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 .
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 9-10, 12-15 and 18-19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bourrigaud et al. (US 2018/0362688).
Regarding claims 9-10, 12-13 and 18-19: Bourrigaud et al. (US ‘688) discloses molding compositions [abstract], wherein Example 1 [Ex. 1; 0146-0147] polymerizes 95 wt% methyl methacrylate, 5 wt% methacrylic acid, 290 ppm 1,1-bis(tert-amylperoxy)cyclohexane (initiator), 3300 ppm dodecylmercaptan (chain transfer agent), and 500 ppm DTDDS (thermal stabilizer [0123-0126]) in a continuously stirred tank reactor (CSTR). The product was recovered (50%-60% monomer conversion) from the reactor, heated up to 200 oC to 230 oC and introduced in a degassing extruder for devolatization to afford a methyl methacrylate/methacrylic acid copolymer [Ex. 1; 0146-0147].
“[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) [See MPEP 2113].
The claimed effects and physical properties, i.e. not more than 1.5 wt% of repeating units of instant formula (II) [instant claim 9]; the moulding composition comprises not more than 1400 ppm of methanol, and/or not more than 1800 ppm of methacrylic acid, and/or not more than 5,000 ppm of methyl methacrylate [instant claim 10]; a weight ratio of repeating units of instant formula (II) to repeating units derived from instant formula (I) is below 0.2 [instant claim 12]; not more than 1.5 wt% of repeating units of instant formula (II) [instant claim 18]; the moulding composition comprises not more than 1000 ppm of methanol, and/or not more than 1500 ppm of methacrylic acid, and/or not more than 4,000 ppm of methyl methacrylate [instant claim 19], would inherently be achieved, as “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) [see MPEP 2112.01].
Regarding claim 14: Bourrigaud et al. (US ‘688) discloses the molding composition of Example 1 [Ex. 1; 0146-0147] contains a polymer prepared from 95 wt% methyl methacrylate and 5 wt% methacrylic acid [Ex. 1; 0146-0147]. The resulting polymer was molded into a sample sheet [0136; 0142-0145; 0149; Tables 1-2, Ex. 1].
Regarding claim 15: Bourrigaud et al. (US ‘688) discloses molded articles [0134-0140], such as light guides, lenses, optical films, etc. [0141].
Claim(s) 9-10, 12, 14-15 and 18-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Dietrich et al. (US 2011/0263806).
Regarding claims 9-10, 12 and 18-19: Dietrich et al. (US ‘806) discloses molding compositions [abstract], wherein Example 2 [Ex. 2; 0075-0089; 0091; Tables 1-2, Ex. 2] polymerizes 90 wt% MMA (methyl methacrylate [0077]), 10 wt% MAA (methacrylic acid [0076]), 0.20 parts by weight TBPND (tert-butyl peroxyneodecanoate (initiator) [0081]), 0.10 parts by weight TBPEH (tert-butyl 2-ethylperoxyhexanoate (initiator) [0082]), 0.30 parts by weight DDM (n-dodecyl mercaptan (chain transfer agent) [0083]), and 20 parts by weight 1-propanol/water in a stirred reactor. The resulting polymer (99% monomer conversion) was then isolated in a vented extruder by extracting the solvent at 270 oC and 20 mbar to afford a methyl methacrylate/methacrylic acid copolymer [Ex. 2; 0091; Tables 1-2, Ex. 2].
“[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) [See MPEP 2113].
The claimed effects and physical properties, i.e. not more than 1.5 wt% of repeating units of instant formula (II) [instant claim 9]; the moulding composition comprises not more than 1400 ppm of methanol, and/or not more than 1800 ppm of methacrylic acid, and/or not more than 5,000 ppm of methyl methacrylate [instant claim 10]; a weight ratio of repeating units of instant formula (II) to repeating units derived from instant formula (I) is below 0.2 [instant claim 12]; not more than 1.5 wt% of repeating units of instant formula (II) [instant claim 18]; the moulding composition comprises not more than 1000 ppm of methanol, and/or not more than 1500 ppm of methacrylic acid, and/or not more than 4,000 ppm of methyl methacrylate [instant claim 19], would inherently be achieved, as “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) [see MPEP 2112.01].
Regarding claim 14: Dietrich et al. (US ‘806) discloses the molding composition of Example 2 contains a polymer prepared from 90 wt% methyl methacrylate and 10 wt% methacrylic acid [Ex. 2; 0091; Tables 1-2, Ex. 2]. The resulting polymer was molded into a sample for Vicat testing [0073; 0087; Table 3, Ex. 2].
