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 .
Response to Amendment
Applicant preliminary amendment filed 01/26/2024 has been entered and is currently under consideration. Claims 1-17 remain pending in the application.
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-10 in the reply filed on 04/10/2026 is acknowledged. The traversal is on the ground(s) that unity of invention exists between the groups and there is no serious. This is not found persuasive because applicant has provided no evidence to refute the unity of invention analysis set forth in the office action of 03/17/2026.
Applicant argues that the office has not provided any indication that the contents of the claims interpreted in light of the description was considered in making the assertion of a lack of unity and therefore has not met the burden necessary to support the assertion. However, the shared technical feature identified by the office is drawn directly from claim 1.
Applicant asserts that there is a technical relationship that involves the same special technical feature, but neglects to identify said special technical feature that is lacking in the prior art.
Furthermore, in addition to lack of unity of invention, examination of all groups cannot be made without serious burden as the inventions represent different statutory categories of invention, are classified separately, and would require different searches.
The requirement is still deemed proper and is therefore made FINAL.
Claims 11-17 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions, there being no allowable generic or linking claim.
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 2, 6, and 9 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.
The term “poor solvent” in claims 2 and 6 is a relative term which renders the claim indefinite. The term “poor” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
The term “strong acid and strong base” in claim 9 is a relative term which renders the claim indefinite. The term “strong” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
All claims dependent on the above rejected claims are rejected as well because they include all the limitations of the rejected claims.
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) 1-3 and 5-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hayes et al. (US2009/0151772) hereinafter Hayes in view of Hodges (US2014/0088208 of record) hereinafter Hodges.
Regarding claim 1, Hayes teaches:
A method of producing an ionomer resin material ([0037]), comprising a step of extruding a mixture comprising a crude ionomer resin ([0037]), cooling the extruded mixture, and solidifying the crude ionomer resin in the mixture to obtain a material ([0037]; cooling and solidifying the mixture is implied as the extruded ionomer is in melt form during extrusion and solidified by cooling as is common in melt extrusion), wherein the crude ionomer resin comprises a (meth)acrylic acid unit (A), a neutralized (meth)acrylic acid unit (B) and an ethylene unit (C) ([0031]; see below).
Hayes teaches a terionomer derived from an acid terpolymer that comprises copolymerized units derived from an α-olefin (C), α,ß-ethylenically unsaturated carboxylic acid (A), α,B-ethylenically unsaturated carboxylic acid ester (D), and is about 5 to about 90% neutralized with one or more metal ions, i.e. neutralized α,ß-ethylenically unsaturated carboxylic acid (B) (Abstract). A specific example includes terionomer derived from poly(ethylene-co-n-butylacrylate-co-methacrylic acid) comprising 2 wt% copolymerized units of n-butylacrylate (D), 19 wt% of copolymerized units of methacrylic acid, and having 40% of its carboxylic acid content neutralized (i.e. neutralized methacrylic acid) ([0131]). Accordingly, the amount of ethylene unit (C) is 71 wt%.
Accordingly, the moles of ethylene are 2.8 (2.8 = 79/28.05), the moles of n-butylacrylate are 0.016 (0.016 = 2/128.17) and the moles of methacrylic acid are 0.22 (0.22 = 19/86.09).
Therefore, the total moles are 3.036. Therefore, the mol% of n-butylacrylate (D) is 0.53 mol%
(0.53 = 0.016/3.036 X 100) and the mol% of methacrylic acid (A) is 7.25 mol% (7.25 = 0.22/3.036 X 100). Further, given that 40% of carboxylic acid is neutralized, the mol% of neutralized methacrylic acid is 2.9 mol% (2.9 = 7.25 X 40/100). That is, the mol% of methacrylic acid (non-neutralized) (A) is 4.35 mol% (4.35 = 7.25 - 2.9). Therefore, the total amount of methacrylic acid (A) and neutralized methacrylic acid (B) is 7.25 mol% (7.25 = 4.35 + 2.9). The total amount of methacrylic acid (A), neutralized methacrylic acid (B) and n-butylacrylate (D) is 7.78 mol% (7.78 = 4.35 + 2.9 + 0.53).
Hayes does not teach extruding a mixture comprising a crude ionomer resin and a solvent, solidifying the crude ionomer resin in the mixture to obtain a porous particulate, and a porosity of the particulate is 60% or more.
In the same field of endeavor regarding ionomers, Hodges teaches a method of producing an ionomer resin particulate ([0004]) comprising forming a mixture of an ionomer and a solvent ([0035-0036]; applicant specification discloses alcohol as a suitable solvent), cooling the extruded mixture ([0037]), obtaining a porous particulate ([0004]), and a porosity of the particulate is 60% or more ([0031]) for the motivation of improving processability and preserving or enhancing ion exchange properties.
