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 .
Election/Restrictions
Applicant's election with traverse of Group I (claims 1-4 and 6-11) in the reply filed on 12/3/2025 is acknowledged. The traversal is on the ground(s) that restriction is only proper for restricted groups which are independent or patentably distinct and would also pose a serious burden placed on the examiner. This is not found persuasive because the standard of restriction in 371 applications is about lack of unity and not whether the restricted groups are patentably distinct or pose serious search burdens. Applicant also argues that the lack of unity is improper because 37 CFR 1.475( b) states that a product and process of making said product have unity of invention. The examiner appreciates the citation, however, an exception is made for restricted groups (including product and process of making said product) when the shared technical feature does not make a contribution over the prior art. As set forth below in the 103 rejection over Hayes and Dodge, the ionomer resin of Group I does not include a special technical feature.
The requirement is still deemed proper and is therefore made FINAL.
Claim 5 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 12/3/2025.
Claim Objections
Claims 8 and 11 are objected to because there is no transitional phrase before “relaxation modulus” and it is not immediately clear that it is the resin sheet that has the relaxation modulus. It is suggested that “wherein” is replaced with --having--.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
Claim 3 is rejected under 35 U.S.C. 112(d) 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, on which claim 3 depends, limits the total amount of units A, B, and C is 6-10 mol % which does not allow for an amount of unit alone to be up to 10.0 mol %. 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.
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 of this title, 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 1-4 and 6-12 rejected under 35 U.S.C. 103 as being unpatentable over Hayes (US 2009/0151772) in view of Dodge (US 10,160,891).
With respect to claims 1-4, 6, 7, 9, 10, and 12, Hayes discloses a terionomer composition for use in glass laminates and sheets (paragraph 0063-0064). Hayes exemplifies (paragraph 0131) an adhesive copolymer derived from ethylene (claimed unit D), 2 wt % n-butylacrylate (claimed unit A), methacrylic acid that is 40% neutralized with zinc (claimed units B and C) which provides for 11.4 wt % carboxylic acid and 7.6 wt % zinc neutralized carboxylic acid. The amounts in wt % are converted to mol % (using molecular weight (MW) of butyl acrylate of 128, MW methacrylic acid of 86.09, MW of zinc-neutralized methacrylic acid of 235, and MW of ethylene of 28) to be 0.5 mol % butyl acrylate (unit A), 4.4 mol % methacrylic acid (unit B), 1.1 mol % zinc-neutralized methacrylic acid, and 94 mol % ethylene.
Hayes does not explicitly disclose the molecular weight of the copolymer, however, it teaches that the copolymer has a melt index of 2.5 g/10 min (paragraph 0131) which is the same as the ones used by Applicant in the inventive examples of the specification as originally filed (Table 2). Because melt index is closely related to MW, it would have been obvious to one of ordinary skill in the art to utilize MW that overlaps with the claimed average MW of 8,000-14,000 to meet the same MI.
Hayes also does not explicitly disclose the mass amounts of components having MW of 2,500 g/mol or less, however, it is the examiner’s position that the amount of relatively low molecular weight portions are result effective variables because changing them will clearly affect the type of product obtained. See MPEP § 2144.05 (B). Case law holds that “discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.” See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Evidence to support the examiner’s position is found in Dodge which discloses an acrylic pressure sensitive adhesive which comprises an ethylene-acrylic acid copolymer (abstract) and teaches that adhesive composition typically have a high molecular weight acrylic polymer for elasticity, cohesion, and resistance to shear but also low molecular weight tackifiers to improve adhesion (col. 1, lines 30-37).
In view of this, it would have been obvious to one of ordinary skill in the art to utilize appropriate amounts of polymer having molecular weight of up to 2500 g/mol, including those within the scope of the present claims, so as to produce desired end results, i.e., desired balance of elasticity, cohesion, and resistance and adhesion.
With respect to claims 8 and 11, Hayes fails to disclose the relaxation modulus after 2.6 x 106.
Even so, Dodge teaches that the molecular weight distribution can be adjusted to control for the balance of elasticity inter alia and adhesion (col. 1, lines 30-37).
Given that Hayes suggests an ionomer having number average molecular weight that overlaps with the caimed range and further given that elasticity is a property directly related to relaxation modulus (i.e., the ability of a material to return to original shape after deformation) as taught by Dodge, it would have been obvious to one of ordinary skill in the art obtain a resin sheet comprising an ionomer resin which has a relaxation modulus of 0.25 MPa or more.
Conclusion
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/Vickey Nerangis/
Primary Examiner, Art Unit 1763
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