DETAILED ACTION
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior office action.
All outstanding objections and rejections made in the previous Office Action, and not repeated below, are hereby withdrawn.
No new grounds of rejection are set forth below. Thus, the following action is properly made final.
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 .
Claim Rejections - 35 USC § 103
Claim(s) 1-8 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2020/0115479 (herein Shibata) in view of KR 100364232 (herein Lee).
In setting forth the instant rejection, a machine translation of Lee has been relied upon, which is included with the instant action. The KR document was supplied with the IDS filed 4/27/23.
As to claims 1-2, Shibata discloses a thermoplastic resin composition (see abstract, paragraph 9 and examples) comprising:
A graft copolymer including a rubber polymer and including an aromatic vinyl based monomer unit (styrene) and a diene based unit (butadiene) with the shell comprises a (meth)acrylate unit (methyl methacrylate) and an aromatic vinyl monomer unit (styrene) grafted to the rubber referred to as graft copolymer A by Shibata. See paragraph 20-27 and examples.m)
A non-grafted polymer including (meth)acrylate monomer unit (methyl methacrylate) and an aromatic monomer unit (styrene) referred to as vinyl polymer B by Shibata. See paragraphs 56-63 and examples.
The refractive indexes of the graft copolymer and the non-grafted polymer (vinyl polymer B) is not higher than 0.01. See paragraph 66 stating that the graft component (which is identical to polymer B) has a difference within the claimed range as the rubber, thus the claimed limitation is met. Also see tables 1 and 2, wherein the refractive indexes are identical and thus within the claimed range.
The difference between Shibata and the claimed invention is that Shibata is silent on the gel content.
Lee discloses similar thermoplastic compositions comprising graft copolymers. See abstract and examples. Lee discloses that the gel content of the rubber should be 20% or less in order to improve volume and operating conditions. See page 4.
It would have been obvious at the time of the invention to have modified the rubber of Shibata with a gel content of less than 20%, including amounts within the claimed range, because one would want to improve volume and operating conditions. See page 4 of Lee.
As to claim 3, see example A-5 in paragraph 132, which utilizes a rubber with a ratio of styrene:butadiene of 10:90. Example A-6 utilizes a ratio of 25:75.
As to claim 4, the particle size controls stability. See paragraph 41. The particle size is selected to balance impact resistance and transparency and color tone. See paragraph 24. While preferring sizes not smaller than 150 nm (0.15 µm), this is a preferred embodiment. Therefore, it would have been obvious to have modified the particle size to 100 nm or below to within the claimed range as to improve transparency and color tone at the expense of impact resistance.
As to claim 5, the content of the rubber is 35 to 60 %mass (wt%). See paragraph 23. The content of a2 (meth)acrylate monomer unit is taught as 30 to 90 wt% of the monomer mixture for the grafted polymer See paragraph 28. The content of a1 (aromatic vinyl monomer) is taught as 10 to 40 wt% of the monomer mixture for the grafted polymer. See paragraph 26. Thus, the amount of (meth)acrylate monomer in the graft copolymer is deduced to be about 12 to 58.5 wt% and aromatic vinyl monomer is deduced to be about 4 to 26, which substantially overlaps the claimed range. Further, see the examples that fall within the claimed range in table 1.
As to claim 6, the content of b2 (meth)acrylate monomer unit is taught as 30 to 90 wt% of the monomer mixture for the grafted polymer See paragraph 60. The content of b1 (aromatic vinyl monomer) is taught as 10 to 40 wt% of the monomer mixture for the grafted polymer. See paragraph 58. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). Also see MPEP 2144.05 stating that when there is overlap with the claimed ranges and the prior art, a prima facie case of obviousness exists. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to select any amount within the disclosed ranges, including amounts within the scope of the instant claims.
As to claim 7, see examples in table 2 wherein the graft copolymer is taught as 25.2 wt% and the non-graft copolymer is taught as 74.8 wt% in example 1. Also note the other examples that are within the claimed range.
As to claim 8, the graft polymer comprises vinyl cyanide (acrylonitrile). See paragraph 29. The non-graft polymer comprises vinyl cyanide (acrylonitrile). See paragraph 61. Also see examples.
As to claim 10, the graft copolymer is exemplified as A-4 (table 1), which has 50 wt% rubber, 25 wt% (meth)acrylate monomer and 25 wt% aromatic vinyl monomer. In example 6, the rubber is utilizes in 25.2 wt%, thus about 12.6 wt% rubber is present. Further, in example 6, the total is about 57.5 wt% (meth)acrylate monomer and about 26.5 wt% aromatic vinyl monomer.
Claim(s) 1-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2017/0260384 (herein Choi) in view of KR 100364232 (herein Lee).
In setting forth the instant rejection, a machine translation of Lee has been relied upon, which is included with the instant action. The KR document was supplied with the IDS filed 4/27/23.
As to claims 1-2, Choi discloses a thermoplastic resin composition (see abstract, paragraph 8 and examples) comprising:
A graft copolymer comprising a rubber comprising an aromatic vinyl monomer (styrene) and a diene based unit (butadiene). See paragraph 18, 51 and examples. The shell (grafted portion) comprises (meth)acrylate monomer (methyl methacrylate) and aromatic vinyl monomer (styrene). See paragraph 33-49, 54-56 and examples.
A non-grafted polymer including (meth)acrylate monomer (methyl methacrylate) and aromatic vinyl monomer (styrene). See paragraph 33-49, 54-56 and examples.
The refractive index difference is taught as less than 0.01, preferably less than 0.005. See paragraph 8, 33 and examples.
