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 .
This communication responds to the application and amended claim set filed July 17, 2023. Claims 1-9 are currently pending.
Priority
This application is the national stage entry of PCT/JP2022/001501, filed January 18, 2022, which claims priority to JP2021-005839, filed January 18, 2021. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Objections
Claim 1 is objected to because of the following informalities:
In claim 1, line 7, it is suggested the word “of” be deleted, such that the claim language reading “viscosity at 100°C of in a range of 10 to 5,000 mm2/s” is changed to “viscosity at 100°C in a range of 10 to 5,000 mm2/s”.
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.
Claim 5 is 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.
Claim 5 recites the limitation “wherein the water dispersion composition has an average particle size of 100 nm or less”, which causes confusion because the dispersion itself does not have a particle size. For purposes of examination, the limitation “wherein the water dispersion composition has an average particle size of 100 nm or less” is interpreted as “wherein the dispersed particles of the ethylene-α-olefin copolymer acid-modified substance (B) have an average particle size of 100 nm or less”.
Claim Analysis
Summary of Claim 1:
A water dispersion composition comprising
an ethylene-a- olefin copolymer acid-modified product (B) in a range of 0.01 to 50% by mass,
wherein the ethylene-a-olefin copolymer acid- modified product (B) is an acid-modified product of an ethylene-a-olefin copolymer (A) satisfying the following (Al) to (A6), and satisfies the following (Bl) to (B5):
(A1)
having a content of ethylene units of in a range of 30 to 85 mol%;
(A2)
having a kinematic viscosity at 1000C of in a range of 10 to 5,000 mm2/s;(
(A3)
having a weight-average molecular weight, as measured by gel permeation chromatography (GPC) and calculated in terms of polystyrene, being in a range of 1,000 to 50,000;
(A4)
having a molecular weight distribution (Mw/Mn) for molecular weight measured by gel permeation chromatography (GPC) and calculated in terms of polystyrene, being 2.5 or less;(
(A5)
having a B-value represented by the following formula
PNG
media_image1.png
153
265
media_image1.png
Greyscale
wherein PE represents a molar fraction of ethylene units, Po represents a molar fraction of a-olefin units, and POE represents a molar fraction of ethylene-a-olefin chains in all dyad chains;
(A6)
having an amount of unsaturated bonds, as measured by IH-NMR, being less than 0.5 per 1000 carbon atoms; (B2) having an apparent viscosity at 1500C of in a range of 1 to 1,000 cPs;
(B1)
having an acid value of in a range of 1 to 300 mgKOH/g;
(B2)
having an apparent viscosity at 1500C of in a range of 1 to 1,000 cPs;
(B3)
having a weight-average molecular weight, as measured by gel permeation chromatography (GPC) and calculated in terms of polystyrene, being in a range of 1,000 to 50,000;
(B4)
having a molecular weight distribution (Mw/Mn) for molecular weight measured by gel permeation chromatography (GPC) and calculated in terms of polystyrene, being 2.5 or less;
(B5)
having a weight fraction of unreacted molecules, as measured by high performance liquid chromatography (HPLC), being 59% or less.
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.
Claims 1-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kamiya (JP2016102157 (A) as listed on the IDS dated 10/05/2023, full English Machine Translation provided by Applicant).
Regarding claims 1 and 7, Kamiya teaches a water dispersion composition comprising 0.01 to 50% by mass of at least one selected from an ethylene- α-olefin copolymer (A) and an acid modified substance (B) of the ethylene- α-olefin copolymer (A) satisfying the following (A1) to (A6):
(A1) The content of ethylene units is 30 to 8 5 mol%
(A2) The kinematic viscosity at 100 ° C is 10 to 5,000 mm2/s
(A3) Measured by gel permeation chromatography (GPC) and the weight average molecular weight obtained in terms of polystyrene is 1,000 to 50,000.
