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 .
Status of Claims
Amendment filed on 01/26/2026 is acknowledged.
Claim 2 is cancelled. Claims 1, 6, 9, and 14 are amended.
Claims 1 and 3-14 are pending and being examined on merits herein.
Priority
This instant application 18033842, filed on 04/26/2023, is a 371 of PCT/EP2021079443, filed on 10/25/2021, which claims domestic benefit of 63180258, filed on 04/27/2021, and claims foreign priority to European (EPO) 20205340.1, filed on 11/03/2020.
Withdrawn Objections/Rejections
All previous claim Objection(s) / Rejection(s) as set forth in the previous Office action (mailed 07/21/2025) that are not repeated and/or maintained in the instant Office action are withdrawn, in light of applicant’s amendment and remark filed on 01/26/2026.
New and Maintained Claim Objections/Rejections
The following objections/rejections are necessitated by applicant’s amendment filed on 01/16/2026.
Claim Objections
Claims 1 and 14 are objected to because of the following informalities.
Claim 1 is objected to because of using period “.” at the end of limitation phrase a), using “;” at end of limitation phrase b) or c), while using “,” at the end of d). The period “.” is not allowed within a claim description, and using either “;” or “,” within the claim should be consistent through the entire claim.
Claim 14 recites “contacts … undesired plant growth, …, their environment or the crop plants to be …, … and/or on undesired plants and/or on the crop plants and/or their environment”. The sentence appears to contain redundant phrases.
Appropriate correction is required.
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.
Claim 14 is 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.
Claim 14 recites “contacts … undesired plant growth, …, their environment or the crop plants to be protected or regulated for growth, or on the soil and/or on undesired plants and/or on the crop plants and/or their environment”. It is unclear how the limitation scope differ between the following phrases: “crop plants to be protected or regulated for growth” and “the crop plants”; “undesired plant growth” and “undesired plants”; “their environment” in the middle and “their environment” at end of the sentence. Also, it is unclear “on the soil” is part of “their environment” or not. Further, it is unclear what refers to the word “their” in both phrases of “their environment”.
Claim Interpretation
Claims 1 and 14 are interpreted as following.
Claim 1 is interpreted as an agrochemical suspension comprising a) an agrochemical active present in the form of suspended particles in the suspension, b) a (meth)acrylic acid homopolymer P with a mass average molar mass Mw of at least 100,000 Da, c) a thickener, and d) naphthalenesulfonate formaldehyde condensate with the concentration from 0.2 to 0.9 wt% based on the total weight of the suspension.
Claim 14 is interpreted as a method of controlling phytopathogenic fungi and/or undesired plant growth and/or undesired insect or mite attack and/or regulating the growth of crop plants, wherein the agrochemical suspension defined in claim 1 contacts the phytopathogenic fungi, and/or undesired plant growth, and/or undesired insect or mite, and/or on the soil of the plants to be protected or regulated for growth.
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 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.
Claims 1 and 4-14 are rejected under 35 U.S.C. 103 as being unpatentable over Xu et al. (WO2019072602, published on 04/18/2019, filed on 10/01/2018 or earlier, IDS of 04/26/2023), in view of Chen et al. (CN104163708, 11/26/2014, IDS of 04/26/2023; machine translation with line numbers relied upon below; Copy in record of , PTO-892).
Xu throughout the reference teaches agrochemical pesticide compositions comprising water-insoluble pesticide present in the form of suspended particles (e.g., Abstract; Pg. 12, lines 37-39).
Regarding instant claim 1, Xu teaches an agrochemical pesticide suspension concentrate composition comprising a) an agrochemical active pesticide, b) a homo- or copolymer of (meth)acrylic polymer P with an average molecular mass of at least 150,000, and c) a thickener (e.g., Abstract), corresponding to instant claim 1a), 1b) and 1c). Xu shows that the polymer materials used in the formulation with examples of polymer 9 and 10 as homopolymer polyacrylic acid having MW at least 100,000 Da (Pg. 14, Line 25 Table), corresponding to homopolymer and Mw in instant claim 1b).
Regarding instant claim 4, Xu exemplifies polymer P amount in formulation at 1.38% (Pg. 16, 2nd Table), at 3.0% (Pg. 18 Table) (overlapping with range from 0.1 to 5 % in instant claim 4).
