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 II, claims 3-13 in the reply filed on 20 January 2026 is acknowledged.
Claims 1, 2, and 14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention. Election was made without traverse in the reply filed on 20 January 2026.
Claim Objections
Claims 9 and 12 objected to because of the following informalities: these claims lack a period. Appropriate correction is required.
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 7-13 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 last paragraph of claim 7 recites amount of fine polymer particles and resin based on the total of fine particles and resin. However, since claim 7 recites several compositions that may include fine polymer particles and the resin, including the mixture obtained in the resin mixing step, a mixture obtained in the coagulant adding step, a water component, and a coagulate, it is unclear to what composition these proportions refer. This rejection applies to claims 8-10 by virtue of their dependence from claim 7.
The last paragraph of claim 11 recites the amount of fine polymer particles and resin. However, since the claim sets forth more than one composition that may include these, it is unclear to which composition this refers. This ground applies to claims 12-13 by virtue of their dependence from claim 11.
Claim Rejections - 35 USC § 103
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.
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 3-9 are rejected under 35 U.S.C. 103 as being unpatentable over US 5,284,912 (“Sato”) as evidenced by US 3,864,275 (“Kan”).
As to claims 3, 5, and 6, Sato teaches a method for forming a resin composition. Sato teaches forming grafted fine particles in a latex. By way of example, Example 1 of Sato forms a latex of seed particles of a polymer with other monomers polymerized, thus grafted, thereon, using styrene, divinylbenzene, acrylonitrile as grafted monomers (8:1-40).
Sato teaches mixing the latex with an epoxy resin Epikote 828 (11:8-15). While the viscosity is not stated, it is known, as evidenced by Kan, 8:16-19, that Epikote 828 is a liquid epoxy resin having viscosity in the recited range. Sato teaches kneading using a shearing mixer, thus applying shearing stress to the mixed composition, at room temperature as required by claim 6 (11:15-18). Sato teaches the components are mixed in the ratio recited by claim 5 (Table 3, example 5). While Sato does not discuss the size of coated particles with respect to the size of the starting latex particles, and the amount of resin with respect to the latex particles, it is presumed that the resulting latex meets these characteristics, because of the same steps and same proportion of fine particle latex and liquid resin. As such, while not specifically recited, these characteristics would be obvious as resulting from the recited process.
As to claim 4, Sato teaches separating the water from the resin portion (11:20-25). While it is not specified that the water and resin are latex and coagulate, Sato teaches the composition formed by mixing latex and resin may be coagulated, and thus separation into latex and coagulate is at least an obvious modification (7:45-50; 11:20-25). While the amount of particles and resin in the remaining latex is not specified, it is presumed to meet the recited limitation, as the goal of the process of Sato is to obtain particles dispersed in the resin portion, and as such, the amount of particles and resin in the remaining latex to be minimal.
As to claim 7, Sato teaches preparing a resin composition. Sato teaches forming grafted fine particles in a latex. By way of example, Example 1 of Sato forms a latex of seed particles of a polymer with other monomers polymerized, thus grafted, thereon, using styrene, divinylbenzene, acrylonitrile as grafted monomers (8:1-40). Sato teaches mixing the latex with an epoxy resin Epikote 828 (11:8-15). While the viscosity is not stated, it is known, as evidenced by Kan, 8:16-19, that Epikote 828 is a liquid epoxy resin having viscosity in the recited range. Sato teaches kneading using a shearing mixer, thus applying shearing stress to the mixed composition (11:15-18).
While not exemplified, Sato teaches that the resin composition thus obtained may be coagulated (7:45-50), such as adding (mixing) a coagulant (7:15-20; 8:47-50, showing adding coagulant to form mixture).
Sato teaches separating the water portion from the resin portion containing resin and the particles (11:20-25), which if coagulant is added, is presumed to be water portion and coagulate. Sato teaches the components are mixed in the ratio recited to provide 20% of particles and 80 parts resin (table 3, example 5). Given the goal of obtaining the resin with particles, it is reasonable to presume the resulting coagulate contains the recited amount of fine particles. Furthermore, Sato teaches preparing the resin to have between 1 and 100 parts of the particles (component b) to resin (component a) (7:30-35), and thus amounts or particles in the recited range in the coagulate are an obvious modification taught by Sato.
As to claim 8, Sato teaches removal of the water from the composition (col. 11), and teaches coagulation of a latex/resin (7:45-50), and thus suggests separation of water from the coagulate to the recited level is suggested by Sato. While the water level is not recited, Sato suggests compositions not including water (examples 1-4, teaching adding dry crumb to resin), and thus a water content below 45 weight percent is an obvious modification given the goals of Sato to provide a resin having rubbery particles dispersed therein.
