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
In their response dated 5/18/2026 the applicants argued both references combines suggesting that both references fail to disclose number average molecular weight for both 1st and 2nd stage polymers.
The examiner would like to inquire if applicants read the claim interpretation at the beginning of the non-final rejection dated 2/17/2026, which clearly establishes how the examiner will meet the molecular weight of the instant invention. No objections were raised. Having saif that the examiner will address the references separately.
Instant claim 30 recites following:
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The polymer of the 1st stage (claim 37) has Tg in a range of -100oC to 50oC which is really a very broad range.
The polymer of the 2nd stage (claim 38) has Tg in a range of -50oC to 250oC, which is also a very broad range.
It is not until claims 39-43 that applicants disclose more specific list of possible polymers.
Prior art of Harris:
1st layer of multilayered particle of Harris comprises soft monomers as required by instant claim 30. The broad description of the first polymer in Harris is as follows (p. 14):
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This is very much in line with applicant’s broad definition of first polymer:
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The makeup of the first polymer of Harris is virtually the same as that of the instant invention. The same content of the same monomers. This is further evidenced by the fact that the Tg of the first polymer in Harris is in the same range as the Tg of the first polymer of the instant invention. Consequently, if the type of monomers, their content and their glass transition temperature are all within the same range, their molecular weight will also be in the same range, because these factor affect the molecular weight.
Second polymer of Harris is formed from hard monomers (p. 15) and includes monomers such as methyl methacrylate, butyl methacrylate each of them having specific Tg. The content of the methacrylate would be at least 80% by weight (p. 15). The balance of the second layer would be carboxylic acid containing monomers (p. 16). This is further evidenced by the second polymer having Tg also within claim rage.
When arguing the prior art applied, the applicants have to consider the entirety of the disclosure as well as the entirety of the office action which includes claim interpretation.
Prior art of Bohlig:
The same analysis applied to the prior art of Bohlig as to Harris above. The first polymer of Bohlig comprises soft polymers and the second polymer comprises hard polymers which is required by intsnt claim 30. While Bohlig did not include summary of ingredients as Harris did, the examiner shall dive into examples which are summarized in Table 2. It should also be noted that term “comprising” allows monomers not disclosed by the claims. Specifically, these monomers include di hydrazine (ADH) and diacetone acrylamide (DAAM) which has ketone functionality (see applicants’ specification [0072].
Table 2 is reproduced:
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Example 1 discloses first polymer content to be 65% of the particle using n-butyl acrylate (BA), n-butyl (BA), methyl (meth)acrylate (MMA), diacetone acrylamide (DAAM) and phosphoethyl (meth)acrylate in amount of 2.6 wt%. It is clear that the first polymer comprises phosphorous based compound.
Second polymer comprises 35% of the particle using methyl (meth)acrylate, butyl acrylate and acrylic acid.
Two polymers utilized to make multilayered particle utilize the monomers and although AA of the second polymer disclosed in the examples is 1.3 percent, the range overlapping with instant claims is taught in the specification. This range is obvious and examples do not teach away from broader description of the invention of Bohlig.
The fact that the molecular weights of both polymers over lap is further supported by:
First, the monomers utilized are the same as taught in the instant invention.
Specifically, for first polymer the content of phosphorus-based monomer (2.6%) is within claimed range of 0.1-5% and balance being ethylenically unsaturated monomers. Additionally, Tg of the first polymer is in a range of -50oC to 30oC, which falls within claimed range of -100oC to 50oC. As mentioned above the type of the monomers utilized and their content affect molecular weight, and since the monomers are the same, and their content lies within claimed range, so will their molecular weight.
For the second monomer, the logic is the same. The monomers of Bohlig are the same as those claimed, the content of each monomer is within the same range, and the TG of the second polymer is at least 50oC which is within claimed range of -50oC to 250oC, which in turn will encompass the claimed molecular weight.
In summary, applicant’s arguments are not persuasive and rejections of record are maintained. Claim interpretation from non-final office action is also incorporated here by reference.
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.
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 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 makeup 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.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Correspondence
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/KATARZYNA I KOLB/Primary Examiner, Art Unit 1767 June 4, 2026
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