Regarding claim 15 and 20: Dietrich et al. (US ‘806) discloses molded articles, such as lamp covers, LED lenses, LED bodies, LED semiconductor covers, etc. [0074].
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.
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.
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bourrigaud et al. (US 2018/0362688) as applied to claim 9 above.
Regarding claim 11: Bourrigaud et al. (US ‘688) discloses the molecular weight can be adjusted by the amount of chain transfer agent (ex. dodecylmercaptan) used during the polymerization [0119].
Bourrigaud et al. (US ‘688) does not specifically disclose the polymer having a Mw of from 60,000 g/mol to 400,000 g/mol. However, “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to dis-cover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382; In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Laboratories Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997) [see MPEP 2144.05].
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dietrich et al. (US 2011/0263806) as applied to claim 9 above.
Regarding claim 11: Dietrich et al. (US ‘806) discloses the moulding composition has molecular weights (Mw) of 60,000 g/mol to 200,000 g/mol [0057].
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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) [See MPEP 2144.05].
Allowable Subject Matter
Claims 1-8 and 16-17 are allowable.
The following is a statement of reasons for the indication of allowable subject matter: Bourrigaud et al. (US 2018/0362688) discloses a process for producing molding compositions [abstract], wherein Example 1 [Ex. 1; 0146-0147] polymerizes 95 wt% methyl methacrylate, 5 wt% methacrylic acid, 290 ppm 1,1-bis(tert-amylperoxy)cyclohexane (initiator), 3300 ppm dodecylmercaptan (chain transfer agent), and 500 ppm DTDDS (thermal stabilizer [0123-0126]) in a continuously stirred tank reactor (CSTR). While Bourrigaud et al. (US ‘688) discloses the product was recovered (50%-60% monomer conversion) from the reactor, heated up to 200 oC to 230 oC and introduced in a degassing extruder for devolatization to afford a methyl methacrylate/methacrylic acid copolymer [Ex. 1; 0146-0147], Bourrigaud et al. (US ‘688) does disclose adjusting the temperature in the last degassing zone (Tv), the temperature entering the melt outlet die (To) and residence time (t) in such a way that the term 4.981·10-8·t·exp (0.0517·(1.5·Tv+0.5·To)/2) is lower than 8.
Dietrich et al. (US 2011/0263806) discloses a process for producing molding compositions [abstract], wherein Example 2 [Ex. 2; 0075-0089; 0091; Tables 1-2, Ex. 2] polymerizes 90 wt% MMA (methyl methacrylate [0077]), 10 wt% MAA (methacrylic acid [0076]), 0.20 parts by weight TBPND (tert-butyl peroxyneodecanoate (initiator) [0081]), 0.10 parts by weight TBPEH (tert-butyl 2-ethylperoxyhexanoate (initiator) [0082]), 0.30 parts by weight DDM (n-dodecyl mercaptan (chain transfer agent) [0083]), and 20 parts by weight 1-propanol/water in a stirred reactor. While Dietrich et al. (US ‘806) discloses the resulting polymer (99% monomer conversion) was then isolated in a vented extruder by extracting the solvent at 270 oC and 20 mbar to afford a methyl methacrylate/methacrylic acid copolymer [Ex. 2; 0091; Tables 1-2, Ex. 2], Dietrich et al. (US ‘806) does not disclose adjusting the temperature in the last degassing zone (Tv), the temperature entering the melt outlet die (To) and residence time (t) in such a way that the term 4.981·10-8·t·exp (0.0517·(1.5·Tv+0.5·To)/2) is lower than 8.
Response to Arguments
Applicant’s arguments, see pg. 10, ln. 1 – pg. 12, ln. 16 filed 3/23/26, with respect to claims 1-20 under 35 U.S.C 103 over Bourrigaud et al. (US 2018/0362688) and claims 1-12 and 14-20 under 35 U.S.C 103 over Dietrich et al. (US 2011/0263806) have been fully considered and are persuasive. The rejection of claims 1-20 under 35 U.S.C 103, and claims 1-12 and 14-20 under 35 U.S.C 103 have been withdrawn.
Applicant's arguments filed 3/23/26 have been fully considered but they are not persuasive. The rejection of claims 9-10, 12-15 and 18-19 under 35 U.S.C. 102(a)(1) over Bourrigaud et al. (US 2018/0362688) and the rejection of claims 9-10, 12, 14-15 and 18-20 under 35 U.S.C. 102(a)(1) over Dietrich et al. (US 2011/0263806) are maintained.
