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 without traverse of Group I (claims 1-13) in the reply filed on 03/11/2026 is acknowledged.
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.
Claims 1-13 are 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. The claims recite, “a graft copolymer of a core-shell type,” the addition of the word “type” extends the scope of the claims so as to render them indefinite since it is unclear what “type” is intended to convey. The addition of the word “type” to the otherwise definite expression renders the definite expression indefinite by extending its scope. Ex parte Copenhaver, 109 USPQ 118 (Bd. App. 1955).
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 non- obviousness.
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 1-4 and 7-10 are rejected under 35 U.S.C. 103 as being unpatentable over KR 2020-0060928A (hereinafter, JEONG).
Regarding claims 1-4, JEONG teaches a core-shell copolymer comprising a core and shell surrounding the core.
The core comprises a repeating unit derived from a conjugated diene-based monomer. The conjugated diene-based monomer include 1,3-butadiene, 2,3-dimethyl-1,3-butadiene, piperylene, 3-butyl-1,3-octadiene, isoprene or 2-phenyl-1,3-butadiene. The average diameter of the core may be 180 nm to 270 nm of an average particle diameter. The content of the core is 50 parts by weight to 90 parts by weight based on 100 parts by weight of the core-shell copolymer (Abstract; pp. 2-3) (when converted from parts by weight to weight% is 50 wt% to 90 wt%).
The shell comprises a repeating unit derived from an alkyl(meth)acrylate monomer and a repeating unit derived from two or more vinyl aromatic monomers, and has 15,000 to 60,000 g/mol of a weight average molecular weight (Abstract; p. 3).
The shell is grafted to the core of the core-shell copolymer (pp. 2 and 6).
However, JEONG does not explicitly teach a preferred embodiment of the graft copolymer comprises the core in an amount of 72 wt% to 83 wt% relative to a total weight of the graft copolymer, wherein the core has an average particle diameter of 250 nm or more, and wherein the shell has a weight average molecular weight of 40,000 g/mol or less.
As discussed above in paragraph 9 above, JEONG teaches the core the average diameter of the core may be 180 nm to 270 nm of an average particle diameter and the content of the core is 50 parts by weight to 90 parts by weight based on 100 parts by weight of the core-shell copolymer (Abstract; pp. 2-3) (when converted from parts by weight to weight% is 50 wt% to 90 wt%). The shell has 15,000 to 60,000 g/mol of a weight average molecular weight (Abstract; p. 3). It would have been obvious to one of ordinary skill in the art at the time the invention was made to select the portion of the prior art's range which is within the range of applicant's claims because it has been held to be obvious to select a value in a known range by optimization for the best results. As to optimization results, a patent will not be granted based upon the optimization of result effective variables when the optimization is obtained through routine experimentation unless there is a showing of unexpected results which properly rebuts the prima facie case of obviousness. See In re Boesch, 627 F.2d 272,276,205 USPQ 215,219 (CCPA 1980). See also In re Woodruff 919 F.2d 1575, 1578,16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990), and In re AIIer, 220 F.2d 454,456,105 USPQ 233,235 (CCPA 1955).
Regarding claim 7, JEONG teaches the core-shell copolymer comprises the content of the core is 50 parts by weight to 90 parts by weight based on 100 parts by weight of the core-shell copolymer (Abstract; pp. 2-3) (when converted from parts by weight to weight% is 50 wt% to 90 wt%). The position is taken that the amount of shell is 10 parts to 50 parts by weight based on 100 parts by weight of the core-shell copolymer (when converted from parts by weight to weight% is 10 wt% to 50 wt%).
It would have been obvious to one of ordinary skill in the art at the time the invention was made to select the portion of the prior art's range which is within the range of applicant's claims because it has been held to be obvious to select a value in a known range by optimization for the best results. As to optimization results, a patent will not be granted based upon the optimization of result effective variables when the optimization is obtained through routine experimentation unless there is a showing of unexpected results which properly rebuts the prima facie case of obviousness. See In re Boesch, 627 F.2d 272,276,205 USPQ 215,219 (CCPA 1980). See also In re Woodruff 919 F.2d 1575, 1578,16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990), and In re AIIer, 220 F.2d 454,456,105 USPQ 233,235 (CCPA 1955).
Regarding claims 8 and 10, JEONG teaches the core-shell copolymer comprises a core having an average diameter of the core may be 180 nm to 270 nm (p. 3) (which is within the claimed range).
Regarding claim 9, JEONG teaches the core-shell copolymer wherein the shell comprises has 15,000 to 60,000 g/mol of a weight average molecular weight (Abstract; p. 3) (which is within the claimed range). It would have been obvious to one of ordinary skill in the art at the time the invention was made to select the portion of the prior art's range which is within the range of applicant's claims because it has been held to be obvious to select a value in a known range by optimization for the best results. As to optimization results, a patent will not be granted based upon the optimization of result effective variables when the optimization is obtained through routine experimentation unless there is a showing of unexpected results which properly rebuts the prima facie case of obviousness. See In re Boesch, 627 F.2d 272,276,205 USPQ 215,219 (CCPA 1980). See also In re Woodruff 919 F.2d 1575, 1578,16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990), and In re AIIer, 220 F.2d 454,456,105 USPQ 233,235 (CCPA 1955).
Claims 5 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over KR 2020-0060928A (hereinafter, JEONG) in view of TANAKA (U.S. Publication No. 2019/0319236, hereinafter TANAKA).
Regarding claims 5 and 6, JEONG substantially teaches the present invention, see paragraphs 9-11. More specifically, JEONG teaches the shell comprises a repeating unit derived from an alkyl(meth)acrylate monomer comprising alkyl group having 1 to 8 carbon atoms (p. 3).
However, JEONG does not teach a crosslinkable monomer.
In the same field of endeavor of a particulate polymer having a core-shell structure, TANAKA teaches the shell portion include a crosslinkable monomer unit including allyl methacrylate [0058, 0070, and 0177]. The portion constituted by the crosslinkable monomer unit in the polymer of the shell portion is 0.05 mass% or more [0071].
It would have been obvious to a person of ordinary skill in the art to have provided the crosslinkable monomer of TANAKA with the core-shell copolymer of JEONG for the benefit of its art recognized function for core-shell copolymers (i.e., improving properties/obtaining desired characteristics). It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose, see In re Kerkhoven, 626 F.2d 846,850,205 USPQ 1069, 1072 (CCPA 1980).
Double Patenting
The non-statutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A non-statutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on non-statutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a non-statutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based e-Terminal Disclaimer may be filled out completely online using web-screens. An e-Terminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about e-Terminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-13 are provisionally rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-11 of co-pending Application No. 18/279, 173 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because of the reasons given below.
U.S. Application No. ‘173 claims a graft-copolymer of a core-shell comprising a core comprising a rubbery polymer and a shell formed by graft polymerizing as graft monomer to the rubbery polymer, wherein the rubbery polymer comprises a conjugated diene monomer unit, the graft copolymer comprises the core in 75 wt% to 83 wt%, the core has an average particle diameter of 250 nm to 400 nm.
The scope of the present claims encompass the scope of the claims in US application ‘173.
This is a provisional non-statutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEVE V HALL whose telephone number is (571)270-7738. The examiner can normally be reached M-F, 9 am-5 pm, EST.
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DEVE V. HALL
Primary Examiner
Art Unit 1763
/DEVE V HALL/Primary Examiner, Art Unit 1763
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