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 .
Claim Rejections - 35 USC § 102
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.
Claim(s) 1-3 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ishigaki (WO 2020/145206). As the WO document is not in English, citations are made to the attached translation.
Ishigaki teaches an example of a diblock copolymer of polystyrene-polybutyl acrylate having a Mn of 8.3 x 104 and a styrene content of 14.8 mass% (¶ 87). Styrene is a monomer corresponding to claimed monomer of polymer block (A) and polystyrene has a Tg of 90-92˚C as evidenced by Table 1 of the instant specification. A styrene content of 14.8 mass% meets the range of 5-30 mass% polymer block (A) and gives a Mn of about 12,284, which meets the range of claim 3.
Ishigaki teaches measuring the tensile strength using JIS K6251 (¶102) on sheets (¶100) which include examples having a tensile strength of 18 MPa (Table 1). The tensile strength of Ishigaki is not after heat treating for 30 minutes at 130˚C. However, the tensile strength after heat treating for 30 minutes at 130˚C is expected to be about the same as the tensile strength prior to heat treatment. See instant specification, Tables 1-1 and 1-2. Since the tensile strength of the example of Ishigaki is at 18 MPa, it would be expected that heat treatment would not affect the tensile strength very much (as evidenced by the instant specification), and the tensile strength after heating would be about 18 MPa. This meets the claimed range of greater than 14 MPa.
Alternatively, Ishigaki teaches an example having 14.8 mass% styrene and having a butyl acrylate comonomer block (¶ 87). This appears to be substantially the same as instant example 3 which has 14.8 wt% polystyrene block (see instant specification, Table 1-1). Because the copolymer of Ishigaki contains the same monomer blocks (polystyrene and polybutyl acrylate) and has the same mass% of monomers (14.8 mass% polystyrene), the polymer of Ishigaki is substantially the same as the claimed copolymer and would have substantially the same properties, including having a tensile strength after heat treatment in the claimed range. Case law holds that a material and its properties are inseparable. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Claim(s) 1-3 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tsuji (JP 2003-155463). As the JP document is not in English, citations are made to the attached translation.
Tsuji teaches an example of a styrene/butyl acrylate diblock copolymer having a Mn of 131,400 and a styrene:butyl acrylate weight ratio of 30:70 (¶149). This gives a polystyrene block having a Mn of about 39,420. The weight ratio of styrene:butyl acrylate corresponds to a 30 mass% styrene block and a 70 mass% butyl acrylate block, which fall in the claimed ranges. Styrene is a monomer corresponding to claimed monomer of polymer block (A) and polystyrene has a Tg of 90-92˚C as evidenced by Table 1-2 of the instant specification.
Tsuji does not explicitly recite the tensile strength after heat treating for 30 minutes at 130˚C.
Tsuji teaches an example having 30 mass% styrene and having a butyl acrylate comonomer block (¶ 149). This appears to be substantially the same as instant example 11 which has 28.2 wt% polystyrene block (see instant specification, Table 1-1). Because the copolymer of Tsuji contains the same monomer blocks (polystyrene and polybutyl acrylate) and has the substantially the same mass% of monomers (30 mass% polystyrene), the polymer of Tsuji is substantially the same as the claimed copolymer and would have substantially the same properties, including having a tensile strength after heat treatment in the claimed range. Case law holds that a material and its properties are inseparable. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Claim(s) 1-2, 7, 9-13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wang, Journal of Colloid and Interface Science 374 (2012) 54-60.
Wang teaches the formation of butyl acrylate/styrene block copolymers as a latex (abstract) where an example uses a ratio of about 20:5 butyl acrylate:styrene (Tables 1-2) to give the copolymer. This results in the amount of the polybutyl acrylate block of about 80 wt% and the amount of polystyrene block of about 20 wt%. This meets the range of claim 1. Styrene is a monomer corresponding to claimed monomer of polymer block (A) and polystyrene has a Tg of 90-92˚C as evidenced by Table 1 of the instant specification. Wang teaches the latex particles have a diameter of about 200 nm (pg. 58) which meets claim 9.
Wang teaches the latex forms a film which is after being immersed in a bath (pg. 55). A film is a molded body and meets claim 13. Wang does not teach a vulcanizing agent and accelerator are present, meaning their content is 0 mass%. This amount meets the range of claim 12.
