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 .
DETAILED ACTION
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.
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 pre-AIA the applicant regards as the invention.
Claim 1 is rejected as being vague and indefinite when this claim recites "wherein a coating film after baking at 80°C has a pure water contact angle of 40° to 90°”, because the definition of the coating film is not clear; it could be a coating film formed from the aqueous dispersion, a coating film formed from an acid-modified polyolefin resin, or a coating film formed from other polymer resins. In this office action, it is taken that the coating film is formed from the aqueous dispersion as recited. Claims 2-10 are also rejected for depending from claim 1, thus inclusion of its indefinite features.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-5 and 7-10 are rejected under 35 U.S.C. 103 as being unpatentable over Namba et al (US 5,534,577, of record, IDS 08/31/23, ‘577 hereafter).
Regarding claims 1 and 4-5, ‘577 discloses an aqueous dispersion comprising an acid-modified polyolefin resin, which is a propylene-α-olefin copolymer having a butene in the content of 2 to 35 mass% (C7/L35-L46, Trial Production Examples 1 and 2, C13/L59-C14/L30, Examples 14 and 15, Table 1 and 2); a nitrogen-containing non-ionic emulsifier having polyoxyethylene structure and alkyl group satisfying present claims 4 and 5 (C9/L10-L49, Examples 14 and 15, Tables 1 and 2, Surfactant F is Lauryl (C12 alkyl)-amine ethylene-oxide-propylene oxide, and G is Myristyl (C14 alkyl)-amine ethylene-oxide-propylene-oxide); and water (C14/L60-L67, Examples). ’577 does not expressly set forth the coating film formed from the dispersion after baking at 80° C having a pure water contact angle of 40° to 90°. However, as discussed above, ‘577 discloses an aqueous dispersion comprising an acid-modified polyolefin resin and a nitrogen-containing non-ionic emulsifier being substantially identical to the aqueous dispersion as presently claimed, thus it is reasonable to expect that the coating film of ‘577 would have possessed the same surface properties including the pure water contact angle in the presently claimed range, in absence of an objective showing to the contrary. Case law holds that “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.” (In re Best, 562 F.2d 1252, 1255 n.4, 195 USPQ 430, 433 n.4 (CCPA 1977).
Regarding claim 2, ‘577 discloses that the average molecular weight of the acid modified polyolefin resin can be in a range of 2000 to 100,000, specifically a number average molecular weight (Mn) is 68,000 as in Tral Product Example 2 (C7/L35-L46, C14/L20), which render the weight average molecular weight (Mw) of the acid modified polyolefin resin satisfying presently claimed range of 50,000 to 150,000 (The molecular weight distribution Mw/Mn of a polymer formed from radical polymerization is generally 1.3 or higher).
Regarding claim 3, ‘577 discloses that the acid-modified polyolefin resin can be chlorinated (C7/L47-L570, Trial Production Example 3).
Regarding claims 7-10, ‘577 discloses that the aqueous dispersion can be used as a binder resin in a paint or adhesive composition, which forms a coating film or a laminate after aqueous medium is removed (C13/L19-L52).
Claims 2 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Namba et al (US 5,534,577, of record, IDS 08/31/23, ‘577 hereafter) in view of Kashihara et al (US 2008/0262137, ‘137 hereafter).
Regarding claims 2 and 6, ‘577 teaches all the limitations of claim 1, ‘577 also discloses that the average molecular weight of the acid modified polyolefin resin can be in a range of 2000 to 100,000 (C7/L35-L46), but does not specifically set forth that the average molecular weight is a weight average molecular weight. However, in the same field of endeavor, ‘137 discloses an aqueous dispersion comprising an acid-modified polyolefin resin ([0010]-[0011], [0021]), and non-ionic emulsifier having polyoxyethylene structure and alkyl group ( [0011]), to provide excellent properties without complicated processing steps ([0010]); wherein the weight average molecular weight is in a range of 37,000 to 150,000 ([0011], [0021], Production Example 1 and 2), which significantly overlaps instantly claimed range of 50,000 to 15,000, and render the dispersion having a Z-average particle size falling within presently claimed range as in claim 6 ([0039], [0042], Z-average particle size is 82 nm). ‘577 also discloses that the weight average molecular weight in this range provides a good balance between adherence and dispersibility of the aqueous dispersion ([0021]). In light of these teachings, one of ordinary skill in the art would have been motivated to use an acid modified polyolefin resin having the weight average molecular weight as taught by ‘137, to render an aqueous dispersion having a desired balance of adherence and dispersibility.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RUIYUN ZHANG whose telephone number is (571)270-7934. The examiner can normally be reached on 8:00-5:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arron Austin can be reached on 571-272-8935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RUIYUN ZHANG/Primary Examiner, Art Unit 1782
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