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the method as taught by Hayes to produce porous ionomer particulates as taught by Hodges in order to improve processability and preserve or enhance ion exchange properties.
Regarding claim 2, Hayes in view of Hodges teaches the method of claim 1.
Hodges further teaches wherein the cooling of the extruded mixture is performed by bringing the extruded mixture into contact with a poor solvent ([0039]; applicant specification discloses water as a suitable poor solvent).
Regarding claim 3, Hayes in view of Hodges teaches the method of claim 1.
Hayes in view of Hodges does not explicitly recite wherein pores of the particulate have a median diameter of 0.05 to 1.2 µm.
However, Hodges teaches a range of values for the pore size that overlaps with the claimed range ([0030]).
In the case where the 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, 191 USPQ 90 (CCPA 1976). See MPEP 2144.05.
Since overlapping ranges are evidence of prima facie obviousness, it would have been obvious to one of ordinary skill prior to the effective filing date of the claimed invention to have chosen the portion of the pore size as taught by Hodges that overlaps with the claimed range.
Regarding claim 5, Hayes in view of Hodges teaches the method of claim 1.
Hayes further teaches wherein the crude ionomer resin further comprises a (meth)acrylic acid ester unit (D) ([0024]).
Hayes further teaches wherein a total amount of the unit (A), the unit (B) and n-butylacrylate is from 6 to 10 mol% based on all monomeric units constituting the crude ionomer resin ([0131]; see composition breakdown in art rejection of claim 1 above).
Hayes in view of Hodges does not teach wherein a total amount of the unit (A), the unit (B) and the unit (D) is from 6 to 10 mol% based on all monomeric units constituting the crude ionomer resin.
Hayes in view of Hodges is silent as to the mol amount of (meth)acrylic acid ester unit. However, Hayes further teaches a (meth)acrylic acid ester unit as an alternative to n-butylacrylate ([0024]).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have tried the molar amount of the n-butylacrylate as taught by Hayes in view of Hodges for the molar amount of the (meth)acrylic acid ester unit as taught by Hayes and the results would have been predictable since Hayes teaches a (meth)acrylic acid ester unit as an alternative to n-butylacrylate.
Regarding claim 6, Hayes in view of Hodges teaches the method of claim 2.
Hodges further teaches wherein the poor solvent is water, an alcohol, or a mixed solvent thereof ([0039]).
Regarding claim 7, Hayes in view of Hodges teaches the method of claim 1.
Hodges further teaches washing the obtained porous particulate with a washing liquid ([0044]).
Regarding claim 8, Hayes in view of Hodges teaches the method of claim 7.
Hodges further teaches wherein the washing liquid is water, an alcohol, or a mixed solution thereof ([0044]).
Regarding claim 9, Hayes in view of Hodges teaches the method of claim 1.
Hayes in view of Hodges is silent as to any amount of a salt of a strong acid and a strong base in the ionomer resin particulate.
Therefore one of ordinary skill in the art would understand that Hayes in view of Hodges amount of a salt of a strong acid and a strong base in the ionomer resin particulate is 1000 mg/kg or less as there is no motivation or rationale to include more than 0 mg/kg of a salt of a strong acid and a strong base the ionomer resin particulate based on the prior art teaching.
Regarding claim 10, Hayes in view of Hodges teaches the method of claim 1.
Hayes further teaches wherein an ethylene-(meth)acrylic acid ester copolymer (X) is used as a raw material ([0131]).
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hayes in view of Hodges as applied to claim 1 above, and further in view of Smith (US2019/0030863).
Regarding claim 4, Hayes in view of Hodges teaches the method of claim 1.
Hayes in view of Hodges wherein the particulate is a pellet having a size of 1 to 8 mm.
In the same field of endeavor regarding ionomers, Smith teaches a range of values for ionomer pellet size that overlaps with the claimed range for the motivation of preparing a masterbatch composition ([0123-0125]).
In the case where the 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, 191 USPQ 90 (CCPA 1976). See MPEP 2144.05.
Since overlapping ranges are evidence of prima facie obviousness, it would have been obvious to one of ordinary skill prior to the effective filing date of the claimed invention to have chosen the portion of the pellet size as taught by Smith that overlaps with the claimed range in order to prepare a masterbatch composition.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER A WANG whose telephone number is (571)272-5361. The examiner can normally be reached M-Th 8 am-4 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alison Hindenlang can be reached at 571-270-7001. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALEXANDER A WANG/ Examiner, Art Unit 1741
/ALISON L HINDENLANG/Supervisory Patent Examiner, Art Unit 1741
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