DETAILED ACTION
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Per amendment dated 4/20/26, claims 1, 5-10, 12-15 are currently pending in the application, with claims 5, 13-15 being withdrawn from further consideration, pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 Objection
Claim 12 is objected to because of the following informality:
Claim 12 depends on canceled claim 11. Based on the amendment that incorporates limitation of canceled claim 11 into claim 1, for the purpose of examination, Examiner interprets claim 12 to depend on claim 1.
Appropriate correction and/or clarification is required.
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:
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 Tayama et al. (US 4,533,689) in view of Vollenberg et al. (US 2020/0339797 A1) (references of record).
Regarding claim 1, Tayama teaches an acrylic resin composition comprising a polymer and a flame retardant, wherein said polymer is composed of methyl methacrylate (44-88 wt.%), styrene (5-15 wt.%), a-methyl styrene (1-15 wt.%), maleic anhydride (5-15 wt.%), and methacrylic acid (1 to 15 wt.%) (Ab., ref. claims ).
Tayama teaches compositions comprising the polymer and the flame retardant as essential components, wherein said flame retardant may be a halogenated flame retardant, e.g., a halogenated polyphosphonate. The amount of a halogenated flame retardant may be varied depending on the degree of flame resistance required, but usually ranges from 3 to 40% by wt. of the resin product formed, with a synergistic effect obtained when an acid phosphate is used at 0.1 to 8 wt.% of the composition in combination with the halogenated polyphosphonate (col. 3, lines 64-col. 4, line 54). Thus, Tayama’s compositions may include a flame retardant advantageously in an amount as low as 3.1 wt.% of the composition, and acrylic resin compositions for producing molded products (col. 8, lines 12-17, Examples).
Tayama is silent on a composition comprising (1) an acrylic resin consisting essentially of claimed units in claimed amounts, (2) a poly(carbonate-siloxane) copolymer, and (3) a molded sample thereof having one or more of the claimed properties.
At the outset, it is noted that 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). See MPEP § 2144.05.
Regarding (1), Tayama’s polymers include units of methyl methacrylate (44-88 wt.%), styrene (1-15 wt.%) and maleic anhydride (5-15 wt.%) that overlap in scope with those of the claimed invention, in addition to units of methyl styrene (1-15 wt.%) and methacrylic acid (1 to 15 wt.%). There is no particular restriction on the process for preparing the composition, and teaches a method wherein a copolymer is blended with a flame retardant (col. 4-5, bridging paragraph).
The transitional phrase “consisting essentially of”, as recited for the methacrylate copolymer of claim limits the scope of a claim to the specified materials or steps “and those that do not materially affect the basic and novel characteristic(s)” of the claimed invention. In re Herz, 537 F.2d 549, 551-52, 190 USPQ 461, 463 (CCPA 1976) (emphasis in original). However, for the purposes of searching for and applying prior art under 35 U.S.C. 102 and 103, absent a clear indication in the specification or claims of what the basic and novel characteristics actually are, “consisting essentially of” will be construed as equivalent to “comprising.” See, e.g., PPG, 156 F.3d at 1355, 48 USPQ2d at 1355.
Regarding (2), in a related field of endeavor, the secondary reference to Vollenberg teaches thermoplastic compositions comprising poly(meth)methacrylate 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.% as being scratch resistant, in particular, having desirable balance of scratch resistance and mechanical properties (Ab., [0058], Examples). Any PMMA polymer or copolymer may be used in the compositions [0036]-[0037], for use in forming molded articles. Thus, Vollenberg prescribes poly(carbonate-siloxane) copolymers in an overlapping amount and having an overlapping amount of siloxane, for use with PMMA (co)polymers.
In view of the teaching in Vollenberg on advantages of poly(carbonate-siloxane) copolymer, and given the teaching in Tayama on suitable polymers for preparing the acrylic resin 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 polymer, a flame retardant and a poly(carbonate-siloxane) copolymer, including those within the scope of the claimed invention. For instance, a composition based on the cited combination, comprising a polymer (75 wt.%), a flame retardant (5 wt.%), and poly(carbonate-siloxane) copolymer (20 wt.%), wherein said polymer has units of methyl methacrylate (79 wt.%), styrene (14 wt.%), a-methyl styrene (1 wt.%), maleic anhydride (5 wt.%) and methacrylic acid ( 1 wt.%) would fall within the scope of the claimed invention.
