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 without traverse of Group I, butyl methacrylate, sodium dioctyl sulfosuccinate, no additional graft copolymer with core/shell in the reply filed on 2/16/26 is acknowledged.
Claims 7, 16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group/species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 2/16/26.
Priority
The foreign priority is not in English, thus the claims have an effective date of the filing of the PCT: 12/10/21
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 7/18/25, 6/9/23 have been considered by the examiner.
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 8, and its dependents, is 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.
Claim 8 does not have units attached to the MW and is thus indefinite
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-6, 8-9 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Sato (US 2012/0142796).
Sato discloses foam molding compositions (title). Said compositions comprise a (meth)acrylic powder polymer having a MW of 2-7 million (abstract). The acrylic polymer is exemplified to have 70 parts methyl methacrylate and 30 parts butyl acrylate, or, 90 parts methyl methacrylate and 10 parts butyl acrylate (both Example 1, table 1). The end product acrylic resin is exemplified to have 0.673 wt% of an emulsifier per 100% resin [0083]. The polymer is made and then spray dried, thus, the emulsifier remains in the resin [0083]. The emulsifier is exemplified to be sodium dodecylbenzenesulfonate [0081] (meeting the claimed ionic emulsifier).
The above anticipates the claimed acrylic resin composition.
The limitation “for use in film production” is a recitation of the future intended use. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Elements above anticipate claims 1-4 (meeting the alkyl benzene sulfonate salt of claim 4). [0070] discloses the use of dialkyl sulfosuccinates, swapping such with the exemplified emulsifier is only picking one element from a list, alternatively anticipating the elected species of claim 4. Elements above anticipate claims 5-6, the MW of Ex 1 polymers are 68k and 3.8 million (table 1), anticipating claim 8.
The ”for use” of claim 9 being drawn to the future intended use. If the above composition were to be used for a film such would be capable of achieving the claimed properties.
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.
Claim(s) 1-6, 9-15, 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Abe (JP2019006865 reference of record, English translation included).
Abe discloses methacrylic resin compositions (title). Said compositions comprise a thermoplastic resin comprising 1-45 parts of a resin that has 60 mass% or more methyl methacrylate and 40 mass% or less monofunctional monomer other than methyl methacrylate (last paragraph of page 1 of attached translation). The monofunctional monomer may be butyl methacrylate (page 3 para 10)
The composition further comprises an emulsifier such as sodium dioctylsulfosuccinate (page 5 para 7) (meeting the elected species of ionic emulsifier) and various other ionic emulsifiers therein in amounts ranging from 0.5-3parts per 100 parts resin (page 5 last paragraph to page 6 first paragraph).
The emulsifier may not be washed out of the product slurry composition prior to use (page 6 last paragraph). Though the examples disclose washing the resin polymer, Page 6 last paragraph makes this step optional if one does not need to do so.
In light of the picking of the above emulsifier genus, and, picking not washing the resulting resin prior to use, claim 1 is prima facie obvious over Abe. Though picked from a list of possible combinations, it has been held that though a specific embodiment is not taught as preferred makes it no less obvious, also, that the mere fact that a reference suggests a multitude of possible combinations does not in and of itself make any one of those combinations less obvious, see Merck v. Biocraft, 10 USPQ2d 1843 (Fed Cir 1985)
The composition is used for films (page 1 first paragraph), though “for use in film production” is a future intended use limitation. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Elements above meet claim 1. The above mentioned sodium dioctyl sulfosuccinate meets the emulsifier of claims 1-4. Butyl methacrylate may be used as the comonomer (page 3 para 10) (the elected species, not currently explicitly required in the claims), meeting claims 5-6.
Since the composition requirements are met, and, it is used to make films, the haze % of claim 9 is deemed to be embraced by the reference. If there is any difference between the above composition and the composition of the instant claims the difference would have been minor and obvious. "Products of identical chemical composition can not have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I) , In re Best, 562 F2d at 1255, 195 USPQ at 433, Titanium Metals Corp v Banner, 778 F2d 775, 227 USPQ 773 (Fed Cir 1985), In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Warren Corp v D F Newfield Co, 7 F Supp 773, 22 USPQ 313 (EDNY 1934).
The resin may be solution casted (page 10 3rd paragraph) (implicitly inferring the use of a solvent) to form a film meeting claims 10 wherein casing such would implicitly require a base material, as required by claim 12. Since the composition, and, type of film are met the haze property of claim 11 must be embraced by the reference. The end film can be called a polarizer protective film, further, the resin film may be used as polarizer protective films (page 10 first paragraph) and display device like liquid crystal displays and flat planal displays (page 9 last paragraph), meeting claims 13-15. Solution casting (as discussed above) implies use of solvent (such is needed to form a solution), as further required by claim 17.
Claim(s) 8, 18-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Abe in view of Takebe (US 2009/0099308).
Abe includes elements as set forth above. Regarding claim 8, Abe discloses a MW of the entire resin composition to be 60k-150k (page 7 paragraph 7) and does not disclose the 500k required by claim 8.
Takabe discloses optical films for polarizing plates and display devices (title), thus embracing Abe, comprising an acrylic resin (embracing Abe) and cellulose ester resin (abstract). The acrylic resin of Takabe comprises 50-99% methyl methacrylate, and, 1-50 % comonomer such as alkyl acrylates or alkyl methyacrylates [0075-0076], embracing the same use, resin and monomer wt% as Abe. When used for polarizing plates and display devices Takabe discloses useful MW of at least 80k (embracing Abe) and includes (but does not limit to) a range of 100k-600k [0078]. Takabe discloses that one does not want the composition to be brittle, and, increasing the MW decreases brittleness [0078].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to increase the MW taught by Abe with the 100k-600k range taught by Takabe, in order to improve the flexibility (and decrease brittleness) of the film product.
Elements above meet claim 8. Regarding claims 18-19 Abe does not disclose the use of alcohol/methanol/ethanol as the solvent for solution casting the composition.
Takabe includes elements as set forth above. Takabe discloses solvents such as methanol and ethanol [0210] as suitable alcohols for use in solution casting the film [0200]. Takabe thusly discloses such to be a suitably known solvent for the same intended use as Abe. The solvent is used in amounts ranging 15-45 wt% of the solution casting composition [0209].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to include in Abe the use of 15-45 wt% methanol or ethanol, as taught by Takabe, since such is recognized in the art as a suitably known amount and type of solvent for solution casting acrylic resin films. See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), wherein the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination.
Conclusion
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/ALICIA BLAND/ Primary Examiner, Art Unit 1759