(A4) The molecular weight distribution ( Mw/Mn) is 2.5 or less.
(A5) The B value expressed by the following formula [1] is 1.1 or more.
PNG
media_image2.png
112
265
media_image2.png
Greyscale
wherein PE is the mole content of ethylene units, PO indicates the mole fraction of α-olefin units contained, and POE indicates the mole fraction of ethylene- α-olefin chains in all dyad chains.
(A6) The amount of unsaturated bonds measured by 1H-NMR is less than 0.5 per 1000 carbon atoms (claim 1).
Kamiya further teaches the aqueous dispersion composition, wherein the acid-modified substance (B) satisfies the following (B1) to (B4 :
(B1) Acid value is 1 to 300 mg KOH/ g,
(B2) Apparent viscosity at 150 °C is 1 to 1,000 cPs.
(B3) Measured by gel permeation chromatography (GPC) and obtained by polystyrene conversion, being in a range of 1,000 to 50,000.
(B4) The molecular weight distribution (Mw/Mn) of
the molecular weight measured by gel permeation chromatography (GPC) and obtained by
polystyrene conversion, being 2.5 or less (claim 2).
However, Kamiya is silent on the acid modified substance B having a weight fraction of unreacted molecules, as recited in the instant claim. Kamiya teaches aqueous dispersion compositions containing an acid- modified ethylene- α-olefin copolymer (B) which have excellent water dispersibility of the copolymer and stability in an aqueous dispersion ([0012], [0127] [0190], Table 3). Kamiya further teaches the acid modified product (B) is a copolymer obtained by modifying ethylene- α-olefin copolymer (A) with at least one selected from maleic acid and maleic anhydride (claim 3), wherein the content of ethylene units, kinematic viscosity, weight -average molecular weight, molecular weight distribution Mw/Mn, the randomness index in the copolymer chain and the amount of unsaturated bonds of the ethylene- α-olefin copolymer (A) are substantially identical to the claimed invention [0014]-[0021]. Furthermore, Kamiya teaches the acid modification by grafting maleic anhydride using peroxide initiator, with the removal of unreacted maleic anhydride and peroxide under vacuum and nitrogen [0175], resulting in acid modified ethylene- α-olefin copolymer (B) with an acid value, apparent viscosity, weight average molecular weight, molecular weight distribution Mw/Mn ([0126]-[0132] substantially identical to the claimed invention. In addition, the catalyst types and polymerization conditions [0161]-[0171] are substantially identical to the claimed invention. Therefore, in view of the substantially identical water dispersion composition of Kamiya, it would be reasonable to infer that the water dispersion composition of Kamiya will possess the claimed condition (B5). Because the PTO does not have proper means to conduct experiments, the burden of proof is now shifted to Applicant to show otherwise. (See In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977); In re Fitzgerald, 205 USPQ 594 (CCPA 1980).)
Regarding claims 2 and 8, Kamiya is silent on the weight fraction of the unreacted molecules having a molecular weight higher than the weight average-molecular weight of the acid-modified substance (B).
However, as previously discussed in the rejection of claim 1, Kamiya teaches a substantially identical water dispersion composition satisfying the requirements A-1 to A6 and B1-B4 (see rejection of claim 1). Kamiya further teaches that the copolymer (A) is modified with maleic acid or maleic anhydride (claim 3) because it has a high polarity as one monomer and is less likely to form a by-product such as a homopolymer ([[0125]), which implies the use of maleic anhydride or maleic acid reduce the formation of by-products (unreacted and high molecular weight by-products). It is noted that the grafting reaction is carried out by adding the graft component to the ethylene-α-olefin copolymer (A) in the presence of a radical initiator such as di-t-butyl peroxide, by the method described in JP61-126120A ([0126]), which is the same method used in the instant specification ([0126]-[0128]). The graft component is preferably used in such an amount that the acid value of the obtained component (B) falls within the range disclosed by the requirement (B1), to control the stability of the aqueous dispersion, viscosity of the copolymer and the dispersibility in water ([0126]-[0127]). Moreover, Kamiya teaches the acid-modified ethylene-α-olefin copolymer (B) has excellent stability of the aqueous dispersion ([0012], [0134], [0190], Table 3). Therefore, in view of the substantially identical acid-modified substance (B), ethylene- α-olefin copolymer (A) and water dispersion composition of Kamiya, it would be reasonable to infer that Kamiya’s acid modified substance (B) will possess the claimed condition (B6). Because the PTO does not have proper means to conduct experiments, the burden of proof is now shifted to Applicant to show otherwise. (See In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977); In re Fitzgerald, 205 USPQ 594 (CCPA 1980).)
