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 . Claims 1-15 are currently pending in the application.
Applicant’s election, without traverse, of Group I election (claims 1-12) and species (a) of claim 1 in the reply filed on 12/2/25 is acknowledged. Claims 1-4 and 6-12 read on the elected invention.
Claims 5, 13-15 are withdrawn from further consideration, pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 Objections
Claims 3, 4 and 11 are objected to because of the following:
Given that claim 1 recites the term “copolymer” twice, i.e., as (a) methacrylate copolymer, and as a component in (b), Applicant is advised to amend claims 3, 4 and 11 to improve clarity, by replacing the term “copolymer” with “methacrylate copolymer (a)”, as supported by the disclosure [0010]-[0017].
Appropriate corrections and/or clarifications are 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:
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 1-4, 6-12 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 claims 1, 3, Tayama teaches an acrylic resin composed of methyl methacrylate (44-88 wt.%), styrene (1-15 wt.%) and (5-15 wt.%) (both read on alkenyl aromatic monomer) maleic anhydride (5-15 wt.%) (reads on (a) methacrylate copolymer) (Ab.).
Tayama is silent on a composition comprising poly(carbonate-siloxane) copolymer as claimed.
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.
The secondary reference to Vollenberg teaches 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). Vollenburg is further open to any PMMA polymer or copolymer being used in the compositions [0036]-[0037].
Given the teaching in Vollenberg on scratch resistant 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 an acrylic resin within the scope of Tayama, and including a poly(carbonate-siloxane) copolymer so as to provide for scratch resistance.
Regarding claim 2, one of ordinary skill in the art would have found it obvious to prepare the composition of instant claim 1 by combining the cited references that teach all the claimed ingredients in claimed amounts, by substantially a similar process as disclosed in the instant specification, and reasonably expect the compositions of overlapping scope resulting from the combination to be capable of providing for the claimed feature(s), absent evidence to the contrary. As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons. In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972).
Regarding claim 4, Tayama teaches an acrylic resin comprising units of methyl methacrylate (44-88 wt.%), styrene (1-15 wt.%) and maleic anhydride (5-15 wt.%), thereby obviating the claimed ranges (Ab.).
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 Tayama’s compositions.
Regarding claim 9, as an initial matter, it is noted that the claim recites - they can be produced from at least one monomer derived from bio-based or plastic waste feedstock, i.e., not a required feature. 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.%) (col. 4, lines 7-18), and other additives, such as UV absorbing agents, a heat stabilizer, a plasticizer, etc. (col. 6, lines 1-10). It would have been obvious to a skilled artisan to include a flame retardant, and optionally, one or more of UV absorbing agent, heat stabilizer and a plasticizer, in amounts depending on the desired level of property improvement, including in amounts within the scope of the claimed invention.
Regarding claim 11, Tayama teaches a composition comprising an acrylic copolymer and a flame retardant (3 to 40 wt.%) as essential components (Ab., col. 4, lines 7-18). Additionally, Vollenberg teaches scratch resistant compositions comprising an acrylic copolymer, and about 1 to 38 wt.% of a poly(carbonate-siloxane) copolymer, thereby obviating the claimed ranges.
Regarding claim 12, Tayama teaches an acrylic resin comprising units of methyl methacrylate (44-88 wt.%), styrene (1-15 wt.%) and maleic anhydride (5-15 wt.%) (reads on (a) methacrylate copolymer), and 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.) and a weight average molecular weight of 10,000 to 100,000 Da [0056], thereby obviating the claimed compositional limitations. Incorporating the discussion from paragraph 11 above, a skilled artisan reasonably expect the compositions of overlapping scope to be capable of providing for the claimed properties, absent evidence to the contrary.
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 Dubois et al. (US 2011/0318515 A1).
The discussions of Tayama and Vollenberg from preceding paragraphs, as applied to claim 1, are incorporated herein by reference.
Although Tayama and Vollenberg are 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 acrylic resin comprising methyl methacrylate units from a methyl methacrylate in which at least a portion of the carbons thereof is of renewable origin or biobased.
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