DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. 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
2. Applicants’ election of Group I (claims 1-10; “a graft copolymer composition”) in the reply filed on 03/23/2026 is acknowledged. Because applicants did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
3. Claims 11-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 03/23/2026.
Claim Objections
4. Claim 1 is objected to because of the following informalities:
As to Claim 1: The applicants are advised to replace “Wherein” with “wherein”.
The applicants are also advised to replace “The” with “the”.
Moreover, the applicants are advised to replace “A” with “a”.
Finally, the applicants are advised to delete the semicolon (;) after the claimed phrase “a rubbery polymer”.
Appropriate corrections are 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.
5. Claims 1-10 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.
As to Claim 1: It recites, among other things, “a core-shell type graft copolymer” (Emphasis added). It is unclear what the metes and bounds of the word “type” is because the present specification merely repeats what is already in the claim without further explanation, guidance or definition (see, for example, paragraphs [0012] and [0013] of applicants’ publication, US PG PUB 2024/0084126). Thus, it is suggested for applicants to amend to “core-shell graft copolymer”. It is also not clear whether the “core-shell type graft copolymer” of the graft copolymer is referring to all the multiple graft copolymers or only one of them.
Moreover, it is not clear whether the core percents (75-90 wt% and 75-85 wt%) and the shell percent (15-25 wt%) recited in claims 1 and 7 are referring to total amount of cores and shells present in the multiple graft copolymers or referring to just the core amount and shell amount present in one graft copolymer of the multiple graft copolymers.
Additionally, it is not clear whether “rubbery particles” recited in claim 1 are referring to the core made of a rubbery polymer recited earlier in the same claim, or something different/additional.
As to Claim 9: It recites, among other things, “count %”. According to paragraph [0078] of the applicants’ publication, US PG PUB 2024/0084126, “This range relates to the range of the suitable number of the rubbery particles having small particle diameters among the rubbery particles dispersed in case of dispersing the graft copolymer composition in a continuous phase including a curable resin”. However, despite this disclosure from the present specification, it is still unclear what specific measurement is being used by the term “count %”.
Clarification in the next response by applicants will be helpful to better ascertaining the scope of these claims.
It is further noted that since claims 2-6, 8 and 10 are directly or ultimately dependent on claim 1 and thus, incorporate all the limitations of claim 1 including those that are indefinite for the reasons set forth above, they are rejected along with claim 1.
Accordingly, the scope of these claims is deemed indefinite.
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.
6. Claims 1, 3-8, and 10 are rejected under 35 U.S.C. 103 as being unpatentable over HAM et al. (US 2017/0190895)1 in view of Ueno et al. (US 2010/0099800).
The claims are directed to a graft copolymer composition comprising a graft copolymer which includes multiple graft copolymers having different core particle diameters, wherein the graft copolymer is a core-shell type graft copolymer, the multiple graft copolymers comprise the core in 75 wt % to 90 wt %, and a number of rubbery particles is from 200 to 500, as observed by enlarging at 15,000 magnification using a transmission electron microscope of a specimen in which 8 parts by weight of a dispersion phase comprising the graft copolymer composition is dispersed based on 100 parts by weight of a continuous phase comprising a curable resin.
The claimed core-shell type graft copolymer also has a core comprising a rubbery polymer and a shell formed by graft polymerizing a graft monomer comprising an alkyl (meth)acrylate-based monomer to the rubbery polymer.
Absent any particular definition of the term “multiple” from the present specification, the claimed multiple graft copolymers are broadly interpreted to include two or more graft copolymers.
Absent any particular definition from the present specification, the claimed rubbery particles will be interpreted as the core-shell type graft copolymer comprising a rubbery polymer-based core.