The difference between Choi and the claimed invention is that Choi is silent on the gel content within the claimed range. While Choi exemplified a gel content outside the claimed range, these are all preferred embodiments.
Lee discloses similar thermoplastic compositions comprising graft copolymers. See abstract and examples. Lee discloses that the gel content of the rubber should be 20% or less in order to improve volume and operating conditions. See page 4.
It would have been obvious at the time of the invention to have modified the rubber of Choi with a gel content of less than 20%, including amounts within the claimed range, because one would want to improve volume and operating conditions. See page 4 of Lee.
As to claim 3, Choi is silent on the ratio of aromatic vinyl monomer (styrene) to diene monomer (butadiene). However, paragraph 33 gives the refractive index of butadiene of 1.518 and styrene of 1.59. Further, paragraph 51 states that the rubber is butadiene-styrene copolymer, without stating the amounts. Nevertheless, Choi generally embraces optimizing the refractive index and given the difference of refractive index of butadiene and styrene, it would have been obvious at the time of the invention to have modified the amounts of styrene and butadiene for the rubber and thereby arrive at the claimed amounts because one would want to control the refractive index.
As to claim 4, the particle size is taught as 80 to 400 nm. See paragraph 52. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). Also see MPEP 2144.05 stating that when there is overlap with the claimed ranges and the prior art, a prima facie case of obviousness exists. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to select any amount within the disclosed ranges, including amounts within the scope of the instant claims.
As to claim 5, the amounts taught in paragraph 13 and 43 read on the claimed ranges. Also see examples.
As to claim 6, see paragraph 49 and examples.
As to claim 7, see paragraph 43 teaching amounts of 10 to 90 wt% for each component. Also see examples.
As to claim 8, vinyl cyanide (vinyl cyan) is taught in both. See paragraph 43, 49 and examples.
As to claim 9, Choi teaches that the difference between the refractive index of the graft and non-graft is less than 0.005. See paragraph 50. Choi gives no limits to the refractive index, however gives an example of a non-graft copolymer with a refractive index of 1.542. See table 1. Therefore, it would have been obvious at the time of the invention to match the non-refractive index (1.542) of the non-graft polymer to the graft polymer and arrive at the claimed invention. Moreover, while Choi does not disclose the refractive index to the claimed significant digits, it is clear from Choi that refractive indexes of 1.516 to 1.542 are suitable/possible. Therefore, one would have been motivated to utilize amounts within these boundaries.
As to claim 10, the amounts taught in paragraphs 24-26 read on the claimed ranges.
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive.
Applicant argues (in points 1) and 2)) that the gel content is not rendered obvious because one would look to Lee’s experimental data, which suggests that the content of the rubber polymer not the gel content that affects gloss.
In response, First, this does not negate from Lee which teaches that too high of a gel content leads to an “increase in volume when dissolved in the monomer mixture, making working conditions difficult.” The motivation (improved workability) to modify the gel content need not be the same reasons as applicant (gloss). Secondly, the data isn’t clear. No tests comparing higher gel contents are shown. Nevertheless as elucidated above, one would conclude from Lee that one would seek to reduce the gel content in order to improve workability.
Applicant argues (point 3)) that tables 1 and 2 of the originally filed specification show “superior” results.
In response, the examiner disagrees that nonobviousness has been shown.
First, to be probative of nonobviousness results must be unexpected not just different. In re Merck & Co. 800 F.2d 1091, 1098, 231 PQ 375, 280 (Fed. Cir. 1986). Also see MPEP 716.02, first paragraph. Also see MPEP 716.02(a) stating that the evidence must show unexpected results. In the instant case, applicant has not demonstrated how the results are unexpected or surprising. In the instant case, The data is simplified and reproduced below:
Example
1
2
3
4
5
CE1
CE2
CE3
CE4
CE5
Gel Content (%)
0
0
1
1
5
0
15
65
90
15
Transmittance (%)
81
71
85
84
85
61
89
90
91
90
Gloss (45o)
29
26
33
31
32
23
67
136
145
65
Gloss (60o)
30
29
35
34
34
25
68
133
141
68
Impact
11
11
10
19
18
10
5
11
4
6
However, as can be seen, the data shows that higher gel contents (E.g. 65 in CE3) yields the same impact as the working examples. Therefore, it cannot be concluded that the results for impact are unexpectedly better. Same for the transmittance, wherein the results are about the same. As to the gloss, it is noted that gloss increases as the gel content increase. However, it is unclear how this trend is unexpected.
Moreover, it is known in the art that “if the gel content is low, the swelling is more and the gloss is lowered. If the gel content is high, the swelling is less and the glossiness is increased, but the impact strength is lowered.” See the second to last paragraph on page 2 of KR-100540507 (herein Park). Therefore, one would expect lowering of the gloss as the gel content is lowered and vice versa. Similarly, with the impact, one would expect an increase in the impact with an increase with the gel content. In other words, the trend in the results is exactly what would be predicted from the prior art.
Lastly, MPEP 716.02(d) states that the results must be commensurate in scope with the claimed invention. Specifically, with respect to claimed ranges, "applicant should compare a sufficient number of tests both inside and outside the claimed range to show criticality of the claimed range." In the instant case, applicant is attempting to argue that the range of 0 to 10 wt% has improved results, while only showing points up to 5 within and 15 outside. Thus, only showing half the range.
Conclusion
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 MARK S KAUCHER whose telephone number is (571)270-7340. The examiner can normally be reached M-F 8-6 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie Lanee Reuther can be reached at (571) 270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARK S KAUCHER/Primary Examiner, Art Unit 1764