DETAILED ACTION
Pending Claims
Claims 1-10, 12, 13, 15, and 16 are pending.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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 .
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 Rejections - 35 USC § 112, 2nd paragraph (b)
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 1-10, 12, 13, 15, and 16 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 1-10, 12, 13, 15, and 16, claim 1 introduces “a monomer” in step a) of the method. It goes on to state that the singular monomer material is: “selected from ethyl methacrylate, methyl methacrylate, isopropyl methacrylate, t-butyl methacrylate, butyl methacrylate, ethylene acrylate, hydroxyethyl methacrylate, and trimethylolpropane triacrylate, or any combinations thereof.” It is unclear how the combinations thereof can represent a singular monomer material. It is also unclear what concept controls the scope of the claim: a singular monomer material or a material including combinations thereof. Furthermore, this singular monomer material is re-introduced is step c) as a diluent, and it is not immediately clear how this relates to the combinations thereof. Specifically, it is unclear if the entire combination (or a portion thereof) is required in step c) when a combination is provided in step a). Claims 2-10, 12, 13, 15, and 16 are rejected because they are dependent form claim 1.
Further regarding claims 1-10, 12, 13, 15, and 16, step d) in claim 1 states that the radical initiator is “comprised between 0.5 and 3%”. It is unclear if this is a weight percentage, a volume percentage or some other percentage. Furthermore, it is unclear if this percentage is based on the combined content of {the milled polymer and the monomer diluent}, the combined content of {the milled polymer, the monomer diluent and the radical initiator} or the overall polymeric thermoplastic acrylic resin. Claims 2-10, 12, 13, 15, and 16 are rejected because they are dependent form claim 1. Note: the exemplary embodiments (see Example 3) suggest that this a percentage by weight with respect to the resin.
Further regarding claims 3 and 4, it is unclear if the claimed amounts of radical initiator are attempting to further limit the range presented in step d) of claim 1; or if they are presenting some other range. It is also unclear if the weight basis of the claimed amounts is the weight of {the monomer in step a)}, the combined weight of {the monomer in step a) and the radical initiator}, the combined weight of {the milled polymer and the monomer diluent}, the combined weight of {the milled polymer, the monomer diluent and the radical initiator} or the overall polymeric thermoplastic acrylic resin.
Further regarding claim 7 and 8, it is unclear if the claimed ratio is weight ratio, a volume ratio or some other ratio. Note: the exemplary embodiments, as a whole (see especially Example 2), suggest that this might be a weight ratio.
Claim Rejections - 35 USC § 112, 4th paragraph (d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 9 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 1 is drawn to a method of obtaining a polymeric thermoplastic acrylic resin. Claim 9 attempts to further limit this method with a step of: curing the resin from step d) at a temperature between 60 to 100 oC. However, curing this material would no longer result in a polymeric thermoplastic acrylic resin. Rather, it results in a cured product of a polymeric thermoplastic acrylic resin. This improper shift in scope fails to further limit the method set forth in claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Suggested Claim Language
The following is suggested claim language to overcome the above rejections and improve overall clarity of the claimed invention:
1. (Suggested Language) A method for obtaining a polymeric thermoplastic acrylic resin comprising the following steps:
a) polymerizing at least one monomer through a bulk [[by]] thermal initiation reaction in the presence of a radical initiator and at a temperature oC, wherein the at least one is selected from the group consisting of ethyl methacrylate, methyl methacrylate, isopropyl methacrylate, t-butyl methacrylate, butyl methacrylate, ethylene acrylate, hydroxyethyl methacrylate, and trimethylolpropane triacrylatethe radical initiator is selected from the group consisting of benzoyl peroxide, methyl ethyl ketone peroxide, cumyl hydroperoxide, and azobisisobutyronitrile;
b) milling of the polymer obtained in step a) until reaching a particle size mm; and
c) diluting the milled polymer from step b) with the at least one monomer until reaching a dynamic viscosity to produce the polymeric thermoplastic acrylic resin, wherein the dynamic viscosity is measured in a Brookfield viscometer at 20 oC and with a rotor speed of 200 rpm; and
wherein the radical initiator is present in the polymeric thermoplastic acrylic resin at a concentration by weight with respect to the polymeric thermoplastic acrylic resin.
2. (Suggested Language) The method according to claim 1, wherein the at least one monomer
3. (Suggested Language) The method according to claim 1, wherein the radical initiator is present in the polymeric thermoplastic acrylic resin at a concentration of 1% by weight with respect to the polymeric thermoplastic acrylic resin.
4. (Suggested Language) The method according to claim [[3]] 1, wherein the radical initiator is present in the polymeric thermoplastic acrylic resin at a concentration of 2% by weight with respect to the polymeric thermoplastic acrylic resin.
