DETAILED ACTION
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
Applicant’s election with traverse of Group 1, Claims 16-28, filed on 12/1/2025 is acknowledged. The traversal is on the ground that the restriction is not proper because no restriction was required during European examination. This is not found persuasive because different authorities apply different legal standards, and there is no requirement of international harmonization on restriction.
The other traversal is on the ground that the restriction is only proper if there would be a serious burden placed on the Examiner if restriction is not required. This is not found persuasive because for PCT national stage (371) applications, restriction is based upon unity of invention; restriction of a national stage application does not take into account burden on the examiner.
Therefore, the restriction requirement based on the lack of unity analysis is still deemed proper and is made final. Accordingly, claims 29-30 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 12/1/2025.
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 16-28 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 pre-AIA the applicant regards as the invention.
Claim 16 recites the limitation "said dispersing agent". There is insufficient antecedent basis for this limitation in the claim.
Claim 16 recites “after drying a coating at 160°C”. How does the coating relate to the composition. Clarification is required.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 18 recites the broad recitation anisotropic geometry, and the claim also recites an aspect ratio of more than 1.5 which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 25 recites the broad recitation a needle shaped particle, and the claim also recites wallastonite which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
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.
Claim(s) 16-18, 20-21, 23-24, 26, 28 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Dimmer et al (WO 2018086861).
In setting forth this rejection a machine translation of WO 2018086861 has been relied upon and all citations to paragraph numbers in the discussion below are with respect to the machine translation.
Claims 16-17, 28: Dimmer teaches an anti-noise composition comprising polyacrylate dispersion, 33.7 g of barium sulfate and 29.7 g of calcium carbonate, a dispersing agent of Dispex Ultra PA 4580 which has an amine value of 19 mg KOH/g [0093]. The mixture of barium sulfate and calcium carbonate has a density of about 3.71. It is noted that obtainable by emulsion polymerization is not a process limitation, it merely limit the feature of the polymer.
Because Dimmer teaches the claimed composition, it is therefore inherent that the composition exhibit claimed property since such a property is evidently dependent upon the nature of the composition used, see MPEP 2112.01. Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
Claim 18: Dimmer teaches flaky fillers such as mica, are preferred [0065].
Claims 20-21, 23: Dimmer teaches the polymer comprises 25-75 wt% of butyl acrylate and 24-75 wt% of methyl (meth)acrylate [0027-0032, examples].
Claim 24, 26: Dimmer teaches the composition comprising 12 wt% of the polymer dispersion, 63.4 wt% of inorganic fillers, 0.48 wt% of a dispersing aids, 4.8 wt% of an organic filler, 15 wt% of water and 4.8 wt% of auxiliaries [0093, example 1]. Detailed calculation is available upon request.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 18-19, 27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dimmer et al (WO 2018086861).
Dimmer teaches flaky fillers such as mica, are preferred [0065], which can be used alone or in combination with common inorganic pigments such as calcium carbonate, barium sulfate etc. Dimmer exemplified a combination of calcium carbonate and barium sulfate. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to recognize a mixture of mica and calcium carbonate or a mixture of mica and barium sulfate.
Claims 18-19, 25, 27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dimmer et al (WO 2018086861) in view of Yang et al (KR 20060039123).
In setting forth this rejection a machine translation of KR 20060039123 has been relied upon and all citations to paragraph numbers in the discussion below are with respect to the machine translation.
Dimmer teaches the limitation of claim 16, as discussed above.
Dimmer does not teach a needle shaped filler.
However, Yang discloses a sound insulation composition and teaches a filler mixture of granular shape, plate shaped and needle shaped filler would improve soundproofing performance and the filler mixture should have a density of 2-4, the mixture comprises 10-80 wt% of granular filler such as barium sulfate, and 1-50 wt% of plate shaped filler such as mica and 1-50 wt% of needle shaped filler such as wallastonite (whole document). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to use the filler mixture of Yang in the composition of Dimmer to improve soundproofing performance.
Claim 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dimmer et al (WO 2018086861) in view of Bowles et al (US 2015/0218404).
Dimmer teaches the limitation of claim 16, as discussed above. Dimmer further teaches the polymer comprises 25-75 wt% of butyl acrylate and 24-75 wt% of monomer (b) including methyl (meth)acrylate and styrene, 0.3-3 wt% of an acid monomer selected from acrylic acid, methacrylic acid and a mixture thereof [0027-0033, examples].
Dimmer does not teach the amount of styrene.
However, Bowles discloses a sound insulation composition and teaches a dispersed acrylic polymer comprising methyl methacrylate, butyl acrylate, styrene and methacrylic acid (table 1) and the amount of styrene is 1-25wt% [0031] which overlaps the claimed range. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to include styrene in an amount of 1-25wt% because it is recognized in the art an amount suitable for acrylic polymer for a sound insulation composition.
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/WENWEN CAI/
Primary Examiner, Art Unit 1763