As to claim 9, Sato does not discuss a beating number of mixing coagulant. However, Sato teaches the composition may be coagulated by adding, thus mixing, a coagulant (7:17-20). While Sato does not teach a mixing number, the amount of mixing (beating) to mix the coagulant and mixture sufficient to provide a coagulated mixture would be obvious to a person or ordinary skill in the art, and thus any amount of beating, including the recited range to provide the required resin/particle mixture is an obvious modification suggested by the end result of Sato, a coagulated particle/resin mixture.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over US 5,284,912 (“Sato”) as evidenced by US 3,864,275 (“Kan”) as applied to claim 7, further in view of WO 2020/138263 A1 (“Maizuru”).
The citations to Maizuru are to US 2021/0317240.
As to claim 10, Sato teaches separating the water portion from the resin portion containing resin and the particles (11:20-25), which if coagulant is added, is presumed to be water portion and coagulate. Sato does not discuss rinsing such coagulate. However, Maizuru teaches compositions that are coagulates of similar latex particles with thermosetting resin, and teaches that coagulate (that may contain thermosetting resin) may be further washed, thus rinsed (para. 0293). Maizuru also teaches that the utility of having sulfur in less than 2300 ppm, and phosphorus less than 1200 ppm (paras. 0201-202), which is within the recited range, and that the same may be removed by washing (para. 0197). As such, the additional steps of washing and removing sulfur and phosphorus is an obvious modification suggested by Maizuru.
Claims 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over US 5,284,912 (“Sato”) in view of WO 2020/138263 A1 (“Maizuru”) as evidenced by US 3,864,275 (“Kan”).
The citations to Maizuru are to US 2021/0317240.
As to claim 11, Sato teaches preparing a resin composition. Sato teaches forming grafted fine particles in a latex. By way of example, Example 1 of Sato forms a latex of seed particles of a polymer with other monomers polymerized, thus grafted, thereon, using styrene, divinylbenzene, acrylonitrile as grafted monomers (8:1-40). Sato teaches mixing the latex with an epoxy resin Epikote 828 (11:8-15). While the viscosity is not stated, it is known, as evidenced by Kan, 8:16-19, that Epikote 828 is a liquid epoxy resin having viscosity in the recited range. Sato teaches kneading using a shearing mixer, thus applying shearing stress to the mixed composition (11:15-18).
While not exemplified, Sato teaches that the resin composition thus obtained may be coagulated (7:45-50), such as adding (mixing) a coagulant (7:15-20; 8:47-50, showing adding coagulant to form mixture).
Sato teaches separating the water portion from the resin portion containing resin and the particles (11:20-25), which if coagulant is added, is presumed to be water portion and coagulate. Sato teaches the components are mixed in the ratio recited to provide 20% of particles and 80 parts resin (table 3, example 5). Given the goal of obtaining the resin with particles, it is reasonable to presume the resulting coagulate contains the recited amount of fine particles. Furthermore, Sato teaches preparing the resin to have between 1 and 100 parts of the particles (component b) to resin (component a) (7:30-35), and thus amounts or particles in the recited range in the coagulate are an obvious modification taught by Sato.
Sato does not discuss rinsing such coagulate. However, Maizuru teaches compositions that are coagulates of similar latex particles with thermosetting resin, and teaches that coagulate (that may contain thermosetting resin) may be further washed, thus rinsed (para. 0293). Maizuru also teaches that the utility of having sulfur in less than 2300 ppm, and phosphorus less than 1200 ppm (paras. 0201-202), which is within the recited range, and that the same may be removed by washing (para. 0197). As such, the additional steps of washing and removing sulfur and phosphorus is an obvious modification suggested by Maizuru.
As to claims 12 and 13, Sato in view of Maizuru do not discuss a minimum beating number of the rinsing (washing) step or mixing rinse water with the coagulate for the minimum time. However, Maizuru teaches washing the coagulate, also teaches that the utility of having sulfur in less than 2300 ppm, and phosphorus less than 1200 ppm (paras. 0201-202), which is within the recited range, and that the same may be removed by washing (para. 0197). It is presumed that washing (rinsing) will be required for the minimum beating number of mixing time to obtain an amount of sulfur and phosphorus in the recited amount.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KREGG T BROOKS whose telephone number is (313)446-4888. The examiner can normally be reached Monday to Friday 9 am to 5:30 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie Reuther can be reached at (571)270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KREGG T BROOKS/Primary Examiner, Art Unit 1764
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