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 .
Status of Application
Claims 1-20 are pending and presented for examination.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 9/2/2026 has been entered.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-20 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Claim Interpretation
Independent claims 1 and 20 are directed towards a copolymer. The claims additionally recite that the copolymer is prepared by polymerization in an environment comprising a surfactant. However, the Examiner notes that the claims are directed towards a product (the copolymer) and not the process of preparing the copolymer. The Examiner notes that "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted) (Claim was directed to a novolac color developer. The process of making the developer was allowed. The difference between the inventive process and the prior art was the addition of metal oxide and carboxylic acid as separate ingredients instead of adding the more expensive pre-reacted metal carboxylate. The product-by-process claim was rejected because the end product, in both the prior art and the allowed process, ends up containing metal carboxylate. The fact that the metal carboxylate is not directly added, but is instead produced in-situ does not change the end product.). Furthermore, "[b]ecause validity is determined based on the requirements of patentability, a patent is invalid if a product made by the process recited in a product-by-process claim is anticipated by or obvious from prior art products, even if those prior art products are made by different processes." Amgen Inc. v. F. Hoffmann-La Roche Ltd., 580 F.3d 1340, 1370 n. 14, 92 USPQ2d 1289, 1312, n. 14 (Fed. Cir. 2009). See also Biogen MA Inc. v. EMD Serono, Inc., 976 F.3d 1326, 1334, 2020 USPQ2d 11129 (Fed. Cir. 2020) ("Biogen is certainly correct that the scope of composition and method of treatment claims is generally subject to distinctly different analyses. But where, as here, the novelty of the method of administration rests wholly on the novelty of the composition administered, which in turn rests on the novelty of the source limitation, the Amgen analysis will necessarily result in the same conclusion on anticipation for both forms of claims."); United Therapeutics Corp. v Liquidia Techs., Inc., 74 F.4th 1360, 1373, 2023 USPQ2d 862 (Fed. Cir. 2023) (the court held that product-by-process claims were properly rejected as "anticipated by a disclosure of the same product irrespective of the processes by which they are made."); and Purdue Pharma v. Epic Pharma, 811 F.3d 1345, 117 USPQ2d 1733 (Fed. Cir. 2016). However, in the context of an infringement analysis, a product-by-process claim is only infringed by a product made by the process recited in the claim. Id. at 1370 ("a product in the prior art made by a different process can anticipate a product-by-process claim, but an accused product made by a different process cannot infringe a product-by-process claim"). In this case, a copolymer including identical monomers will be identical whether prepared in the presence or absence of a surfactant.
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.
1. Claim(s) 1-4, 6-8, 19 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Suau (U.S. PGPUB No. 2011/0319561).
I. Regarding claims 1-4, 6, 8 and 20, Suau teaches a copolymer prepared in the absence of methacrylic acid (0002) comprising in polymerized form: 20-80% acrylic acid (claim 1); 10-90% of an acrylate ester (claim 1); 0.05-22% of 2-acrylamido-2-methylpropane sulfonic acid (claim 1); 0-1% of a crosslinking monomer (claim 1). Suau teaches examples where the non-ionic monomer is ethyl acrylate (Table 1). Suau additionally teaches that the copolymer can be neutralized (0070). Suau fails to explicitly teach the claimed ranges for monomers (a)-(d). However, Suau teaches a range for the monomers overlapping the claimed range (see above). Furthermore, overlapping ranges have been held as prima facie evidence of obviousness.
II. Regarding claim 7 Suau makes obvious an identical copolymer as claimed. Therefore, Suau’s copolymer will inherently have a glass transition temperature in the range as claimed.
III. Regarding claim 19, Suau makes obvious the copolymer of claim 1 (see above). Additionally, Suau teaches a method comprising introducing the polymer into an aqueous composition (0070-0071). Therefore, Suau also makes obvious claim 19.
2. Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Suau in view of Merritt et al. (U.S. Pat. No. 4359564).
Regarding claim 5, Suau makes obvious the copolymer of claim 1, including the crosslinking compound being diallyl phthalate (0041), which is a polyunsaturated aromatic monomer, but fails to teach the anionic monomer being an acrylic acid oligomer rather than acrylic acid.