Regarding instant claims 5-7 and 9-10, Xu indicates that alkyl polyglycoside as auxiliary 1 and hydrophilic fumed silica as a low viscosity thickener auxiliary 6 can both be included in the suspension concentrate formulations (Pg. 15, Lines 2-8) (corresponding to instant claims 5-6), with exemplified alkyl polyglycoside amount at 0.98 % (Pg. 16, 2nd Table) and at 2% (Pg. 18 Table) as auxiliary 1 (overlapping with range from 1 to 10 % in instant claim 7), and water at 49.60% (Pg. 16, 2nd Table) and at 52.55% (Pg. 18 Table) (corresponding to at least 20 % water in instant claim 10). Xu specifies that the agrochemical active pesticide has a solubility in water of less than 1 g/l at 23 C (corresponding to instant claim 9).
Regarding instant claims 11-13, Xu indicates water-soluble preferred fertilizers such as sulfates, phosphates or nitrates, in particular ammonium sulfate, ammonium nitrate, and/or ammonium polyphosphate can be added to the composition (Pg. 10, Lines 27-32), and that these additional substances can be optionally added just before use as tank mix to the pesticide suspension concentrate (Pg. 13, Lines 24-26), and as demonstrated in fertilizer compatibility testing method comprising contacting the pyraclostrobin suspension formulation with fertilizer (Pg. 19, Lines 8-15).
Regarding instant claim 14, Xu species that the disclosure relates to a method of controlling phytopathogenic fungi and/or undesirable vegetation and /or undesired insect or mite attack and/or for regulating the growth of plants, wherein the composition according to the invention is allowed to act on the respective pests, their environment or the crop plants to be protected from the respective pest, on the soil and/or on undesired plants and/or on the crop plants and/or on their environment (Pg. 13 bottom -Pg. 14 top).
Xu does not teach naphthalenesulfonate formaldehyde condensate and its amount in the composition as recited in claims 1 and 8.
Chen teaches a water-soluble fertilizer suspension aid comprising sodium naphthalenesulfonate formaldehyde condensate (10-20 parts), polymethacrylic acid (5-10 parts), polysaccharide gum (30-50 parts), xanthan gum (5-10 parts), stabilizer (5-10 parts), chelating agent (5-10 parts) (e.g., [0013-0020]; [0030]; Claim 1) and the mixture is dried to obtain as the suspension aid (e.g., [0030]). This dry suspension aid is mixed directly with fertilizer raw materials, so that the suspension aid is dispersed around the fertilizer raw materials, and then mix with other nutrients of this suspension aid and fertilizer raw materials at the amount of 0.5% to 4% or dissolve it at the amount of 0.5% to 4% in water and spray (e.g., [0033]; Claim 5). Based on the naphthalenesulfonate formaldehyde condensate (10-20 % as 10-20 parts out of 100 parts) in the aid and the final addition amount of water-soluble fertilizer raw material for suspension as 0.5-4%, the final naphthalenesulfonate formaldehyde condensate amount equals to 0.05 - 0.8 % (lowest amount as 0.5 % * 10%, highest amount as 4% * 20%) (overlapping with range from 0.2 to 0.9 % in instant claim 1, or 0.4 to 0.6 % in instant claim 8).
It would have been prima facie obvious for one with ordinary skills in the art prior to filing date to incorporate naphthalenesulfonate from Chen’s teaching into Xu’s suspension composition comprising the components comprising agrochemical active in the form of suspended particles, polymer P with mass Mw at least 100,000 Da, and thickener to arrive at current invention. Xu tests and shows results on storage stability and fertilizer compatibility in many examples (Pg. 17-20), and many formulations show storage phase separation and fertilizer incompatibility, although the combinations of polymer P9 and P10 as polyacrylic polymer with Mw at least 100,000 Da (pg. 14, Table) in combination with other components show reasonably good results (Pg. 17, Lines 14-15; Pg. 18, Lines 9-11), it would have motivated artisans in the field to look for further suspension aid to improve suspending active ingredients and improve fertilizer compatibility. Chen provides the method of using sodium naphthalenesulfonate formaldehyde condensate as suspension aid for fertilizer, and specifies that sodium naphthalenesulfonate formaldehyde condensate and polymethacrylic acid added at the same time can achieve both adsorption and dispersibility, and can adsorb large particles, keep the particles in a suspended state, and promote dissolution [0035]. Further, because Chen’s formulation shares mutual functional ingredients with Xu’s composition, e.g., agrochemical active ingredient, polymethacrylic acid, thickeners, artisans in the field would be motivated to further test polymethacrylic polymers with naphthalenesulfonate formaldehyde condensate to stabilize the active agrochemical suspension and test compatibility and stability with fertilizer as the routine practice Xu has been teaching. Chen’s teaching would have provided reasonable expectation of success to implement this sodium naphthalenesulfonate formaldehyde for improvement of the composition. This renders obviousness as “use of known technique to improve similar devices (methods, or products) in the same way” or as “applying a known technique to a known device (method, or product) ready for improvement to yield predictable results”. See MPEP §2143. (I)(C) and (I)(D). Moreover, It is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use (MPEP §2144.07). See Sinclair &Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945).
