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 .
Response to Arguments
Examiner agrees with applicants’ arguments submitted on 7/23/2026. Applicants’ amendment after final does not incorporate any new issues and considerations as such the amendment is entered. The rejections over the prior art of record are withdrawn. New rejection is restated and finality of the office action is withdrawn. Claims 7-13 are pending.
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.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 7-9 are rejected under 35 U.S.C. 103 as being unpatentable over Kondo (JP 2005-336430) in view of Komura (JP 63-211,253 applied previously) .
With respect to claim 7 and 8, Kondo discloses process for making acrylic resins wherein monomers include phosphorus-based functionality. The phosphorous based functionality has following structure:
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Wherein: R1 and R2 are independently hydroxyl group, aliphatic group having 1-6 carbon atoms, or alkoxy group having 1-3 carbon atoms or aromatic group more specifically, phenyl and oxyphenyl. X is an aliphatic hydrocarbon group which is basically alkyl having 1-3 carbon atoms. This formula reads on instantly claimed phosphorus-based compound, wherein specification was utilized as a dictionary to learn the exact meaning as to the claimed compound D. The description of the compound meets the definition of the instant invention and specific phosphorous groups in instant [0032]. Consequently formula 1 meets the definition of phosphorous based acrylate of the instant invention.
Kondo further discloses use of additional monomer which do not contain phosphorous-based group. These compounds include monofunctional acrylic acids and esters, as well as difunctional acrylic acids and esters. In [0014] Kondo discloses use of allyl acrylate and allyl (meth)acrylate which are clearly envisaged and therefore can be selected. It should be noted that instant claim 7 is directed to a method of producing polymer comprising polymerizing compounds B, C and D, wherein by use of term comprising, additional monomers are encompassed even though they are not recited within the claim.
With respect to allyl compound, which is clearly envisaged encompasses the simplest formula which is when p=0.
Allyl acrylates are well known in the art for their use in producing acrylic which is shown in the teachings of Komura.
Komura discloses acrylic monomer having following structure:
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Komura teaches that the inventive allyl compound comprises an alkylene group having a suitable hydrophobic group and a high degree of flexibility between vinyl and methacryloyl group. This in turn improved reactivity of the allyl group because the distance between the functional groups was increased.
While the reactivity of the allyl group is increased, it is still more controllable that the monomers such as glycidyl acrylate, and eliminates risk of premature epoxy ring opening further rendering the compound more stable. Consequently, allyl methacrylates of Komura, that are already available on the market would be obvious for use as the allyl methacrylates or allyl acrylates of Kondo, and result in more predictable polymerization process.
With respect to claim 9, Kondo teaches that the content of phosphorous-based compound is 1-20 wt% by weight of the entire acrylic resin. Kondo does not specify the molar mass. Nevertheless, the obviousness analysis may “take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). For example, the analysis may “include recourse to logic, judgment, and common sense available to the person of ordinary skill that do not necessarily require explication in any reference or expert opinion.” Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009). The Patent Trial and Appeal Board has held that mixing equivalent components in a 1:1 ratio represented no more than application of the “logic, judgment, and common sense available to the person of ordinary skill” in the art. Ex parte Swanzy, Appeal 2017-004875 at 8-9.
It would have would have been prima facie obvious, using no more than ordinary creativity, logic, judgment, and common sense, to combine phosphorous bases acrylate and allyl acrylate in equal amounts (i.e. in a 1:1 ratio) based on the fact that both are disclosed in parallel as being equally suitable for use in this capacity. This 1:1 ratio falls within the claimed ratio.
Claims 10-13 are rejected under 35 U.S.C. 103 as being unpatentable over Kondo (JP 2005-336430) in view of Komura (JP 63-211,253 applied previously) .
With respect to claim 10 and 11, Kondo discloses process for making acrylic resins wherein monomers include phosphorus-based functionality. The phosphorous based functionality has following structure:
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76
162
media_image1.png
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Wherein: R1 and R2 are independently hydroxyl group, aliphatic group having 1-6 carbon atoms, or alkoxy group having 1-3 carbon atoms or aromatic group more specifically, phenyl and oxyphenyl. X is an aliphatic hydrocarbon group which is basically alkyl having 1-3 carbon atoms. This formula reads on instantly claimed phosphorus-based compound, wherein specification was utilized as a dictionary to learn the exact meaning as to the claimed compound D. The description of the compound meets the definition of the instant invention and specific phosphorous groups in instant [0032]. Consequently formula 1 meets the definition of phosphorous based acrylate of the instant invention.
Kondo further discloses use of additional monomer which do not contain phosphorous-based group. These compounds include monofunctional acrylic acids and esters, as well as difunctional acrylic acids and esters. In [0014] Kondo discloses use of allyl acrylate and allyl (meth)acrylate which are clearly envisaged and therefore can be selected. It should be noted that instant claim 7 is directed to a method of producing polymer comprising polymerizing compounds B, C and D, wherein by use of term comprising, additional monomers are encompassed even though they are not recited within the claim.
With respect to allyl compound, which is clearly envisaged encompasses the simplest formula which is when p=0.
Allyl acrylates are well known in the art for their use in producing acrylic which is shown in the teachings of Komura.
Komura discloses acrylic monomer having following structure:
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220
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Komura teaches that the inventive allyl compound comprises an alkylene group having a suitable hydrophobic group and a high degree of flexibility between vinyl and methacryloyl group. This in turn improved reactivity of the allyl group because the distance between the functional groups was increased.
While the reactivity of the allyl group is increased, it is still more controllable that the monomers such as glycidyl acrylate, and eliminates risk of premature epoxy ring opening further rendering the compound more stable. Consequently, allyl methacrylates of Komura, that are already available on the market would be obvious for use as the allyl methacrylates or allyl acrylates of Kondo, and result in more predictable polymerization process.
With respect to claim 12, Kondo teaches that the content of phosphorous-based compound is 1-20 wt% by weight of the entire acrylic resin. Kondo does not specify the molar mass. Nevertheless, the obviousness analysis may “take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). For example, the analysis may “include recourse to logic, judgment, and common sense available to the person of ordinary skill that do not necessarily require explication in any reference or expert opinion.” Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009). The Patent Trial and Appeal Board has held that mixing equivalent components in a 1:1 ratio represented no more than application of the “logic, judgment, and common sense available to the person of ordinary skill” in the art. Ex parte Swanzy, Appeal 2017-004875 at 8-9.
It would have would have been prima facie obvious, using no more than ordinary creativity, logic, judgment, and common sense, to combine phosphorous bases acrylate and allyl acrylate in equal amounts (i.e. in a 1:1 ratio) based on the fact that both are disclosed in parallel as being equally suitable for use in this capacity. This 1:1 ratio falls within the claimed ratio.
With respect to claim 13, the polymerization of monomer of Kondo is achieved via radical polymerization, therefore free radical initiator is required [0016].
Conclusion
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/KATARZYNA I KOLB/Primary Examiner, Art Unit 1767 July 31, 2026
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