However, Merritt teaches forming copolymers using acrylic acid oligomer as one of the monomers (abstract). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Suau’s copolymer by having the anionic monomer be a mixture of acrylic acid and the acrylic acid oligomer as disclosed by Merritt. One would have been motivated to make this modification as Merritt teaches that the acrylic acid oligomer when provided in thickener polymers allows for them to develop their full viscosity rapidly and exhibit little pH drift (Merritt at column 2, lines 47-51).
3. Claim(s) 9-11 and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Suau in view of Gonzalez et al. (U.S. PGPUB No. 2017/0037170).
I. Regarding claims 9-11, Suau makes obvious the copolymer of claim 1 (see above), but fails to teach the inclusion of a hydrophobic monomer as claimed in claims 9-11. However, Gonzalez teaches a similar copolymer (abstract) prepared by polymerization of monomers comprising: acrylic acid (E1, Table 1); ethyl acrylate which is a C2 alkyl acrylate ester (E1, Table 1); a sodium salt of 2-acrylamido-2-methylpropane sulfonic acid (E1, Table 1 and 0202); trimethylolpropane diallyl ether, a crosslinking compound comprising two polymerizable olefinic unsaturation (E1, Table 1 and 0202); and a hydrophobic monomer comprising polymerizable olefinic unsaturation, polyalkylene glycol groups and a hydrophobic end group in an amount within the range as claimed in claim 11 (E1, Table 1, 0199 and 077-0081). Gonzalez teaches that the copolymer can be partially neutralized (0122). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Suau’s copolymer by inclusion of a hydrophobic monomer as disclosed by Gonzalez. One would have been motivated to make this modification as Gonzalez teaches that the hydrophobic monomer is an associative monomer (0077) and it would allow for greater control of rheological properties.
II. Regarding claim 17, Suau makes obvious the copolymer of claim 1. Additionally, Suau teaches introducing the copolymer and particles to form a composition (0101-0110), but fails to explicitly teach stirring the composition. However, the Examiner notes that it is conventional to stir mixtures to provide a uniform composition. Additionally, Gonzalez teaches similar copolymers (see above) and teaches that when they are combined with particles they are stirred (0173). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Suau’s process by performing a step of stirring the composition after introducing the copolymer to the particles. One would have been motivated to make this modification to ensure a uniform mixture of components is formed.
4. Claim(s) 12-16, 18 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sanfilippo et al. (U.S. PGPUB No. 2005/0137326) in view of Suau.
Regarding claims 12-16, 18 and 19, Sanfilippo teaches a cosmetic product which is an aqueous nail varnish composition (0005) comprising: pigment particles (0017), water (0009), a latex binder (0008-0009), and a rheology modifier (0016). Sanfilippo teaches the composition prepared by a process comprising introducing the rheology modifier, pigment particles and the aqueous latex binder varnish base together in water to form the varnish (0024). Sanfilippo fails to teach the nail varnish composition and process including the use of a copolymer as claimed in claim 1 in an amount of 0.1-5 wt% and a pH range as claimed.
However, Suau makes obvious the copolymer as claimed in claim 1 (see above). Suau additionally teaches that the copolymer is used as a rheology modifier (0020) for cosmetic applications (0072) and is supplied in an amount of 5 wt% (0096) and can be used in a pH range of 4.9-5.5 for cosmetic applications (0096-0099). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Sanfilippo’s composition by substituting Suau’s rheology modifying copolymer for Sanfilippo’s rheology modifier in an amount of 5% and at a pH range as claimed. One would have been motivated to make this modification as Suau teaches that their copolymer rheology modifier can be prepared without methacrylic acid (0002) and allows for lowering the risk of being reliant on a single chemical (0013).
Conclusion
Claims 1-20 are pending.
Claims 1-20 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT S WALTERS JR whose telephone number is (571)270-5351. The examiner can normally be reached Monday-Friday 8-5.
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/ROBERT S WALTERS JR/
September 9, 2026Primary Examiner, Art Unit 1717
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