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP §2144.05(I) states that “A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art.” See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). For this instance, all the weight amounts overlap with those in prior art as exhibited above.
Furthermore, “[i]t would have been prima facie obvious for one of ordinary skill in the art to optimize additive amount through nothing more than “routine experimentation,” because of a reasonable expectation of success resulting from the optimization for desirable features of intended use of the composition (MPEP §2144.05 (II)). See Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382; In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Xu et al. (WO2019072602, published on 04/18/2019, filed on 10/01/2018 or earlier, IDS of 04/26/2023) and Chen et al. (CN104163708, 11/26/2014, IDS of 04/26/2023), as applied to claims 1-2 and 4-14 above, further in view of Tsuji et al. (JP2002363246, 12/18/2002, machine translated copy uploaded, PTO-892)
Combined teachings of Xu and Chen discloses an agrochemical suspension composition comprising an agrochemical active ingredient, a homopolymer polyacrylic acid with molecular weight at least 100,000 Da, a thickener, and naphthalenesulfonate formaldehyde condensate present at 0.05 - 0.8 % of the total amount of the suspension.
Both Xu and Chen do not teach the polymer is end-capped with 2-mercaptoethanol as recited in instant claim 3.
Tsuji teaches a polyurethane-based polymer having excellent oil resistance, weather resistance, light resistance, heat resistance, hot water resistance, hydrolysis resistance, strength and chemical resistance, and capable of being readily and economically produced [Overview]. Tsuji teaches that the polymer is obtained by polymerization comprising a vinyl polymer having a mercaptoethanol group at each end of a molecular [Claim 1]. Tsuji specifies that the vinyl monomer can include methacrylic acids [0065, bottom], and this polymer of the molecular weight of the vinyl polymer having mercapto groups at each end of the molecular chain can be a homopolymer or a copolymer [0086], and it has molecular weight between 500-1,000,000 range [0025, 0087]. Thus, Tsuji teaches the methacrylic acid homopolymers with molecular weight between 500-1,000,000 can be end-capped with mercaptoethanol, corresponding to instant claim 3.
Tsuji points out that when the monomer is subjected to emulsion polymerization or microsuspension polymerization, examples of the emulsifier used include, but are not limited to, anionic
surfactants such as sodium naphthalene sulfonate formalin condensate (a component corresponding to instant claim 1), ammonium alkylsulfate (can be used as fertilizer), and many others [0073], and when the monomers are subjected to suspension polymerization, dispersants like methyl cellulose, carboxymethyl cellulose (as polysaccharides and polyglycosides), and emulsifiers can be used in the reaction [0074].
It would have been prima facie obvious for one with ordinary skills in the art prior to the filing date to incorporate the vinyl polymer of end-capped with mercaptoethanol taught by Tsuji into the agrochemical suspension composition taught by Xu and Chen to arrive at current invention. Because Tsuji teaches the polymerization process comprising components, e.g., methacrylic acid, naphthalenesulfonate formaldehyde condensate, polyglycosides, that are shared in Xu and Chen’s composition, and Tsuji lists many advantages of final polymer product resulted from using this mercapto-capped vinyl polymer in the polymerization process, such as excellent oil resistance, weather resistance, light resistance, heat resistance, hot water resistance, hydrolysis resistance, strength and chemical resistance, and capable of being readily and economically produced [Overview], it would motivate scientists to implement such feature into a polymer component in composition for reasonable expectation of success. This renders as “applying a known technique to a known device (method, or product) ready for improvement to yield predictable results”. See MPEP §2143. (I)(C) and (I)(D). Moreover, It is prima facie obvious to select a known material for incorporation into a
composition, based on its recognized suitability for its intended use (MPEP §2144.07). See Sinclair &
Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945).