5. (Suggested Language) The method according to claim 1, wherein the radical initiator is benzoyl peroxide.
6. (Suggested Language) The method according to claim 1, wherein the thermal initiation reaction of step a) takes place at a temperature of 70 oC.
7. (Suggested Language) The method according to claim 1, wherein the milled polymer is diluted with the at least one monomer in such that a weight ratio of the at least one monomer to the milled polymer is
(If this is a weight ratio)
8. (Suggested Language) The method according to claim 7, wherein the weight ratio
(If this is a weight ratio)
9. (Suggested Language) A for obtaining a cured thermoplastic acrylic resin, comprising preparing a polymeric thermoplastic acrylic resin according to the method of claim 1, and curing the polymeric thermoplastic acrylic resin oC.
10. (Suggested Language) A polymeric thermoplastic acrylic resin obtained according to the method of claim 1.
12. (Suggested Language) A prepregcomprising a fibrous material impregnated with the polymeric thermoplastic acrylic resin according to claim 10.
13. (Suggested Language) The prepreg according to claim 12, wherein the fibrous material is selected from the group consisting of carbon fibre, glass fibre, aramid fibre, and natural fibres.
15. (Suggested Language) A polymeric composite material curing oC in the presence of a fibrous material.
16. (Suggested Language) The composite material according to claim 15, wherein the fibrous material is selected from group consisting of carbon fibre, glass fibre, aramid fibre, and natural fibres.
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.
Claims 10, 12, 13, 15, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Guzauskas (US Pat. No. 5,747,553) in view of Kawasaki et al. (US 2003/0181612 A1).
Regarding claims 10, 12, 13, 15, and 16, Guzauskas discloses: (10) a polymeric thermoplastic acrylic resin (Abstract; column 9, line 53 through column 10, line 17; column 12, lines 38-63; Example 1 in the Table bridging columns 14-15) comprising:
a monomer diluent that is at least one monomer selected from the group consisting of ethyl methacrylate, methyl methacrylate, isopropyl methacrylate, t-butyl methacrylate, butyl methacrylate, ethylene acrylate, hydroxyethyl methacrylate, and trimethylolpropane triacrylate (Example 1 in Table bridging column 14-15: methyl methacrylate; see also column 8, line 63 through column 9, line 5 and column 7, line 54 through column 8, line 15);
a polymer of the at least one monomer in particulate form having a particle size between 20 and 100 mm (Example 1 in Table bridging columns 14-15: Acrylic polymer powder*; see also column 6, lines 57-67 and column 8, lines 45-63); and
a radical initiator (Example 1 in Table bridging columns 14-15: t-butyl peroxybenzoate; see also column 9, line 53 through column 10, line 22);
(12) a prepreg comprising a fibrous material impregnated with the polymeric thermoplastic acrylic resin (column 11, lines 1-5 & 17-20; column 12, lines 59-63); (13) wherein the fibrous material is selected from the group consisting of carbon fibre, glass fibre, aramid fibre, and natural fibres (column 11, lines 1-5);
(15) a polymeric composite material obtained by curing the polymeric thermoplastic acrylic resin (column 11, lines 21-22; column 13, lines 8-16) at a temperature equal to or greater than 60 oC (column 12, line 64 through column 13, line 6; see also column 9, line 65 through column 10, line 17) in the presence of a fibrous material (column 11, lines 1-5 & 17-20; column 12, lines 59-63); and (16) wherein the fibrous material is selected from group consisting of carbon fibre, glass fibre, aramid fibre, and natural fibres (column 11, lines 1-5).
Guzauskas fails to explicitly disclose: (10) wherein the polymeric thermoplastic acrylic resin has a dynamic viscosity between 100 and 1100 cP, measured in a Brookfield viscometer at 20 oC and with a rotor speed of 200 rpm. Rather, he discloses that the initial mixture is in the form of a wet slurry (see column 7, lines 15-30), wherein the polymer particles can be provided in amounts as low as 10 wt%, ranging from 10-70 wt% (see column 8, lines 45-47). Example 1 of Guzauskas contains 61% of methyl methacrylate monomer and 36.7% of polymer powder (see Table bridging columns 14-15), which calculates to a relative ratio of approximately 62.4/37.6. When applying the lower amounts of the polymer particles disclosed in the general teachings to this type of exemplary embodiment, the obvious variations of this exemplary embodiment would have featured relative ratios that overlap with the range set forth in instant claim 7. In light of this, Applicant associates the instantly claimed viscosity with this relative ratio range (see Example 2 in the instant specification). Furthermore, it has been found that in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists – see MPEP 2144.05.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to formulate the resin composition of Guzauskas with the instantly claimed dynamic viscosity (between 100 and 1100 cP) because: (a) Guzauskas discloses that the initial mixture is in the form of a wet slurry, wherein the polymer particles can be provided in amounts as low as 10 wt%, ranging from 10-70 wt%; (b) example 1 of Guzauskas contains 61% of methyl methacrylate monomer and 36.7% of polymer powder, which calculates to a relative ratio of approximately 62.4/37.6; (c) when applying the lower amounts of the polymer particles disclosed in the general teachings to this type of exemplary embodiment, the obvious variations of this exemplary embodiment would have featured relative ratios that overlap with the range set forth in instant claim 7; (d) Applicant associates the instantly claimed viscosity with this relative ratio range (see Example 2 in the instant specification); and (e) it has been found that in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.
