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 .
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.
Specification
The disclosure is objected to because of the following informalities: ¶[0098]-¶[0103] of the as-filed specification disclose examples which do not match the examples of Table 1. For instance, Example 1 ¶[0098] discloses amounts styrene, ethylene glycol dimethacrylate and pentaerythritol tetrakis thioglycolate which do not match the amounts in Table 1. Most importantly, the Tg of methyl methacrylate is 105 oC which means that Example 1 is not an inventive example as claimed. No other monomers are suggested to be used in Example 1. Comparative Example 3 has the same issues as above. The amounts of monomers do not match Table 1 and Table 1 discloses the no thiol compound is used but Comparative Example 3’s text discloses it is used. The lack of proper disclosure of the methodology used in the comparative and inventive examples prevents proper analysis of any alleged unexpected results.
The specification amendment filed May 24, 2023 does not address any of the above issues.
Appropriate correction is required.
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 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 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over Nishiumi (WO2019182113; reference made to English equivalent U.S. 20200399413) in view of Sasata (U.S. 20160237230).
Nishiumi exemplifies seed polymerizations of styrene, methyl methylacrylate (MMA) methyl acrylate (MA) and pentaerythritol tetrakis thioglycolate in Example 5. Further, the only composition which has methyl acrylate (Tg of 10 oC see as-filed specification ¶[0021] ) also has MMA (Tg = 105 oC as evidenced by Table 1 of the as-filed specification). The polymer of only MMA and MA of Example 5 would have a Tg (according to the Fox equation related the weighted average of Tgs based on the amount of each monomer present) of almost that of MMA (105 oC) due to the very low amount of MA present. This does not meet the Tg limitation of Claim 1.
Sasata, working in the field of optical films of acrylates similar to Applicant, teaches the use of n-butyl acrylate and methyl acrylate as monomers for acrylate copolymers which improve their thermal decomposition resistance. ¶[0042] n-butyl acrylate is particularly preferred.
Nishiumi and Applicant are drawn to acrylate polymers with particular thermal decomposition properties (see Tables in both Nishiumi and the as-filed specification) making the above teaching of Sasata relevant to the problem faced by Applicant and/or to one of ordinary skill in art practicing Nishiumi.
Sasata also teaches styrenes, for instance, may be used in the acrylic copolymers of Sasata. (¶[0040]).
It would have been obvious to a person having ordinary skill in the art to practice the invention of Nishiumi, in particular that of Example 5, by substituting the MMA and MA with n-butyl acrylate for the advantage of improving the thermal decomposition resistance of the fine particles of Nishiumi as taught by Sasata in ¶[0040]. One of ordinary skill in the art is motivated to choose n-butyl acrylate as Sasata teaches it is particularly preferred.
Nishiumi specifically teaches the monofunctional (meth)acrylic monomer may be n-butyl acrylate in ¶[0088].
Therefore, the resulting copolymer of Nishiumi and Sasata motivated above comprises:
Styrene which reads over the cyclic monomer (A) of Claim 1.
n-butyl acrylate reads over the monofunctional acrylate (B) of Claim 1.
Ethylene glycol dimethyacrylate reads overt the multifunctional acrylate (C) of Claim 1 and also Claim 8.
Pentaerythritol tetrakis thioglycolate reads over the thiol unit (D) of Claim 1.
These four monomers are reacted together under the same or similar initiators as Applicant uses and, therefore, while Nishiumi does not teach the thiol compound (taught as antioxidant) is part of the copolymer, one of ordinary skill in the art is reasonably suggested it must be part of the copolymer as it is present during the polymerization using similar initiators to Applicant’s example which have this thiol unit in the resulting copolymer. Nishiumi teaches these copolymers as being fine particles. (See abstract and examples) This reads over the copolymer and fine particle limitation of Claim 1.
Finally, the as-filed specification discloses the Tg of n-butyl acrylate is -55 oC ¶[0021], therefore, the polymer of n-butyl acrylate has a Tg that is -55 oC as there are no other B monomers present in the above motivated combination. This reads over the Tg limitation of Claim 1.
Nishiumi exemplifies seed polymerization which reads over Claim 2.
With respect to Claims 3-6, Nishiumi is silent on the thermal decomposition temp as recited, residual styrene (cyclic VOC), surfactant amount and sulfur amount as recited by these claims. However, Nishiumi teaches all the monomers used with initiators substantially similar to Examples 1-3 of the as-filed specification including the use of seed polymerizations in making the fine particles and in which the Tg of the monofunctional acrylate is less than 50 oC. Example 1-3 all have the above common features and all have the recited properties. Therefore, based on the above evidence, one of ordinary skill in the art is reasonably suggested, when tested accordingly, the limitations of Claim 2, Claim 3, Claim 4, Claim 5 and Claim 6 must be meet.
Number average particle diameters exemplified by Nishiumi meet the limitations of Claim 7 but is in terms of number average and not volume average. As the sizes are in the same range as recited and there is no evidence there is a substantial difference in the number vs. volume average measurements, one of ordinary skill in the art is reasonably suggested the exemplified particle sizes, when tested accordingly, must be in the claimed range of Claim 7.
The amount of thiol compound in Nishiumi’s Example 5, when scaled up to 100 parts of A, B, and C is 0.44 / 30.76 = x /100 solve for x = 1.43 which meets the range of Claim 9.
Nishiumi teaches spray drying to create an aggregate of the fine particles in ¶[0169] which reads over Claim 10.
Claims 11-12 recite the fine particles claimed as anti-blocking agents in a resin film. This is a future intended use. Nishiumi teaches the fine particles are used in a polyimide film. (See examples). This reads over the claimed particles of Claim 11 as the claimed used is a future intended use. There is no evidence to reasonably suggest the particles of Nishiumi are not capable of anti-blocking effects. Further, with respect to Claim 12, the resin film is not positively recited as the preamble is a particle not a film. As such, Nishiumi still reads over Claim 12 as there is evidence the particles of Nishiumi cannot be used with cyclic olefin resin film.
Applicant may rewrite Claims 11 and 12 to positively recite a film rather than simply particles in a future intended use. For instance, the claim does not recite, A film comprising a resin and an anti-blocking agent comprising the fine particles of Claim 1.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER M RODD whose telephone number is (571)270-1299. The examiner can normally be reached 7 am - 3:30 pm (Pacific).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached at (571) 272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Christopher M Rodd/Primary Examiner, Art Unit 1766