DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 5/29/26 has been entered.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . Per amendment dated 5/29/26, claims 1, 5-10, 12-15 are currently pending in the application, with claims 5, 13-15 being withdrawn from further consideration, pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim..
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 10 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 10 recites the limitation “the polycarbonate composition”. There is insufficient antecedent basis for this limitation in the claim.
For the purpose of examination and applying prior art, Examiner interprets the weight basis as being the total weight of the composition (of claim 1).
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.
Claims 1, 6-10, 12 are rejected under 35 U.S.C. 103 as being unpatentable over Vollenberg et al. (US 2020/0339797 A1) (of record), in view of Marutani et al. (US 20030013829 A1).
Regarding claim 1, Vollenberg teaches thermoplastic compositions comprising about 62 wt. % to about 99 wt. % poly(methyl methacrylate) (PMMA) or copolymers thereof, and about 1 to about 38 wt.% of a poly(carbonate-siloxane) copolymer having a siloxane content of about 25 to 45 wt.% (Ab., [0058], Examples, ref. claims). Thus, the PMMA copolymer amount, the poly(carbonate-siloxane) copolymer amount and the siloxane amount therein all overlap with the claimed ranges.
Vollenberg is open to any suitable PMMA polymer or copolymer [0036]-[0037], and use of the compositions in forming molded articles [0074]-[0078], and that in some aspects, the composition may have a transparency of at least about 80% [0064].
Vollenburg is silent on a composition comprising a methacrylate copolymer consisting of claimed repeating units within the claimed ranges and said composition providing for a molded sample having one or more of the claimed properties.
Maruntani teaches methacrylic copolymers for forming molded articles having excellent transparency and heat resistance, formed from 70 to 95% by weight of methyl methacrylate, from 0 to 15% by weight of a-methylstyrene, from 0 to 20% by weight of styrene and from 2 to 15% by weight of maleic anhydride at a molar ratio of the sum of a-methylstyrene, and styrene to maleic anhydride laying within the range of 1.0 to 2.5 (Ab., [0001], [0036], ref. claims ).
Disclosed Example 5 is drawn to a copolymer formed from a monomer mixture consisting of methyl methacrylate (77 wt.%), styrene (13 wt.%) and maleic anhydride (10 wt.%) and has a heat distortion temperature of 116oC (Table 1)
Given the teaching in Marutani on advantages of the disclosed methacrylic copolymers, and the teaching in Vollenberg on the scope of poly(carbonate-siloxane) copolymer, on PMMA (co)polymer and amounts thereof for forming the compositions, it would have been obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention, to prepare a composition comprising a Marutani’s methacrylic copolymer consisting of claimed monomer units and a poly(carbonate-siloxane) copolymer, including those that fall within the scope of the present invention.
Although the cited references are silent on one or more of the claimed properties in a molded sample and noting that the claims are drawn to a composition, a skilled artisan would reasonably expect compositions of overlapping scope resulting from the combination and comprising the same components as those of the claimed invention, to be capable of providing a molded sample having for one or more of the claimed properties on the basis that materials and their properties are inseparable, absent objective evidence to the contrary. Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. Inherency may meet a missing claim limitation when the limitation is the natural result of the combination of prior art elements. See MPEP 2112 and 2112.01.
Regarding claims 6 and 7, Vollenberg teaches poly(carbonate-siloxane) copolymers wherein the carbonate units may be derived from bisphenol A [0038], [0043], and the siloxane units may be poly(dimethyl siloxane) units [0051], wherein said copolymers may have a weight average molecular weight of 10,000 to 100,000 Da [0056].
Regarding claim 8, Vollenberg teaches a poly(carbonate-siloxane) copolymer having a siloxane content of about 25 to 45 wt.% (Ab.). Thus, it would have been obvious to include a poly(carbonate-siloxane) copolymer having any siloxane content within the prescribed range in the resin compositions, including those with greater than 30% siloxane content.
Regarding claim 9, as an initial matter, it is noted that the claim recites - can be produced from at least one monomer derived from bio-based or plastic waste feedstock, i.e., not a required feature, and methyl methacrylate units of Marutani’s polymers can be produced from a bios-based feedstock. Even so, product-by-process claims are not limited to the manipulations of the recited steps, only to the structure implied by the steps. If the product in a product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the product was made by a different process. See MPEP 2113 (I).
Regarding claim 10, Vollenberg teaches that various additives, such as thermal/heat stabilizers (e.g., hindered phenols and phosphites), UV stabilizers etc. may be included the disclosed composition [0065]-[0067]. Additionally, exemplified embodiments include stabilizers (a hindered phenol and a phosphite) within the claimed range. As such, it would have been within the level of ordinary skill in the art to utilize such additives in appropriately effective amounts depending on the desired level of stabilization, including in amounts as claimed, absent evidence to the contrary.
Regarding claim 12, Vollenberg teaches compositions comprising methyl methacrylate (co)polymers and about 1 to about 38 wt.% of a poly(carbonate-siloxane) copolymer having a siloxane content of about 25 to 45 wt.% (Ab.), a weight average molecular weight of 10,000 to 100,000 Da [0056]. Vollenberg further teaches poly(carbonate-siloxane) copolymers wherein the carbonate units may be derived from bisphenol A [0038], [0043], and the siloxane units may be poly(dimethyl siloxane) units [0051].
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Vollenberg et al. (US 2020/0339797 A1, of record) in view of Marutani et al. (US 20030013829 A1) and Dubois et al. (US 2011/0318515 A1, of record).
The discussions of Vollenberg and Marutani from preceding paragraphs, as applied to claim 1, are incorporated herein by reference.
Although the Vollenberg-Marutani combination is silent on the claimed limitation, the secondary reference to Dubois teaches biomass derived methyl methacrylate characterized in that at least one portion of the carbons thereof is biologically sourced (Title, Ab.), with biomass-derived starting materials having a smaller impact on the environment and global warming, and use thereof in polymers [0009]-[0013]. Thus, it would have been obvious to one of ordinary skill in the art, as of the effective filing date if the claimed invention, to one of ordinary skill in the art to prepare Marutani’s methacrylate copolymer comprising methyl methacrylate units from a methyl methacrylate in which at least a portion of the carbons thereof is of renewable origin or biobased.
Response to Arguments
In view of the amendment dated 5/29/26, the rejections of record are all withdrawn. Applicants arguments on Tayama and Vollenberg references have been considered but are moot because the new grounds of rejection above does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Any inquiry concerning this communication or earlier communications from the
examiner should be directed to Satya Sastri at (571) 272 1112. The examiner can be reached Monday-Friday, 9AM-5.30PM (EST). If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Mr. Robert Jones can be reached at (571)-270-7733. The fax phone number for the organization where this application or proceeding is assigned is (571) 273 8300.
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/Satya B Sastri/
Primary Examiner, Art Unit 1762
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