While Wang does not explicitly recite “for immersion molded body”, this is a statement of intended use. Case law holds that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP 2111.02, In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ 458, 459 (CCPA 1963). In this case, the copolymer of Wang is capable of being used in immersion molding and there is no structural information provided in the intended use of “for immersion molded body”.
Wang does not explicitly recite the tensile strength after heat treating for 30 minutes at 130˚C.
Wang teaches an example having 20 mass% styrene and having a butyl acrylate comonomer block of 80 mass% (Tables 1-2). This falls between the examples in the instant specification such as Example 10 (having 8.8 mass% polystyrene) and Example 11 (having 28.2 wt% polystyrene block) (see instant specification, Table 1-1). It would be expected that a copolymer having the same monomer blocks (polystyrene and polybutyl acrylate) as the instant invention and having amounts within the amount in the examples would have substantially the same properties, including having a tensile strength after heat treatment in the claimed range. Case law holds that a material and its properties are inseparable. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
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.
Claim(s) 4-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ishigaki (WO 2020/145206) in view of Kaai (US 2020/0002580).
The discussion with respect to Ishigaki above is hereby incorporated by reference.
Ishigaki does not explicitly recite using a polyfunctional monomer.
However, Kaai teaches forming block copolymers having (meth)acrylate monomers (abstract) which can include diacrylates such as hexandiol diacrylate (¶ 50) and crosslinkable units (¶ 70) which are polyfunctional monomer units. Kaai teaches the amount of crosslinkable units are 0.01 mol% or more and 60 mol% or less (¶ 51) or 0.01-20 mol% (¶ 71) which overlap the range of 0.05-10mass% of claim 5. Hexandiol diacrylate (¶ 50) meets the formula (1) of claim 6.
It would have been obvious to one of ordinary skill in the art to use the crosslinking agents of Kaai because it gives high heat resistance and high durability (¶ 51, 71).
Kaai teaches amounts which overlap claimed ranges. It is well settled that where prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See MPEP 2144.05; In re Harris, 409, F3.d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 3d 1379, 1382 (Fed. Cir 1997); In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). In light of the cited patent case law, it would have been obvious to one of ordinary skill in the art to use a range within the claimed range because a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art and Kaai suggests the amounts. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Kaai. See MPEP 2123.
Claim(s) 4-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tsuji (JP 2003-155463) in view of Kaai (US 2020/0002580).
The discussion with respect to Tsuji above is hereby incorporated by reference.
Tsuji does not explicitly recite using a polyfunctional monomer.
However, Kaai teaches forming block copolymers having (meth)acrylate monomers (abstract) which can include diacrylates such as hexandiol diacrylate (¶ 50) and crosslinkable units (¶ 70) which are polyfunctional monomer units. Kaai teaches the amount of crosslinkable units are 0.01 mol% or more and 60 mol% or less (¶ 51) or 0.01-20 mol% (¶ 71) which overlap the range of 0.05-10mass% of claim 5. Hexandiol diacrylate (¶ 50) meets the formula (1) of claim 6.
It would have been obvious to one of ordinary skill in the art to use the crosslinking agents of Kaai because it gives high heat resistance and high durability (¶ 51, 71).
Kaai teaches amounts which overlap claimed ranges. It is well settled that where prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See MPEP 2144.05; In re Harris, 409, F3.d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 3d 1379, 1382 (Fed. Cir 1997); In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). In light of the cited patent case law, it would have been obvious to one of ordinary skill in the art to use a range within the claimed range because a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art and Kaai suggests the amounts. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Kaai. See MPEP 2123.
Allowable Subject Matter
Claim 8 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim 8 recites the copolymer latex contains 20-100 mass% toluene insoluble content.
The prior art discussed above fails to teach this limitation.
Other relevant art includes Kawasaki (JP 2014-169391) and Matsuda (US 2005/0171276). As the JP document is not in English, citations are made to the attached translation.
Kawasaki teaches styrene block copolymers in a latex (¶ 9, 41) where the amount of toluene insoluble material is 8-14 pbm (¶ 42). This falls outside the claimed range.
Matsuda teaches modified copolymer including vinyl aromatic monomers (abstract) which have a toluene insoluble content of 5-75 wt% (¶496). However, Matsuda fails to teach a copolymer as described by claim 1 and a latex as required by claim 7. Therefore, a rejection using Matsuda would be improper.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT C BOYLE whose telephone number is (571)270-7347. The examiner can normally be reached Monday-Thursday, 10am-4pm.
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/ROBERT C BOYLE/Primary Examiner, Art Unit 1764