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
Examiner acknowledges applicants election of group I, claims 30-45 with traverse. The traversal states that search of group 1 would also involve claims of group II-IV as such multiple searches are not needed.
The examiner disagrees. Specifically, claims of Group II are directed to a method of making the multilayered particle, which includes making two different polymers in two separate reactors then forming solution from the second polymer and adding the second polymer to the first polymer in presence of free radical initiator. The process therefore requires search that would encompass making two separate solution. As it can be seen from the prior art of record the same polymer can be made in the same reactor in two stages, which is different from the process of Group II.
Group III is directed to a composition comprising multilayered particle in a dispersion wherein the composition further comprises additives that are not required for the multistage particles, and have specific use as a coating composition vs. grinding aid.
Group IV is directed to a multilayered particle wherein the second layer is derived from polyurethane. Particle of Group IV is chemically distinct from the particle of Group I which has second layer made from ethylenically unsaturated monomer wherein at least one is ethylenically unsaturated acid. While unsaturated monomer can be utilized to make polyurethanes, they are not the only monomers that have to be utilized and isocyanates are not encompassed by the scope of instant claim 1, because they do not contain isocyanates. Polyol is also missing from the scope of the components used to make particle of claim 1.
Consequently, the restriction is deemed as proper and final.
Claim Interpretation
Claims as presented in the preliminary amendment dated 3/21/2023 are interpreted in following manner:
With respect to claim 30, statement “wherein the second layer is prepared by a high temperature polymerization process” is a process step in a claim directed to the product wherein patentable weight is given to the product and not to the process by which it is made. Additionally, the recitation of Mn can be met in many ways. For example if the polymer of the prior art comprises the same monomers utilized in the same amounts (dependent claims and specification can be consulted) because the molecular weight depends on the type of each monomer and its content. Additionally, if the same type of monomer is utilized n the same amount and the property reported in glass transition temperature, such also reflects the proper molecular weight, because in similar manner, glass transition temperature also depends on specific monomers and their content.
With respect to claim 31, the claim fails to indicate which copolymer the monomers listed belong. Consequently, claim 31 is viewed as listing monomers for first polymer or second polymer or the combination of the two.
With respect to claim 32, the hydrophilicity of the polymer will be met with the second polymer has the same content of the same monomers which includes ethylenically unsaturated acids and esters as depicted in the dependent claims.
Term “styrene” is viewed as a genus which includes various species including substituted or modified styrene.
Claim Objections
Claims 30, 31, 34, 41, 43 are objected to because of the following informalities: The applicants in their claims disclose phosphorous-based monomers and phosphorous based acid which confuses scope of the claims. In claim 30 applicants claim phosphorous based monomer, in claim 31 the monomer appears to be phosphorous based acid, then in claim 34 the compounds are phosphorous based acids and claim 43 equates phosphorous acid and phosphorous monomer as equivalent. Applicants are requested to clarify if the compounds are viewed as interchangeable, or if the claims should include limitation that distinguishes between the two. 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.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], 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.
Claims 31, 33 rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, 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.
With respect to claim 31, the claim fails to further narrow the embodiments of instant claim 30. Specifically claim 31 is directed to monomers which are based on acrylates, sulfur acid monomers and phosphorous acid monomers.
Independent claim 30 recites all monomers to be ethylenically unsaturated, wherein term “monomer” in claim 31 does not require phosphorous acid to be ethylenically saturated. Additionally, claim 31 recites sulfur acid monomers which are outside of the scope of instant claim 30. Claim 30 does not include sulfur based monomer, additionally claim 31 enables sulfur acid monomers to not have ethylenic unsaturation.
With respect to claim 33, independent claim 1 are limited to the ethylenically monomers that are based on acrylates. However, ethylenic unsaturation is consumed during the polymerization process. Based on the monomers enabled by the instant invention monomers are based on vinyl compounds and acrylates. While compounds such as styrene which is a vinyl compound, the double bonds form aromatic moiety. Examiner requests clarification if applicants require actual aromatic moiety or if there is another monomer that is not recited in the instant claims and/or specification to meet additional ethylenic unsaturation. Currently claim 33 fails to narrow scope of claim 1, since the disclosed monomers once polymerized no longer have ethylenic saturation, therefore additional ethylenic unsaturation is outside of the scope of independent claim 30.
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, 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 30-45 are rejected under 35 U.S.C. 103 as being unpatentable over Harris (WO 2015/096389).
