DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . Per amendment 7/29/26, claims 1-20 are currently pending in the application..
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.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over prior art to (US 2013/0030077 A1, of record), in view of Berge et al. (JP 11-124402 A1, of record), Hoshiba et al. (JP06-080711A, machine translation), and optionally, in view of Kyotani (JP 2009249462 A, machine translation).
Regarding claims 1, 2, 8-14, Kim teaches a polymer having an acid value of 30 to 300 mg KOH /g and having a weight average molecular weight of 5,000 to 50,000, said polymer being formed from a plurality of ethylenically unsaturated monomers (reads on a vinyl-based polymer) ([0006]-[0018], Examples).
In an embodiment, Kim teaches a photosensitive resin composition comprising a binder resin comprising a polymer having an acid value of 30 to 300 mg KOH /g and having a weight average molecular weight of 5,000 to 50,000, a polymerizable compound having an ethylenically unsaturated bond, and a photoinitiator (reads on a curable composition) ([0036]-[0049], ref. claims, Examples).
Disclosed polymers in the Examples are formed from unsaturated monomers in the presence of a chain transfer agent. For instance, Example 1 is formed from benzyl methacrylate, N-phenyl maleimide, styrene, methacrylic acid and adamantyl methacrylate, in the presence of 3-mercaptopropionic acid as a chain transfer agent, and has a Mw of 21,000 and an acid value of 100 mg KOH/g.
Kim is silent on a polymer having (1) claimed particle size, (2) a terminal structure derived from one or more of 3-20 to 20-mer of a claimed (meth)acrylic monomer and (3) a water content as in the claimed invention.
At the outset, it is noted that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05.
Regarding (1), the secondary reference to Hoshiba teaches a spherical polymer by aqueous suspension polymerization of a vinyl compound containing acrylic acid and methacrylic acid, wherein said method provides uniform quality spherical polymers, such as spherical polymer having a particle diameter of about 100 microns, having less impurities without aggregation and gelation of the polymer (Novelty and Advantage sections).
Regarding (3), Hoshiba’s method includes isolating the washed and dried spherical polymer powder and water/moisture is not seen to be an essential component therein (Example 1). In the alternative, while Hoshiba is silent on the drying temperature, Kyotani teaches manufacturing spherical polymers particles by dehydrating and drying the dehydrated polymer particles in hot air at 70oC to dry the moisture content to 0.5 wt,% to obtain dry spherical polymer particles (Example 1).
In view of the advantages of Hoshiba’s method, or alternatively, further in view of an art recognized method of drying spherical polymer particles as in Kyotani’s, and the teaching in Kim on polymers and suitable acid value thereof for use in photosensitive resin compositions, it would have been obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention, to prepare Kim’s polymers by Hoshiba’s method to provide for particles having a particle size, an acid value and a water content of overlapping scope.
Regarding (2), while Kim and Hoshiba are silent on the claimed terminal groups, within the scope claimed invention, recognizing that stoichiometric addition of thiol-containing chain transfer agents can be less durable than desired, in addition to having odor problems, the secondary reference to Berge teaches ω-unsaturated macromonomer as a chain transfer agent, having improved durability and weather resistance, lower polymerization temperatures etc., and capable of providing for crosslinkable polymers (Overview, [0001]-[0014], [0073]. Disclosed ω-unsaturated macromonomer is of the following formula:
PNG
media_image1.png
236
493
media_image1.png
Greyscale
wherein, n is 2-100, preferably of DP 2 to 20, X1 to Xn may each me independently X which may be -COOR, wherein R may be an alkyl of 1-12 carbon atoms for example [0020], e.g., a vinyl terminated polymethyl methacrylate with DP-10.5 (Mn=1050) [0020]-[0040], [0084].
In view of the advantages of the chain transfer agents of Berge, it would have been obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention, to prepare Kim’s polymers by Hoshiba’s method in the presence of Berge’s chain transfer agents to provide for polymer having terminal groups, acid value and particle size of overlapping scope, absent evidence to the contrary.
Regarding claims 3-7,disclosed polymers of Examples 1 and 2 are derived from a monomer mixture comprising N-decyl methacrylate or n-octyl methacrylate (read on (meth)acrylic monomer/(meth)acrylic acid alkyl ester), styrene (reads on vinyl monomer having an aromatic ring), and methacrylic acid (read on vinyl-based monomer having an acid group).
Regarding claims 15-20, in the above disclosed formula in paragraph 10 above, Berge teaches a preferred DP 2 to 20, X1 may be -COOR, wherein R may be H or an alkyl of 1-12 carbon atoms for example [0020], e.g., a vinyl terminated polymethyl methacrylate with DP-10.5 (Mn=1050) (Overview [0020], [0024], [0084]).
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Minatobe et al. (JP 2015-067699 A, machine translation, of record), in view of Berge et al. (JP 11-124402 A1), Hoshiba et al. (JP06-080711A, machine translation, of record) and optionally, in view of Kyotani (JP 2009249462 A, machine translation).
Regarding claims 1, 2, 4, 8-14, Minatobe teaches a curable resin composition comprising an alkali-soluble resin and a multifunctional compound having 2 or more functionality (Overview), wherein said alkali soluble resin has an acid value of 20 mg KOH/g or more and less than 300 mg KOH/g [0020], a weight average molecular weight of 2,000 to 250,000 [0022], and formed form a monomer containing a polymerizable double bond having an acid group and plurality of copolymerizable monomers having double bonds [0025]-[0039].