Bourrigaud et al. (US ‘688) was relied on for disclosing polymerizing the composition of Example 1 [Ex. 1; 0146-0147] containing 95 wt% methyl methacrylate, 5 wt% methacrylic acid, 290 ppm 1,1-bis(tert-amylperoxy)cyclohexane (initiator), 3300 ppm dodecylmercaptan (chain transfer agent), and 500 ppm DTDDS (thermal stabilizer [0123-0126]) in a continuously stirred tank reactor (CSTR). The product was recovered (50%-60% monomer conversion) from the reactor, heated up to 200 oC to 230 oC and introduced in a degassing extruder for devolatization to afford a methyl methacrylate/methacrylic acid copolymer [Ex. 1; 0146-0147].
Dietrich et al. (US ‘806) was relied on for disclosing polymerizing the composition of Example 2 [Ex. 2; 0075-0089; 0091; Tables 1-2, Ex. 2] containing 90 wt% MMA (methyl methacrylate [0077]), 10 wt% MAA (methacrylic acid [0076]), 0.20 parts by weight TBPND (tert-butyl peroxyneodecanoate (initiator) [0081]), 0.10 parts by weight TBPEH (tert-butyl 2-ethylperoxyhexanoate (initiator) [0082]), 0.30 parts by weight DDM (n-dodecyl mercaptan (chain transfer agent) [0083]), and 20 parts by weight 1-propanol/water in a stirred reactor. The resulting polymer (99% monomer conversion) was then isolated in a vented extruder by extracting the solvent at 270 oC and 20 mbar to afford a methyl methacrylate/methacrylic acid copolymer [Ex. 2; 0091; Tables 1-2, Ex. 2].
“[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) [See MPEP 2113].
The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product. See, e.g., In re Garnero, 412 F.2d 276, 279, 162 USPQ 221, 223 (CCPA 1979) [see MPEP 2113].
“The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature” than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974). Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983) (The claims were directed to a zeolite manufactured by mixing together various inorganic materials in solution and heating the resultant gel to form a crystalline metal silicate essentially free of alkali metal. The prior art described a process of making a zeolite which, after ion exchange to remove alkali metal, appeared to be “essentially free of alkali metal.” The court upheld the rejection because the applicant had not come forward with any evidence that the prior art was not “essentially free of alkali metal” and therefore a different and unobvious product.) [see MPEP 2113].
While Table 2 appears to provide evidence for a structural difference in the polymer of comparative Example 3 with the term higher than 8, when compared to inventive Examples 1-2 having the term less than 8, the data dos not show a difference between the claimed product and the prior art products of Bourrigaud et al. (US ‘688) and Dietrich et al. (US ‘806).
As Bourrigaud et al. (US ‘688) and Dietrich et al. (US ‘806) disclose MMA/MAA molding compositions substantially identical to the claimed composition {see above}, the examiner maintains the position that the claimed effects and physical properties, i.e. not more than 1.5 wt% of repeating units of instant formula (II) [instant claim 9]; the moulding composition comprises not more than 1400 ppm of methanol, and/or not more than 1800 ppm of methacrylic acid, and/or not more than 5,000 ppm of methyl methacrylate [instant claim 10]; a weight ratio of repeating units of instant formula (II) to repeating units derived from instant formula (I) is below 0.2 [instant claim 12]; not more than 1.5 wt% of repeating units of instant formula (II) [instant claim 18]; the moulding composition comprises not more than 1000 ppm of methanol, and/or not more than 1500 ppm of methacrylic acid, and/or not more than 4,000 ppm of methyl methacrylate [instant claim 19], would inherently be achieved by a composition with all the claimed ingredients. “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) [see MPEP 2112.01].
“[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C. 102, on ‘prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same...[footnote omitted].” The burden of proof is similar to that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (quoting In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977)) [See MPEP 2112]. Evidence {data} would need to be provided showing the compositions disclosed by Bourrigaud et al. (US ‘688) and Dietrich et al. (US ‘806) do not necessarily or inherently possess the characteristics of the claimed product.
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
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL F PEPITONE whose telephone number is (571)270-3299. The examiner can normally be reached on 7:00 AM - 3:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached on 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL F PEPITONE/Primary Examiner, Art Unit 1767
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