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 .
Election/Restrictions
Applicant's election with traverse of Group I, Claims 1-9 and 12 in the reply filed on 2/3/2026 is acknowledged. The traversal is on the ground(s) that US20240052139 to DeDecker teaches guayule rubber which is not “obtained by free-radical emulsion polymerization” set forth in claim 1. This is not found persuasive because “obtained by free-radical emulsion polymerization” is considered a product-by-process claim. Case law has held that the “obtained by free-radical emulsion polymerization” does not determine patentability, because the claim is drawn to the product (particles of a latex polymer). "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." (In re Thorpe, 227 USPQ 964,966). Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious different between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983), MPEP 2113.
The traversal is further on the ground(s) that US20240052139 to DeDecker does not teach a polymer latex composition. This is not persuasive as DeDecker states the guayule rubber is in latex form [0060].
The traversal is further on the ground(s) that the groups have unity. This is not persuasive as these groups require the technical feature of a composition as set forth in claim 1, and this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of DeDecker.
The requirement is still deemed proper and is therefore made FINAL.
Claims 10-11 and 13-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Groups II - IV, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 2/9/2026.
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.
Claim(s) 4-6 and 9 is/are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as failing to set forth the subject matter which the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the applicant regards as the invention because:
Claim 4 recites the limitation “the at least one additional functional group (IV-b)” and “the first silane compound (IV)”. There is insufficient antecedent basis for this limitation in the claim. As it is unclear what these refer too, the claim will be interpreted as being removed from claim 3.
Claim 5 is indefinite because it recites “wherein the bond formed by the reaction of the functional groups (I-a) and the functional groups (V-b), and/or wherein”. This limitation is unclear and therefore will be interpreted as being removed and read as “of the latex polymer (I), and/or wherein the mass ratio..”.
Claims 6 and 9 are rejected as being dependent on a under 35 U.S.C. 112(b) rejected claim.
Claim(s) 1-4, 7-8, and 12 is/are rejected under 35 U.S.C. 102(a)(1) and/or (a)(2) as being anticipated over US2018/0030190 to Mosaki et al. (as found in the international search report on the IDS dated 9/12/2023).
Regarding claim 1-3 and 7-8, Mosaki teaches a nitrile rubber composition [title] as a latex [0048] comprising a nitrile rubber [0017] comprising 5-60 wt% unsaturated nitrile monomer units [0020] that are preferably methacrylonitrile [0019], and 1-80 wt% of diene [0030] that is preferably butadiene [0029], and a carboxyl group containing monomer [0021] such as acrylic acid [0023] (i.e., functional group (I-a) is a carboxylic acid) thereby reading on the limitations of component (I) of claims 1, 2, and 7-8. Mosaki’s composition further comprises a coupling agent such as bis (3-triethoxysilylpropyl)disulfide [0060] reading on (II) and two terminal silane function groups (triethoxysilylpropyl) and a thermally reversible bond (disulfide) of claim 1-2 and the structure of claim 3 wherein R is an alkoxy and X is a disulfide.
Regarding Claim(s) 4, the functional group (III) of claim 3 is considered an optional embodiment because claim 3 depends from claim 1 , and claim 1 recites a Markush group for the polymer latex composition including a silane compound (II) or a silane compound (III). Mosaki teaches the polymer latex composition of claim 1 comprising silane compound (II) [0060]. As such, the limitation of claim 4 is considered to be met because claim 4 is further narrowing an optional embodiment (silane compound (II)) and claim 1 is rejected by a different silane compound (silane compound (II)).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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) 5-6, 9 and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over US2018/0030190 to Mosaki et al.
Regarding claims 5 and 6, Mosaki teaches the polymer latex composition of claim 1 as set forth above and incorporated herein by reference, further teaching a plurality of silane coupling agents may be used, such as (glycidoxypropyl)trimethoxysilane [0060] thereby reading on silane compound (V) comprising one terminal silane group and (V-b) of claims 5 and 6.
Mosaki is silent regarding the mass ratio of silane compound (II) to silane compound (V) is from 100:1 to 1:100.
However, [w]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 105, 105 USPQ 233 (CCPA 1955) (MPEP 2144.05) Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to optimize the amounts of silane coupling agent so that the dispersibility of the white filler is improved [0060]. A prima facie case of obviousness may be rebutted, however, where the results of the optimizing variable, which is known to be result-effective, are unexpectedly good. In re Boesch and Slaney, 617 F.2d 272, 205, 205 USPQ 215 (CCPA 1980) (MPEP 2144.05(II)).
Regarding Claim(s) 9, Mosaki teaches the polymer latex composition of claim 6, wherein the functional group (I-a) is selected from carboxylic acid (via acrylic acid [0023]) and the functional group (V-b) are selected from epoxy (via (glycidoxypropyl) trimethoxysilane [0060]).
Regarding claim 12, The recitation “A compounded polymer latex composition suitable for the production of dip-molded articles” is intended use. Case law has held that a recitation with respect to the manner in which a claimed apparatus is intended to be used does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations Ex Parte Masham, 2 USPQ2d 1647 (1987). Since Mosaki have the same structural limitations as the resin molding material in the instant claim, the composition of Mosaki can be used for dip-molded articles.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner
should be directed to Devin Darling whose telephone number is (703) 756-5411. The examiner can normally be reached M-F 9:00-5:00.
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/DEVIN MITCHELL DARLING/Examiner, Art Unit 1764
/ARRIE L REUTHER/Supervisory Primary Examiner, Art Unit 1764
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