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/Restrictions
Claims 1-7 and 11-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 12/10/2025.
Response to Amendment
The amendment filed on 4/30/2026 has been entered. Claim(s) 8 is/are currently amended. Claim 10 is canceled. Claim(s) 1-9 and 11-19 is/are pending with claim(s) 1-7 and 11-13 withdrawn from consideration. Claim(s) 8-9 and 14-19 is/are under examination in this office action.
Response to Arguments
Applicant's argument filed on 4/30/2026, with respect to 103 rejection has been fully considered but is not persuasive.
Applicant argued that Prior art Guo’s multi-stage acrylic resin is not an additive, but instead is the matrix within which the branched polymer additive is dispersed.
In response, the instant application does not claim the multilayer polymer as an additive. Therefore, the prior art’s multi-stage acrylic resin does not have to be an additive.
Applicant argued that the branched polymer is utilized to modify the viscosity of the multi-stage flexible acrylic resin, not a dispersant for controlling particle coagulation or dispersion behavior of core shell particles. In contrast, Applicant's claimed composition (ii) comprises an oligomer configured to control coagulation behavior and disperse core shell particles.
In response, this represents a statement of intended use that imparts no additional structure beyond the claimed product and need not be taught by the prior art to read on the claimed invention. See MPEP 2111.02(III). Since Guo teaches the same product, the branched polymer is expected to function as a dispersant as in the instant application. Moreover, adding a dispersant to a powder composition has the same effect of lowing the viscosity of the powder composition.
Applicant argued that Molnar describes MBS core shell polymers as impact modifiers added to matrix polymers, and does not teach their use as primary matrix resins. The Examiner's proposed modification would materially change the prior art’s acrylic matrix system with a rubber-containing MBS material.
In response, impact modifier is an intended use. The fact that Guo’s multi-stage flexible acrylic resin is a primary matrix resin does not prevent the resin or the powder composition as a whole (which comprises the multi-stage flexible acrylic resin and the branched polymer) being used as an impact modifier. Molnar teaches MBS impact modifiers used for transparent plastics in extrusion, calendaring and injection molding [col. 3 lines 11-13, col. 11 lines 33-38]. Guo teaches that the powder composition is used in extruding, calendaring, and injection molding applications for a variety of indoor and outdoor flexible, transparent and weather resistant plastic materials [0002, 0054]. Thus, both Molnar’s and Guo’s products are used for the same application. It would have been obvious to one of ordinary skill in the art at the time of filing to use Guo’s powder composition as an impact modifier in extruding, calendaring, and injection molding applications for a variety of indoor and outdoor flexible, transparent and weather resistant plastic materials.
Applicant argued that even if, arguendo, one of ordinary skill in the art were to utilize Molnar's MBS core shell polymer as the bulk resin component in Guo’s composition, the resulting combination still would not teach or suggest the claimed powder composition including the claimed oligomer limitations or its recited function in controlling coagulation and dispersion of core shell particles. As discussed above, Applicant's composition comprises an oligomer-containing composition configured to disperse core shell particles of the multilayer polymer. In contrast, Guo’s branched polymer is used as an additive to modify bulk rheological properties of an acrylic resin matrix, not to control dispersion or coagulation of core shell particles.
In response, as stated above, controlling dispersion or coagulation is a function or intended use of the product. As long as the prior art teaches the same product, the recited function is expected to be present.
Applicant argued that Guo is directed to compositions that maintain optical clarity and avoid phase separation, employing branched polymer additives that are compatible with a continuous acrylic matrix to achieve a substantially homogeneous system. Molnar's MBS core shell polymers are specifically designed to introduce a dispersed rubber phase, thereby creating a heterogeneous, phase-separated morphology to improve impact resistance. Accordingly, one of skill would expect that introducing MBS additives into Guo’s composition would result in a heterogeneous mixture of the rubbery butadiene core and the acrylic matrix. Guo teaches that heterogeneity in such systems leads to phase separation and whitening. Thus, these differences in material structure would have raised a significant concern regarding phase separation, including whitening or haze, thereby reducing optical clarity in the resulting composition. Accordingly, there would have been no reasonable expectation of successfully combining Guo and Molnar in the manner proposed by the Examiner.