Example 1 of Guzauskas features a radical initiator concentration of 0.30 wt% (see Table bridging columns 14-15). Accordingly, this example fails to disclose: (10) wherein the radical initiator is present in the polymeric thermoplastic acrylic resin at a concentration between 0.5 and 3% by weight with respect to the polymeric thermoplastic acrylic resin. However, the general teachings of Guzauskas contemplate a typical range of 0.12 to 1.0 percent by weight and a more typical range of 0.3 to 1.0 percent by weight (see column 10, lines 18-22). In light of this, it has been found that in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists – see MPEP 2144.05.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to formulate the resin composition of Guzauskas with the instantly claimed radical initiator concentration (between 0.5 and 3% by weight with respect to the polymeric thermoplastic acrylic resin) because: (a) Example 1 of Guzauskas features a radical initiator concentration of 0.30 wt%; (b) the general teachings of Guzauskas contemplate a typical range of 0.12 to 1.0 percent by weight and a more typical range of 0.3 to 1.0 percent by weight; and (c) it has been found that in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.
Example 1 of Guzauskas features t-butyl peroxybenzoate as a radical initiator (see Table bridging columns 14-15). Accordingly, this example fails to disclose: (10) a radical initiator selected from the group consisting of benzoyl peroxide, methyl ethyl ketone peroxide, cumyl hydroperoxide, and azobisisobutyronitrile. However, the general teachings of Guzauskas are open to other initiators with a preferred activation temperature range of 75-200 oC (see column 10, lines 6-17). In light of this, Kawasaki et al. demonstrate that the t-butyl peroxybenzoate of Guzauskas and methyl ethyl ketone peroxide have similar activation temperatures above 75 oC (see paragraph 0041). Furthermore, it has been found that combining or substituting equivalents known for the same purpose is prima facie obvious – see MPEP 2144.06.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to formulate the resin composition of Guzauskas with the instantly claimed radical initiator because: (a) Example 1 of Guzauskas features t-butyl peroxybenzoate as a radical initiator; (b) the general teachings of Guzauskas are open to other initiators with a preferred activation temperature range of 75-200 oC; (c) Kawasaki et al. demonstrate that the t-butyl peroxybenzoate of Guzauskas and methyl ethyl ketone peroxide have similar activation temperatures above 75 oC; and (d) it has been found that combining or substituting equivalents known for the same purpose is prima facie obvious.
Lastly, the combined teachings of {Guzauskas and Kawasaki et al.} fail to disclose that: (10) the polymeric thermoplastic acrylic resin is obtained according to the method of claim 1, where the polymer particles are formed by: polymerizing the least one monomer through a bulk thermal initiation reaction in the presence of a radical initiator and at a temperature between 60 and 100 oC; and subsequent milling. However, it has been found that, “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process,” – In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (see MPEP 2113).
In the instant case, the polymeric thermoplastic acrylic resin resulting from the combined teachings of {Guzauskas and Kawasaki et al.} obviously satisfies all of the material/chemical limitations (and amounts thereof) of the instantly claimed polymeric thermoplastic acrylic resin, regardless of how it is prepared.
Allowable Subject Matter
Claim 1 would be allowable if rewritten or amended 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.
Claims 2-8 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.
Claim 9 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b)/(d) or 35 U.S.C. 112 (pre-AIA ), 2nd/4th 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 combined teachings of {Guzauskas and Kawasaki et al.} represent the closest prior art. However, they fail to reasonably teach or suggest the method of claims (1-9) where the polymer particles are formed by: polymerizing the least one monomer through a bulk thermal initiation reaction in the presence of a radical initiator and at a temperature between 60 and 100 oC; and subsequent milling.
Communication
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/MICHAEL J FEELY/Primary Examiner, Art Unit 1766
January 5, 2026