Regarding claims 3 and 9, Kamiya teaches the water dispersion composition , wherein the acid-modified substance (B) is a copolymer of obtained by modifying the ethylene- α-olefin copolymer (A) with at least one selected from maleic acid and maleic anhydride (claim 3).
Regarding claim 4, Kamiya is silent on the viscosity of the water dispersion composition.
However, Kamiya teaches an aqueous dispersion composition, wherein the specific ethylene- α-olefin copolymer (A) and/or its acid-modified substance (B) are well dispersed in water by appropriately controlling the structure of the polymer [0007]-[0008]. Kamiya further teach the water- dispersion composition is suitable as a mold release agent (abstract), coating agents, printing paste and inks [0148]. Furthermore, Kamiya teaches that the water dispersion composition provides improved adhesion, excellent dispersibility and eliminates mist formation ([0003],[0007]), which implies the water dispersion composition requires to have a viscosity and cohesion to remain on the mold surface (mold release agent application). In view of the substantially identical water dispersion composition of Kamiya, which controls the Mw (A3,B3), Mw/Mn (A4,B4), viscosity (A2,B2), acid value (B1) and dispersion stability as taught by the instant application, it would be reasonable to one of ordinary skill in the art to infer that the water dispersion composition of Kamiya will possess the claimed viscosity. Because the PTO does not have proper means to conduct experiments, the burden of proof is now shifted to Applicant to show otherwise. (See In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977); In re Fitzgerald, 205 USPQ 594 (CCPA 1980).)
Regarding claim 5, Kamiya is silent on the particle size of the water dispersion composition.
However, Kamiya teaches an aqueous dispersion composition containing an acid- modified ethylene- α-olefin copolymer (B) which have excellent water dispersibility of the copolymer and stability in an aqueous dispersion ([0012], [0127], [0190], Table 3). In view of the substantially identical water dispersion composition of Kamiya and the substantially identical process, it would be reasonable to one of ordinary skill in the art to infer that the resulting dispersion composition should likewise be substantially identical to the claimed water dispersion composition. Thus, the water dispersion composition of Kamiya will possess the claimed average particle size of the acid modified substance, thereby arriving to the claimed invention. Because the PTO does not have proper means to conduct experiments, the burden of proof is now shifted to Applicant to show otherwise. (See In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977); In re Fitzgerald, 205 USPQ 594 (CCPA 1980).)
Regarding claim 6, Kayima teaches a method for producing the water dispersion composition according to claim 1, wherein water and at least one selected from component (A) and component (B), and additives [0140]-[0147] are mixed using an emulsifying machine such as a homomixer, colloid mill, line mixer, or homogenizer. Examples include a method of emulsifying using a conventional method. The water temperature during emulsification is preferably 40 to 99 ° C, more preferably 50 to 95°C [0138], as required by the instant claim.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OLGA L. DONAHUE whose telephone number is (571)270-1152. The examiner can normally be reached M-F 8:00-5:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, JOSEPH DEL SOLE can be reached at 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/OLGA LUCIA DONAHUE/Examiner, Art Unit 1763
/CATHERINE S BRANCH/Primary Examiner, Art Unit 1763