In response, the examiner’s combination of Molnar and Guo is not adding Molnar’s MBS into Guo’s powder composition. Instead, the 103 rejection clearly states that it would have been obvious to one of ordinary skill in the art at the time of filing to substitute Guo’s multi-stage flexible acrylic core-shell resin with Molnar’s MBS for the aforementioned benefits, since they are used for the same type of application. The MBS is a continuous phase.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Applicant argued that Applicant can rebut a case of prima facie obviousness by showing the criticality of the range. In this regard, Applicant notes that the experimental data in the present application demonstrate unexpected and substantial improvements in dispersion behavior and processing properties over compositions lacking the claimed oligomer. Specifically, Applicant's Examples show that compositions including Applicant's claimed oligomer, when combined with MBS core shell polymers, exhibit significantly improved dispersion quality, and substantially reduced viscosities relative to compositions without the oligomer. As shown in Table 3, Comparative Example 1 (without oligomer) resulted in a gritty, poorly dispersed composition with a viscosity of 240,000 cP, whereas Examples 1-3 exhibited no grit and significantly reduced viscosities of approximately 63,000-68,000 cP. Similarly, in methyl methacrylate systems, the viscosity decreased from 210,000 cP (Comparative Example 2) to as low as 20,000 cP (Examples 4 and 6) upon inclusion of the oligomer. These results demonstrate more than an order-of-magnitude improvement in processability. Further, as shown in Table 7, compositions incorporating the claimed oligomers consistently exhibited improved dispersion, whereas Comparative Example 3 exhibited poor dispersion.
In response, first, the observation result in Table 3 only shows “Gritty” and “No grit”; the dispersion observations in Table 7 only shows “poor” and “Excellent”. The examiner submits that these rating systems are arbitrary and do not allow the examiner to check the details of the differences or significance of the difference. Concrete data (e.g., test values, photos, etc.) are more convincing. Second, whether 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 re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980); MPEP 716.02(d). In the instant case, the examples are not commensurate in scope with the claims. For instance, claim 8 recites a multilayer polymer comprising a methacrylate butadiene styrene core shell polymer. This covers a wide variety of MBS core shell polymers, differing in their internal structure, shell composition, crosslinking density, and particle size. However, the examples only employ one MBS [0037 spec.]. It is not known if other types of MBS resins would give the same results. Claim 8 recites at least one alkyl (meth)acrylate monomer. this covers nearly unlimited acrylic monomers. However, the examples only employ BA, MMA and BMP [Table 1 spec.]. It is not known if other acrylic monomers would give the same results. Claim 8 recites a number average molecular weight of less than 10,000 g/mol for the oligomer. However, the molecular weight of the oligomers employed by the examples only ranges from about 1500 to 2100 g/mol [Table 1 spec.]. It is not known if an oligomer with molecular weight higher than 2100 g/mol would give the same results. Since the examples are not reasonably commensurate with the full scope of claimed materials, and the Applicant has not provided any additional information that would allow one skilled in the art to extend the results associated with the data to the full scope of the claim, the examples cannot be relied upon to establish non-obviousness of the claimed invention.
Applicant argued that Applicant can additionally rebut a prima facie case of obviousness by demonstrating the prior art teaches away from the claimed invention. Guo teaches that linear low molecular weight additives can lead to undesirable whitening, which is indicative of phase separation. Guo employs branched polymers that are compatible with the acrylic matrix and that maintain a substantially homogeneous composition. Thus, Guo is directed toward compositions that preserve optical clarity and minimize heterogeneity within the material. In contrast, MBS core shell polymers include a rubbery butadiene core and are specifically designed to introduce a dispersed rubber phase within a composition to improve impact resistance. One of ordinary skill in the art would readily appreciate that such materials, comprising a rigid methyl methacrylate/styrene shell surrounding a soft rubbery core, are expected to form a heterogeneous, phase-separated morphology when incorporated into a polymer system. Accordingly, incorporation of Molnar's MBS materials into the system of Guo would be expected to increase heterogeneity and introduce the types of phase separation and optical defects (e.g., haze or whitening) that Guo seeks to avoid. One of ordinary skill, seeking to follow D1's teachings of maintaining transparency and avoiding phase separation, would therefore have been discouraged from introducing rubber-containing MBS materials of the type described in Molnar.
In response, the examiner’s combination of Molnar and Guo is not to add Molnar’s MBS into Guo’s resin matrix, as stated above. Instead, the combination of Molnar and Guo is to substitute Guo’s multi-stage flexible acrylic resin with Molnar’s MBS. Molnar teaches that the MBS improves clarity and color in clear matrix polymer blends [col. 1 lines 27-30]. This is consistent with Guo’s objective of transparent resin matrix. Guo does not teach away from a heterogenous composite that contains the homogenous powder composition comprising the multi-stage flexible acrylic resin.