With respect to claim 30, 37 and 38, Harris discloses multistage particle comprising first and second layer (Abstract). The first layer comprises ethylenically unsaturated monomer, phosphorous containing monomer and acetoacetoxy monomer (crosslinking monomer). Second layer comprises ethylenically unsaturated monomer which include carboxylic acid monomers (p. 16, l. 6), wherein carboxylic acid monomers are defined on p. 12, l. 8-13) which are ethylenically unsaturated monomers.
While Harris does not disclose the Mn value for either one of the polymers, the monomers as they will be presented below are the same monomers as those of the instant invention with overlapping content. Additionally, glass transition temperature, which results from the chemical make up of each polymer is reported to be in a range of -50oC to 30oC for the first polymer and 60oC to 120oC for the second polymer (page 5), which lie in the middle of the ranges of the claimed first and second polymer as depicted in instant claims 37 and 38 as measured by DSC according to ASTM D3418 (p. 6, l. 24), wherein the difference between claims version 15 and version 12 used by Harris lies in clarifications only and both methods include polymers in their granular form, DSC as the method and normal operating temperature range from the cryogenic region to 600oC (see www.Astm.org for side by side comparison).
Consistent with claim interpretation, the first and second polymer meet the molecular weight requirement of independent claim 30.
With respect to claims 31 and 33, first it should be noted that on p. 3, l. 21-22, Harris fines (meth)acrylate monomers as acrylates, methacrylates, diacrylates, dimethacrylates. Consistent with his definition, monomers of Harris are selected from methyl(meth)acrylate, 2-ethylhexyl(meth)acrylate, n-butyl acrylate, ethyl acrylates, i-butyl acrylate, octyl(meth)acrylate, 2-ethylhexyl acrylate (p. 7, l. 13-19), phosphorus monomers (p. 8, l. 18 - p. 9, l. 3) isobornyl (meth)acrylate, cyclohexyl (meth)acrylate (p. 11), methacrylic acid, itaconic acid (p. 12), styrene (p. 13). See also p. 14 and 15, since claim 31 is viewed as reciting monomers that can be utilized in either in first polymer, second polymer or both). Sulfonic acid monomers (p. 14). Unless clarified (see 112(d) above) ethylenic unsaturation on the styrene aromatic ring meets the limitation of instant claim 33.
With respect to claim 34, the first copolymer comprises 15- 85% of soft ethylenically unsaturated monomer (p. 8, l.14), wherein total acrylate monomer content is 90% (claim 9), 0-5% by weight of phosphorus monomer (claim 9) wherein preferred embodiment includes content of at least 0.5% (p. 9, l. 6).
With respect to claim 35, second polymer of Harris comprises at least 90% of hard monomers (p. 15, l. 20-23) and one or more ethylenically saturated monomer that include acid monomers, phosphorous acid and the like. The acid monomers would make the balance of the second monomer.
With respect to claim 36, second polymer content is at least 10%, which overlaps with claimed range (see p. 4, l. 24).
With respect to claim 39, first polymer of Harris comprises (methacrylate monomers (claim 9) wherein (meth)acrylate monomers are defined above include methyl (meth)acrylate (see also claim 10).
With respect to claims 32 and 40, the second polymer of Harris in addition to monomers disclosed above a combination of methyl (meth)acrylate and styrene (claim 12). Consequently if the monomers of second polymer of Harris are the same as the monomers of the second polymer of the instant invention (including disclosed in this rejection carboxylic acids), is hydrophilicity will also be within the same range.
With respect to claims 41 and 42, the acid monomer of Harris in addition to those listed above include carboxylic acids, such as acrylic acid, itaconic acid, maleic acid, fumaric acid (claim 11), phosphorous based acid that include vinyl phosphonic acid (p. 8 last paragraph) and sulfonic acids (p. 14 L. 2).
With respect to claim 43, Phosphorous containing monomers in addition to those disclosed above include 2-phosphoethyl (meth)acrylate, 3-phosphoropropyl (meth)acrylate, phosphobutyl methacrylate), 3-phospho-2-hydroxypropyl methacrylate and the like (claim 11).
With respect to claim 44, the ratio of the first polymer to second polymer is in a range of at least 5:1 up to 20:1 (p. 5). Additionally if the content of the second polymer as depicted in instant claim 36 above is at least 10%, the content of the first polymer will be the balance of 90%.
With respect to claim 45, as it was mentioned in the rejection of claim 30, the first polymer comprises crosslinker. The crosslinkers include acetoacetoxy monomers such as acetoacetoxyethyl (meth)acrylate (claim 11). DAAM is also listed as suitable for use (p. 14, l. 1).