If applicant contends that additional steps or materials in the prior art are excluded by the recitation of "consisting essentially of," applicant has the burden of showing that the introduction of additional steps or components, i.e., in this instance, methyl styrene and methacrylic acid units in the polymer, each of which may be present in an amount as low as 1 wt.%, would materially change the characteristics of the claimed invention. In re De Lajarte, 337 F.2d 870, 143 USPQ 256 (CCPA 1964). See also Ex parte Hoffman, 12 USPQ2d 1061, 1063-64 (Bd. Pat. App. & Inter. 1989).
Regarding (3), although the cited references are silent on one or more of the claimed properties in a molded sample, noting that the claims are drawn to a composition and that the compositions of the present invention can be manufactured by various methods known in the art (specification -[0060]), a skilled artisan would reasonably expect compositions of overlapping scope to be capable of providing for one or more of the claimed properties, 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, including those with greater than 30% siloxane content, in the resin compositions.
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 Tayama’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, Tayama teaches resin compositions comprising a halogen-containing flame retardant (3-40 wt.%) and an acid phosphate at 0.1 to 8 wt.% of the composition (col. 3, lines 64-col. 4, line 54). That is, the resin compositions may include a flame retardant combination (reads on additive composition) in an amount as low as 3.1% of the composition, alone, or in combination with one of more of other additives, such as UV absorbing agents, a heat stabilizer, a plasticizer, etc., in amounts depending on the desired level of property improvement, including in amounts within the scope of the claimed invention (col. 6, lines 1-10).
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 Tayama et al. (US 4,533,689, of record) in view of Vollenberg et al. (US 2020/0339797 A1, of record) and further in the view of Dubois et al. (US 2011/0318515 A1).
The discussions on Tayama and Vollenberg from preceding paragraphs, as applied to claim 1, are incorporated herein by reference.
Although the Tayama-Vollenberg combination is silent on the claimed limitation, the secondary reference to Dubois teaches methyl methacrylate characterized in that at least one portion of the carbons thereof is biologically sourced (Ab.), with biomass-derived starting materials having a smaller impact on the environment and global warming [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 Tayama’s polymer 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 4/20/26, the rejections of record are withdrawn and new grounds of rejections are presented herein above, relying on the art of record.
Applicant argues that amended claim 1 now recites a methacrylate copolymer consisting essentially of repeating units derived from 70 to 80 weight percent methyl methacrylate, 10 to 20 weight percent styrene, and 5 to 15 weight percent maleic anhydride and that Tayama no longer teaches the claimed polymer because Tayama’s polymer requires additional a-methyl styrene and methacrylic acid components, together with a flame retardant.
In response, the discussions on the transitional phrase “consisting essentially of” from the rejections set forth above are incorporated herein by reference. For reasons stated therein, Tayama would still be applicable as prior art despite the teaching therein polymers including monomer units in addition those of the claimed invention. As for the flame-retardant (i.e. an additive) that is essential in Tayama’s compositions, it is noted that claim 1 recites the transitional phrase “comprising”, and is therefore, open to other unrecited components therein. Moreover, the composition of claim 10 includes an additive composition in an amount of 0.1 to 10 wt.%, and per instant disclosure [0038], the disclosed genus of additives which do not adversely affect the properties, such as scratch resistance and impact resistance, include a flame retardant.
Applicant argues that Tayama and Vollenberg are silent on the property limitations recited in amended claim 1, which are achieved through careful selection of the acrylate-containing copolymer together with the poly(carbonate-siloxane).
In response, although the references are silent on the claimed one or more properties, the compositions resulting from the combined teachings of Tayama and Vollenberg overlap in scope with those of the claimed invention for reasons stated in the rejection above. As stated above, 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.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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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