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
Response to Amendment
Applicant's amendments filed on 08/01/2026 have been entered. Claims 1-3 and 5-10 are currently under examination on the merits.
Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn.
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 1-3, 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) in view of Nagaoka et al (US 2011/0112229, ‘229 hereafter).
Regarding claims 1 and 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, specifically a nitrogen-containing non-ionic emulsifier having both polyoxyethylene and polyoxypropylene structure as in examples (C9/L10-L49, Examples). ‘577 does not specifically set forth that the nitrogen-containing non-ionic emulsifier having polyoxyethylene structure and alkyl group is a emulsifier that does not contain polyoxypropylene structure; however, in the same filed of endeavor, ‘229 discloses an aqueous dispersion comprising an acid-modified polyolefin resin ([0012]-[0020], [0041]-[0042], [0046]-[0047]), wherein an nitrogen-containing compound having polyoxyalkyl structure, including polyoxyethylene, polyoxypropylene, and polyoxyethylene-polyoxypropylene, can be used as a non-ionic emulsifier ([0016-[0019], [0070]-[0078], Examples) to render an aqueous dispersion having excellent dispersibility of resin component and dispersion stability ([0026]). In view of ‘229’s recognition that nitrogen-containing compounds having polyoxyalkyl structure, including polyoxyethylene, polyoxypropylene, and polyoxyethylene- polyoxypropylene are equivalent and interchangeable, a person of ordinary skill would have been motivated to substitute a nitrogen-containing compound having polyoxyethylene-polyoxypropylene structure with a nitrogen-containing compound having polyoxyethylene structure, thereby arriving at the presently claimed invention. Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See MPEP 2144.06". modified ’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, modified ‘577 fairly suggests an aqueous dispersion comprising an acid-modified polyolefin resin and 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, modified ‘577, teaches all the limitation of claim 1, ‘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). In addition, ‘229 discloses that the weight average molecular weight of the acid modified polyolefin resin can be in a preferred range of 30,000 to 300,000 ([0040]).
Regarding claim 3, modified ‘577 teaches all the limitation of claim 1, ‘577 also discloses that the acid-modified polyolefin resin can be chlorinated (C7/L47-L570, Trial Production Example 3).
Regarding claim 6, modified ‘577 teaches all the limitation of claim 1, ‘229 also discloses that the Z-average particles size of the dispersion is in the range of 80 to 250 nm ([0129] and Table 1)
Regarding claims 7-10, modified ‘577 teaches all the limitation of claim 1, ‘577 also 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 Nagaoka et al (US 2011/0112229, ‘’229 hereafter),as applied to claim 1 above, further in view of Kashihara et al (US 2008/0262137, ‘137 hereafter).
Regarding claims 2 and 6, modified ‘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.
Response to Arguments
Applicant's arguments filed on 08/01/2026 have been fully considered but they are moot in view of the new grounds of rejection in light of Applicant's amendment.
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 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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