As to Claims 1, 3-6, 8 and 10: HAM et al. disclose a graft copolymer composition comprising a rubber-modified acrylic graft copolymer including a first rubber-modified acrylic graft copolymer having a core-shell structure and a second rubber-modified acrylic graft copolymer having a core-shell structure, wherein the first rubber-modified acrylic graft copolymer and the second rubber-modified acrylic graft copolymer having different core sizes (Paragraphs [0011] and [0012]), corresponding to the claimed graft copolymer including multiple graft copolymers having different core particle diameters. HAM et al. also disclose that the graft copolymer is a core-shell type copolymer including a core including an acrylic rubbery polymer and a shell formed by grafting at least one vinyl monomer (graft monomer) to the core, wherein the vinyl monomer forming the shell may include at least one of an alkyl (meth)acrylate monomer (Paragraphs [0044]-[0050]). HAM et al. further disclose that the graft copolymers have average core particle diameters of 100-250 nm (which touches the claimed core particle diameter of 250-350 nm) and 251-400 nm (which overlaps with the claimed core particle diameter of 250-350 nm) (Paragraphs [0013], [0060] and [0070]) as required by present claim 8. Moreover, HAM et al. disclose that the acrylic rubber polymer comprises an alkyl acrylate-based monomer unit (Paragraph [0049]), and the vinyl monomer (graft monomer) comprising a methyl (meth)acrylate, C1-C8 alkyl (meth)acrylate-based monomer (inclusive of the claimed alkyl (meth)acrylate of 2-12 carbon atoms), an unsaturated nitrile monomer, e.g., acrylonitrile, an allyl methacrylate (corresponding to the claimed crosslinkable monomer), and an aromatic vinyl monomer, and mixtures thereof (Paragraphs [0050]-[0053] and [0104]) as required by present claims 3-6.
However, HAM et al. do not mention the specific number of rubbery particles as required by claim 1. They also do not mention the particular amounts of core and shell in the graft copolymer as required by claims 1 and 7.
Nevertheless, Ueno et al. disclose the use of rubbery polymer particles dispersed in a dispersion phase comprising a curable resin, such as an epoxy resin, wherein the total number of rubber polymer particles counted is 3 or more observed by a transmission electron microscopy (TEM) photograph, which overlaps with the claimed number of rubbery particles, i.e., 200-500 observed by enlarging the magnification using a transmission electron microscope of a specimen in which 8 parts by weight of a dispersion phase comprising the graft copolymer composition is dispersed based on 100 parts by weight of a continuous phase comprising a curable resin, and these rubbery particles when used in this amount provides a high-quality composition in which the particles are dispersed in and reduces the amount of impurities (Paragraphs [0014]-[0016], [0019], [0033] and [0100]-[0101]). Furthermore, Ueno et al. disclose that these rubbery polymer particles also have a rubbery polymer-based core in an amount of 40-95 wt.% (which overlaps with the claimed 75-90 wt% and 75-85 wt% core) and a (meth)acrylic acid ester-based shell in an amount of 5-60 wt.% (which overlaps with the claimed 15-25 wt% shell) for the purposes of imparting improved toughness and obtaining easy operability (Paragraphs [0039] and [0049]-[0051]). See also MPEP section 2144.05 (The subject matter as a whole would have been obvious to one having ordinary skill in the art at the time the invention was made, since it has been held that choosing the overlapping portion, of the range taught in the prior art and the range claimed by the applicants has been held to be a prima facie case of obviousness.).
Given the above teachings, it would have been obvious to one of ordinary skill in the art to employ the claimed number of rubbery particles comprising specific amounts of the core and shell taught by Ueno et al. in the graft copolymer composition discussed in HAM et al., with a reasonable expectation of successfully providing a high-quality composition in which the particles are dispersed in and reducing the amount of impurities, and also imparting improved toughness and obtaining easy operability.
Correspondence
7. On this record, it is noted that there are no prior art rejections of present claims 2 and 9 at this time.
8. Any inquiry concerning this communication or earlier communications from the examiner should be directed to HANNAH J PAK whose telephone number is (571)270-5456. The examiner can normally be reached 8-5 PM; M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie Lanee 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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/HANNAH J PAK/Primary Examiner, Art Unit 1764
1 Cited in the IDS submitted by applicants on 07/19/2023.
Prosecution Insights