. Styrene has the structure shown below.
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It is unclear whether the phrase “alkyl-substituted styrene-based compound” is intended to include only compound(s) having a structure wherein the styrene structure shown above is substituted with one or more alkyl groups, or if the inclusion of the term “-based” is intended to read on compounds that can be obtained as derivatives of alkyl-substituted styrenes-for instance, compounds wherein the ring is hydrogenated or the alkyl group has been functionalized with a heteroatom-containing moiety.
Additionally, the r1 average radius and r2 average radius in claims 1 and 13 are indefinite as it is unclear whether these variables refer to the radius from the center of the graft copolymer to the exterior point of the polymer seed and core, respectively, or to any point within the seed and core.
Regarding claim 5: The phrase “alkyl-substituted styrene-based compound” is indefinite as discussed above with respect to claim 1.
Regarding claims 2-12, 14, 15: The instant claims depend from either claim 1 or claim 13 and do not correct the deficiencies discussed above. The claims are therefore indefinite per the same rationale as claims 1 and 13.
Allowable Subject Matter
Claims 2-4, 6-12, 14, and 15 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: The closest prior art of record is Kim et al, US2014/0235749.
Kim discloses an acrylonitrile-acrylate-styrene graft copolymer having a seed/core/shell structure, wherein the prior art graft copolymer satisfies the equations 1.50 ≤ 2*r2 ≤ 350 and 20 ≤ r2-r1 ≤ 50, wherein r1 is a radius from the center of the graft copolymer to the seed and r2 is a radius from the graft copolymer center to the core (abstract; ¶0039). Kim closest example (¶0073: Example 11) discloses a styrene/acrylonitrile/methyl methacrylate seed wherein the amount of styrene is three times greater than the combined amounts of acrylonitrile and methyl methacrylate in contrast to the claimed invention, which requires that the seed comprise 51 to 77 wt% alkyl (meth)acrylate. Further note that Kim does not disclose any broad ranges for the amounts of monomer(s) in each stage of the prior art graft copolymer. Kim therefore does not suggest the production of a graft copolymer wherein each of the seed, core, and shell layers comprises the required monomers in the amounts recited in claims 1 and 13.
Additionally, no reference has been found that would provide a motivation to one of ordinary skill in the art to modify the prior art graft copolymer to comprise
a seed containing 51 to 77 wt% first alkyl (meth)acrylate and 23 to 49 wt% first aromatic vinyl compound,
a rubber core containing 78 to 90 wt% first alkyl acrylate and 10 to 22 wt$ second aromatic vinyl compound; and
a shell containing 65 to 80 wt% third vinyl aromatic compound, 14 to 25 wt% first vinyl cyanide compound, and 3 to 15 wt% second alkyl acrylate
while also meeting Kim’s requirements that the difference between the refractive index of the seed and/or shell and that of the matrix polymer to which the graft copolymer is added is less than 0.035 and the difference in refractive index of the core to that of the matrix is higher than 0.056 (¶0044). Kim therefore fails to teach or suggest the invention as defined in the instant claims.
Conclusion
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/JEFFREY S LENIHAN/Primary Examiner, Art Unit 1765