Response to Arguments
Applicant’s remarks/arguments filed on 01/16/2026 have been fully considered, but they are not persuasive.
Applicant asserts that each of Xu and Chen reference does not teach all claimed element.
The claims are rejected based on combined teachings of Xu and Chen, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Because "[T]he test for obviousness is what the combined teachings of the references would have suggested to [a PHOSITA]." In re Mouttet, 686 F.3d 1322, 1333, 103 USPQ2d 1219, 1226 (Fed. Cir. 2012).
Applicant argued that there is no teaching or suggesting from prior art Xu to include naphthalenesulfonate formaldehyde condensate from Chen in the formulation.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the reference Chen with Xu, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Xu tests suspension stability and fertilizer compatibility in great detail and shows results of most of the formulations have instable phase separation or fertilizer instability, and that would motivate artisans in the field to explore alternative and other components. As presented in office action above and copied below the reasoning of the prior art combination for reference.
Xu tests and shows results on storage stability and fertilizer compatibility in many examples (Pg. 17-20), and many formulations show storage phase separation and fertilizer incompatibility, although the combinations of polymer P9 and P10 as polyacrylic polymer with Mw at least 100,000 Da (pg. 14, Table) in combination with other components show reasonably good results (Pg. 17, Lines 14-15; Pg. 18, Lines 9-11), it would have motivated artisans in the field to look for further suspension aid to improve suspending active ingredients and improve fertilizer compatibility. Chen provides the method of using sodium naphthalenesulfonate formaldehyde condensate as suspension aid for fertilizer, and specifies that sodium naphthalenesulfonate formaldehyde condensate and polymethacrylic acid added at the same time can achieve both adsorption and dispersibility, and can adsorb large particles, keep the particles in a suspended state, and promote dissolution [0035]. Further, because Chen’s formulation shares mutual functional ingredients with Xu’s composition, e.g., agrochemical active ingredient, polymethacrylic acid, thickeners, artisans in the field would be motivated to further test polymethacrylic polymers with naphthalenesulfonate formaldehyde condensate to stabilize the active agrochemical suspension and test compatibility and stability with fertilizer as the routine practice Xu has been teaching. Chen’s teaching would have provided reasonable expectation of success to implement this sodium naphthalenesulfonate formaldehyde for improvement of the composition.
Applicant argued that Chen reference teaches 10-20 parts of naphthalenesulfonate formaldehyde condensate in the suspension agent, not the instantly claimed 0.2-0.9 wt% as recited in instant claim 1.
As presented in office action that the 10-20 parts of the naphthalenesulfonate formaldehyde condensate is in the dry suspension aid, and the suspension aid is mixed directly with the fertilizer, and then diluted in an amount of 0.5-4.0 % in water as suspension. Applicant is brought to attention of the most relevant paragraphs in the office action as presented and copied below, The final concentration of the component is in the amount range overlapping with the instantly claimed ranges.
Chen teaches a water-soluble fertilizer suspension aid comprising sodium naphthalenesulfonate formaldehyde condensate (10-20 parts), polymethacrylic acid (5-10 parts), polysaccharide gum (30-50 parts), xanthan gum (5-10 parts), stabilizer (5-10 parts), chelating agent (5-10 parts) (e.g., [0013-0020]; [0030]; Claim 1) and the mixture is dried to obtain as the suspension aid (e.g., [0030]). This dry suspension aid is mixed directly with fertilizer raw materials, so that the suspension aid is dispersed around the fertilizer raw materials, and then mix with other nutrients of this suspension aid and fertilizer raw materials at the amount of 0.5% to 4% or dissolve it at the amount of 0.5% to 4% in water and spray (e.g., [0033]; Claim 5). Based on the naphthalenesulfonate formaldehyde condensate (10-20 % as 10-20 parts out of 100 parts) in the aid and the final addition amount of water-soluble fertilizer raw material for suspension as 0.5-4%, the final naphthalenesulfonate formaldehyde condensate amount equals to 0.05 - 0.8 % (lowest amount as 0.5 % * 10%, highest amount as 4% * 20%) (overlapping with range from 0.2 to 0.9 % in instant claim 1, or 0.4 to 0.6 % in instant claim 8).
