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 .
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.
Priority
This application is a 371 of PCT/EP2021/059882 04/16/2021.
Information Disclosure Statement
The information disclosure statement (IDS), filed on 12/01/23, 02/21/25, and 12/17/25 have been considered. Please refer to Applicant's copy of the 1449 submitted herewith.
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 20, 22-24 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance,
Claims 20, 23 recites the broad recitation “for coating compositions or adhesive bonding compositions”, and the claim also recites “more particularly for paints, textiles, paper, or carpets” which is the narrower statement of the range/limitation.
Claim 22 recites the broad recitation “by radically initiated polymerization”, and the claim also recites “more particularly by emulsion polymerization” which is the narrower statement of the range/limitation
The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claims 23-24 depends from rejected claim 22. Appropriate correction is 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.
The factual inquiries 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.
Claims 12-17, 19-24 are rejected under 35 U.S.C. 103 as being unpatentable over Hashemzadeh (US 2015/0315374; IDS filed on 02/21/25).
Regarding claims 12-13, 22, Hashemzadeh discloses a starch hybrid copolymer composition and its process of preparation in the form of aqueous dispersions or water-redispersible powders (para [0009], [0044], [0077], [0097]), comprising obtaining the starch hybrid copolymer by radically initiated polymerization in aqueous medium of ethylenically unsaturated monomers in the presence of introduced starch (para [0043]-[0044], [0072]-[0078]), wherein the starch hybrid copolymer is 1 to 50 wt% (para [0113]), overlapping claimed range of ≥20 wt%, based on the dry weight of starch hybrid copolymer, on cold water soluble starch, wherein ethylenically unsaturated monomers comprising copolymers of 30 to 75 wt% vinyl acetate with 1% to 40% by weight of ethylene and 1% to 30% by weight of vinyl laurate, and the auxiliary monomers such as N-methylolacrylamide in an amount of 0.1 to 10 wt% (para [0040]-[0041], [0099]-[0101]), overlap claimed 50 to 90 wt% of vinyl acetate and read on claimed N-methylol compound and ethylene.
A prima facie case of obviousness exists for the copolymer composition, wherein Hashemzadeh discloses the starch hybrid copolymer is 1 to 50 wt% and 30 to 75 wt% vinyl acetate, and 1% to 30% by weight of vinyl laurate, overlapping the requirement of claim 12. See In re Wertheim regarding prima facie cases with overlapping ranges (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) See MPEP § 2144.05).
Regarding claim 14, Hashemzadeh discloses the ethylenically unsaturated monomers comprising copolymers of 30 to 75 wt% vinyl acetate and 1% to 30% by weight of vinyl laurate, and the auxiliary monomers such as N-methylolacrylamide in an amount of 0.1 to 5 wt% (para [0040]-[0041], [0099]-[0101]), overlap claimed 60 to 95 wt% vinyl ester, and 1 to 40% by weight of ethylene encompassing claimed 2 to 30% by weight of ethylene.
A prima facie case of obviousness exists for the copolymer composition, wherein Hashemzadeh discloses the ethylenically unsaturated monomers comprising copolymers of 30 to 75 wt% vinyl acetate, 1% to 40% by weight of ethylene and 1% to 30% by weight of vinyl laurate, and the auxiliary monomers such as N-methylolacrylamide in an amount of 0.1 to 5 wt%, overlapping the requirement of claim 14, and 1 to 40% by weight of ethylene encompassing the requirement of claim 14. It is well-settled that where 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, 267 (CCPA 1976).
Regarding claim 15, Hashemzadeh further discloses the unsaturated carboxylic acids or vinylsulfonic acids (para [0043]).
Regarding claim 16, Hashemzadeh discloses 10 to 75 wt% on ethylenically unsaturated monomers (para [0033]), overlapping claimed 20 to 80 wt%, based on the dry weight of the starch hybrid copolymers.
A prima facie case of obviousness exists for the copolymer composition, wherein Hashemzadeh discloses 10 to 75 wt% on ethylenically unsaturated monomers, overlapping the requirement of claim 16. See In re Wertheim regarding prima facie cases with overlapping ranges (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) See MPEP § 2144.05).
Regarding claim 17, Hashemzadeh discloses the water-soluble polymer such as starch has a solubility of at least 10 g/l in water at a temperature between 20 °C and 90 °C (para [0042]-[0044]), encompassing claimed range of temperature 23 °C.
A prima facie case of obviousness exists for the copolymer composition, wherein Hashemzadeh disclose temperature between 20 °C and 90 °C, encompassing the requirement of claim 17. It is well-settled that where 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, 267 (CCPA 1976).
Regarding claim 19, Hashemzadeh discloses the fraction of the cold-water-
soluble starch, based on the total weight of the starch included overall, is ≥ 50 wt% (para [0082]).
Regarding claims 20-21, 23-24, Hashemzadeh discloses the use of the composition in adhesives for textiles, paints or paper coatings (para [0119]),
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Hashemzadeh as applied to claim 12 above, and further in view of Helbling (US 2005/0061203).
Hashemzadeh includes the features of claim 12 above.
Regarding claim 18, Hashemzadeh does not disclose the cold-water-soluble starch has Brookfield viscosities of 10 to 5000 mPas (determined with a Brookfield viscometer at 23°C, 20 rpm and a solids content in water of 50%).
However, Helbling discloses a water soluble starch dispersion as suitable coating application wherein starch dispersions having a solids content of at least 25% by weight is less than 4,000 mPa.s, measured at 23°C using a Brookfield RVT viscosimeter at a spindle speed of 20 rpm (para [0006]-[0009], [0021], [0066]-[0067]), overlapping claimed range of 10 to 5000 mPa.s and encompassing claimed range of solid content of 50%. Helbling further discloses such low-viscosity starch system provides stable formulation for suitable coating compositions (para [0007], [0012], [0021]).
It would have been obvious to one with ordinary skill, in the art at the time of invention to employ starch having Brookfield viscosity characteristics as taught by Helbling. The rationale to do so would have been motivation provided by of Helbling discloses that to do so would provide stable formulation for suitable coating compositions.
A prima facie case of obviousness exists for the copolymer composition, wherein Helbling discloses less than 4,000 mPa.s, overlapping the requirement of claim 18, and solids content of at least 25% by weight, encompassing the requirement of claim 18. It is well-settled that where 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, 267 (CCPA 1976).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KUMAR R BHUSHAN whose telephone number is (313)446-4807. The examiner can normally be reached 9.00 AM to 5.50 PM (EST).
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/KUMAR R BHUSHAN/Primary Examiner, Art Unit 1766
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