Claim Rejections - 35 USC § 103
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.
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.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 8-9 and 14-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Guo et al (US 20220185934 A1) in view of Molnar (US 6331580 B1).
Regarding claim 8, Guo teaches a composition comprising a multi-stage flexible acrylic resin and a branched polymer additive [abstract]. The ingredients are in powder form [0053, 0058]. The powder composition is used in extruding, calendaring, and injection molding applications for a variety of indoor and outdoor flexible, transparent and weather resistant plastic materials [0002, 0054].
The multi-stage flexible acrylic resin has a core-shell structure [0007]. Therefore, the multi-stage flexible acrylic resin meets the claimed multilayer polymer, as evidenced by the applicant [0002 spec.].
Guo does not specifically teach that the multi-stage flexible acrylic resin comprises a methacrylate butadiene styrene core shell polymer.
In the same field of endeavor, Molnar teaches methacrylate butadiene styrene core shell polymer (MBS) impact modifiers used for transparent plastics in extrusion, calendaring and injection molding [col. 3 lines 11-13, col. 11 lines 33-38]. The MBS provides enhanced impact properties and improved clarity and color in clear matrix polymer blends [col. 1 lines 27-30].
It would have been obvious to one of ordinary skill in the art at the time of filing to substitute Guo’s multi-stage flexible acrylic core-shell resin with Molnar’s MBS for the aforementioned benefits, since they are used for the same type of application.
Guo teaches that the branched polymer is a reaction product of reactants comprising one or more monoethylenically unsaturated ester monomers and a chain transfer agent [abstract]. The one or more monoethylenically unsaturated ester monomers include butyl acrylate, ethyl hexyl acrylate and ethyl acrylate [0027]. The branched polymer additive has number average molecular weight of no more than 20,000 g/mol [0047].
It would have been obvious to one of ordinary skill in the art at the time of filing to select butyl acrylate, ethyl hexyl acrylate and ethyl acrylate as the monoethylenically unsaturated ester monomers in Guo’s composition, as these are expressly disclosed as being useful in this capacity. It has been established that selection of a known material based on its suitability for its intended use is prima facie obvious (Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)). See MPEP 2144.07.
The examiner submits that the branched polymer reads on the claimed oligomer because its molecular weight overlaps the claimed molecular weight of less than 10,000 g/mol; and the one or more monoethylenically unsaturated ester monomers are the same as the claimed alkyl (meth)acrylate monomer in the instant application (see [0020] of specification).
The recited “for dispersing core shell particles” represents a statement of intended use that imparts no additional structure beyond the claimed product and need not be taught by the prior art to read on the claimed invention. See MPEP 2111.02(III). Since Guo teaches the same product, the branched polymer is expected to function as a dispersant as in the instant application. Moreover, adding a dispersant to a powder composition has the same effect of lowing the viscosity of the powder composition.
The claimed glass transition temperature is a property of the oligomer product. “Products of identical chemical composition cannot have mutually exclusive properties." 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. “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)). See MPEP 2112.01. Since the prior art teaches the same product as the current invention, the recited glass transition temperature is expected to be present.
Regarding claim 9, Guo teaches that the amount of branched polymer in the composition is at least 1 or 3 or 5 or 10 weight percent; and up to 60 or 50 or 40 weight percent [0049]. These amounts fall within the claimed range of 1-98 wt%.
Regarding claims 14-17, Guo teaches that the number average molecular weight of the branched polymer additive can be 3000 or 4000 or 5000 g/mol [0047]. These meet the claimed Mn of less than 7,500 and 5,000. The claimed degree of polymerization (DP) is determined by the specific monomers forming the oligomer and the molecular weight of the oligomer. Since the Guo teaches the same monomers as stated above, the claimed DP is expected to be present.
Regarding claim 18, Guo teaches that the one or more monoethylenically unsaturated ester monomers include butyl acrylate, ethyl hexyl acrylate and ethyl acrylate, as stated above.
Regarding claim 19, Guo teaches 2-ethyl hexyl thioglycolate as the chain transfer agent [0029].
Conclusion
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIANGTIAN XU whose telephone number is (571)270-1621. The examiner can normally be reached Monday-Thursday.
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 on (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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/JIANGTIAN XU/Primary Examiner, Art Unit 1762
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