The alkali soluble resin of Synthesis Example A-1 is formed form a plurality of monomers and has an acid value of 65 and an Mw of 11800 (Table 1), and Example 1 is drawn to forming a curable composition thereof, by adding dipentaerythritol hexaacrylate (reads on compound having a polymerizable double bond, claim 10). Thus, the disclosed alkali-soluble resin reads on a vinyl-based resin and has an overlapping acid value range and weight average molecular weight range with those of claims 1 and 8.
Minatobe teaches chain transfer agents to control molecular weight and suppress gelation, such as mercaptocarboxylic acids and alkyl mercaptans [0051]-[0052].
Minatobe is silent on a polymer having (1) claimed particle size, (2) a terminal structure derived from one or more of 3-20 to 20-mer of a claimed (meth)acrylic monomer and (3) a water content as in the claimed invention.
As discussed in paragraph 7 above, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
Regarding (1) and (3), the discussions on Hoshiba and Kyotani from paragraphs 8 and 9 above are incorporated herein by reference.
In view of the advantages of Hoshiba’s method, or alternatively, further in view of an art recognized method of drying spherical polymer particles as in Kyotani’s, and the teaching in Minatobe on polymers for photosensitive resin compositions and suitable acid value thereof, it would have been obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention, to prepare Kim’s polymers by Hosiba’s method to prove for particles having a particle size and an acid value of overlapping scope.
Regarding (2), while Minatobe and Hoshiba are silent on the claimed terminal groups, the discussion on Berge from paragraph 10 above is incorporated herein by reference.
In view of the advantages of the chain transfer agents of Berge, it would have been obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention, to prepare Minatobe’s polymers by Hoshiba’s method in the presence of Berge’s chain transfer agents to provide for polymer having terminal groups, acid value and particle size of overlapping scope, absent evidence to the contrary.
Regarding claims 3, 5, 6 and 7, disclosed monomers for forming the alkali-soluble resin include one or more of alkyl(meth)acrylates, e.g., methyl (meth)acrylate, ethyl (meth)acrylate, propyl (meth)acrylate, butyl (meth)acrylate etc. (read on (meth)acrylic monomer/(meth)acrylic acid alkyl ester) [0036]-[0037] and styrene (reads on vinyl monomer having an aromatic ring) [0039].
Regarding claims 15-20, in the above disclosed formula in paragraph 10 above, Berge teaches a preferred DP 2 to 20, X1 may be -COOR, wherein R may be H or an alkyl of 1-12 carbon atoms for example [0020], e.g., a vinyl terminated polymethyl methacrylate with DP-10.5 (Mn=1050) (Overview [0020], [0024], [0084]).
Response to Arguments
In view of the amendment dated 7/29/26, the rejections of record are withdrawn, and new grounds of rejections are presented herein above relying on the art of record.
Applicant’s arguments have been duly considered.
Regarding the Berge reference, referring to [0024], Applicant asserts that X may be CONR2, -COOR, -OR¹ (the same as R except for excluding hydrogen), - OCOR, -OCOOR¹, NRCOOR¹, cyano, halo or cyano, and each R is independently selected from the group consisting of hydrogen, silyl, substituted alkyl, substituted alkyl ether, substituted phenyl, substituted benzyl, and substituted allyl, wherein the term "substituted" means having a substituent selected from the group consisting of epoxy, hydroxy, isocyanato, cyano, amino, silyl, acid, halo, and acyl, and concludes that Berge's chain transfer agent is outside the scope of or differs from the claims of the present application.
In response, it is noted that paragraphs [0024] and [0027] in Berge do teach that R may be an unsubstituted alkyl, paragraphs [0034] and [0037] teach methyl methacrylate macromonomer, and paragraph [0040] teaches unbranched methcrylates, e.g., of alkyls, such as methyl ethyl, propyl, butyl, ethylhexyl ester etc.
Thus, the general disclosure to Berge clearly teaches macromonomers that overlap in scope with the claimed 3-20 mer of (meth)acrylic monomer.
Thus, the combination of Kim/Minatobe, Hoshiba and Berge references as a whole obviate a polymer having claimed acid value, particle size and the terminal structure.
Regarding arguments on unexpected results in Tables 1-3 of the disclosure, as an initial matter, it is noted that the polymer particle size is not seen to play a critical role in the comparison of inventive and comparative Examples. It is further noted that the alkaline solubility of the polymer is seen to be inferior in comparative Examples 2 and 3, as compared to those of the inventive Examples, and the acid value of these polymers is 0. However, such polymers are not reasonably representative of Kim and Minatobe references which teach a finite positive range for the acid value. Furthermore, although the polymer of comparative Example 1 is inferior in terms of odor, the Berge reference recognizes odor as an issue with mercaptans, and therefore, would be reasonably expected. Even so, the data on asserted unexpected properties on record is of limited scope with regard to the acid value of the polymers and the type of the chain transfer agent and is not reasonably representative of claim 1.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Any inquiry concerning this communication or earlier communications from the
examiner should be directed to Satya Sastri at (571) 272 1112. The examiner can be reached Monday-Friday, 9AM-5.30PM (EST). If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Mr. Robert Jones can be reached at (571)-270-7733. The fax phone number for the organization where this application or proceeding is assigned is (571) 273 8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see https://ppair-my.uspto.gov/pair/PrivatePair. Should you have questions on access to
the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Satya B Sastri/
Primary Examiner, Art Unit 1762
Prosecution Insights