In the light of the above disclosure, it would have been obvious to one having ordinary skill in the art at the time instant invention was filed that Harris discloses claimed invention. As such one of ordinary skill in the art when practicing invention of Harris would arrive at the instant invention.
Claims 30-45 are rejected under 35 U.S.C. 103 as being unpatentable over Bohling (US 2017/0174905).
With respect to claim 30, 37, 38, 45, Bohling discloses a multistage particles comprising two stages (Abstract) as follows:
Stage 1 copolymer has glass transition temperature (Tg) in a range of -50oC to 30oC (DSC), wherein Tg the limitation of the instant claim 37 [0006]. While Bohling does not explicitly recite the ASTM method utilized to measure Tg, the heating rate of the sample is 20oC/min using DSC [0022] which is the same heating rate and method as required by ASTM D3418. As such the method of Bohling will meet the required ASTM standard.
The polymer of Bohling comprises 1-3.5 wt.% of phosphorous acid monomer and from 0.75-5 wt.% of amide monomers such as diacetone acrylamide (DAAM) that meets the limitation of crosslinking monomer of instant claim 45. The reminder of the monomers are non-ionic soft monomers [0012-0013] which are acrylic based monomers.
Stage 2 copolymer of Bohling has Tg in a range of 50oC to 125oC (Abstract) which meets the limitation of instant claim 38 (see also [0006]), wherein the same method was utilized. Second stage copolymer comprises soft and hard vinyl monomers [0013], wherein the acid component is ethylenically unsaturated [0052] and based on vinyl or acrylates.
In Summary, since the components of the two polymers are the same and the glass transition temperature of each polymer is within claimed range, the Mn of each polymer will also be within the same range which is consistent with the claim interpretation stated above.
With respect to claim 31, monomers utilized in making of the polymers of Bohling includes styrene [0029, 0055], acrylic acid, sulfonic acid ]0058], methacrylic acid [0016], methyl (meth)acrylate [0023], ethyl (meth)acrylate [0029], phosphonic acids [0052], itaconic acid [0057], n-butyl (meth)acrylate [0077], isobornyl (meth)acrylate) [0031] as well as alkyl (meth)acrylates and cycloalkyl (meth)acrylates bearing 5-30 carbon atoms [0054].
With respect to claim 32, second polymer is considered hydrophilic as it comprises less than 25% of acid containing monomer [0006] balance being other monomers which include vinyl styrene [0029] and methacrylates since second polymer is deemed “hard” polymer [0045].
With respect to claim 33, second polymer comprises hard monomer having styrene aromatic group moiety wherein the aromatic group comprises ethylenically unsaturated bonds.
With respect to claim 34, as it was stated above, the first polymer comprises soft monomers and 1-3.5 of phosphorous containing compound. The content of the soft monomers is therefore approximately 90 wt.% due to presence of crosslinking monomer in amount of 0.75-5 wt.%.
With respect to claim 35, the second polymer comprises less than 20% of acid containing monomer and no more than 20% of crosslinking monomer, with balance being another “hard” monomer [0006] which include styrene [0029] and (meth)acrylates (see discussion above).
With respect to claims 36 and 44, second stage polymer is utilized in amount of 10-40 wt.% as evident from the ratio of first polymer to second polymer being 50:50 to 90:10 [0006].
With respect to claim 39, first polymer of Bohling comprises soft monomers which include: methyl (meth)acrylate and (meth)acrylates having 1-24 carbon alkyl chain [0031]. Examples include t-butyl. See also [0054] and styrene [0057].
With respect to claim 40, second polymer is viewed as “hard” polymer as such it comprises monomers defined as “hard” monomers. These include also styrene [0029], as well as methyl (meth)acrylate, ethyl (meth)acrylate and the like.
With respect to claims 41 and 42, ethylenically unsaturated acid monomers of Bohling include: acrylic acid, methacrylic acid, vinylbenzene sulfonic acid [0008] and phosphorus containing acids [0009], itaconic acid [0057]
With respect to claim 43, phosphorous containing monomers include those based on acrylates and vinyl compounds. Such include phosphoethyl (meth)acrylate (PEM) as preferred.
In the light of the above disclosure it would have been obvious to one having ordinary skill in the art at the time instant invention was filed, that practicing teachings of Bohling, one of ordinary still in the art would also practice instantly claimed invention as currently claimed.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATARZYNA I KOLB whose telephone number is (571)272-1127. The examiner can normally be reached M-F.
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/KATARZYNA I KOLB/Primary Examiner, Art Unit 1767