Applicant argued about relying on Chen to arrive at the present claims involve an impermissible use of hindsight.
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). As discussed above regarding the reasoning of prior art combination based on Xu’s teaching, Xu teaches and tests the composition for stability and fertilizer compatibility, and shows many of the formulations have deficiency and provides motivation and opportunity for artisans in the field to explore additional components for stabilizing the composition and enhancing the fertilizer compatibility, while Chen explicitly teaches that the method of using sodium naphthalenesulfonate formaldehyde condensate as suspension aid for fertilizer, and specifies that sodium naphthalenesulfonate formaldehyde condensate and polymethacrylic acid added at the same time can achieve both adsorption and dispersibility, and can adsorb large particles, keep the particles in a suspended state, and promote dissolution [0035].
Applicant argued that the combined teaching of Xu and Chen fails to teach all elements of current invention, specifically the 0.2-0.9 wt% naphthalene formaldehyde condensate in the formulation.
As addressed above, Xu and Chen combined teaches the naphthalene formaldehyde amount in the formulation overlapping with instantly claimed range 0.2-0.9 wt%. As presented in office action and copied below, concentration differences do not support patentability of subject matter encompassed by the prior art unless it is critical. Even though applicant points to the beneficial features in instant specification examples of such concentration range being critical, the prior art teaches the overlapping range, and therefore, whatever critical benefits current invention have, the composition taught by combined prior art would have such inherent properties.
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP §2144.05(I) states that “A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art.” See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). For this instance, all the weight amounts overlap with those in prior art as exhibited above.
Furthermore, “[i]t would have been prima facie obvious for one of ordinary skill in the art to optimize additive amount through nothing more than “routine experimentation,” because of a reasonable expectation of success resulting from the optimization for desirable features of intended use of the composition (MPEP §2144.05 (II)). See Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382; In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969).
Applicant asserts unexpected results of current composition, and points to data showing in instant specification that the narrow range of 0.2-0.9 wt% naphthalene formaldehyde condensate provides improved stabilization of the agrochemical suspension.
Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993), and the instantly claimed ranges are taught by prior art.
Applicant argued further that Tsuji is nonanalogous art, and it does not teach methacrylic acid homopolymers and does not teach all elements of current invention.
It has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Tsuji is introduced for teaching the (meth)acrylic acid homopolymer being end-capped with 2-mercaptoethanol.
One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Because "[T]he test for obviousness is what the combined teachings of the references would have suggested to [a PHOSITA]." In re Mouttet, 686 F.3d 1322, 1333, 103 USPQ2d 1219, 1226 (Fed. Cir. 2012).
As presented in office action above and copied below for reference, Tsuji teaches methacrylic acid polymer in a homopolymer form, see the relevant paragraph in office action copied below for reference.
Tsuji teaches a polyurethane-based polymer having excellent oil resistance, weather resistance, light resistance, heat resistance, hot water resistance, hydrolysis resistance, strength and chemical resistance, and capable of being readily and economically produced [Overview]. Tsuji teaches that the polymer is obtained by polymerization comprising a vinyl polymer having a mercaptoethanol group at each end of a molecular [Claim 1]. Tsuji specifies that the vinyl monomer can include methacrylic acids [0065, bottom], and this polymer of the molecular weight of the vinyl polymer having mercapto groups at each end of the molecular chain can be a homopolymer or a copolymer [0086], and it has molecular weight between 500-1,000,000 range [0025, 0087].As presented above in the office action and copied below the most relevant paragraphs for reference. Thus, Tsuji teaches the methacrylic acid homopolymers with molecular weight between 500-1,000,000 can be end-capped with mercaptoethanol, corresponding to instant claim 3.
In conclusion, the current invention is taught by prior art. Please refer to the entire office action as presented above as a complete response to the arguments.
Conclusion
No claim is allowed.
THIS ACTION IS MADE FINAL. 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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DONGXIU ZHANG SPIERING whose telephone number is (703)756-4796. The examiner can normally be reached 7:30am-5:00pm (Except for Fridays).
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/DX.Z./ Examiner, Art Unit 1616
/SUE X LIU/ Supervisory Patent Examiner, Art Unit 1616