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 .
Specification
The title of the invention/disclosure is objected to because “dispersant” is misspelled (title reads “Disperant”). Appropriate correction is required.
Claim Objections
Claim 1 is objected to because of the following informalities: i) recitations of “selected from a group” should instead be –selected from the group-- (note MPEP 2173.05(h)); ii) an –and-- is missing between “thereof” and “a degree” in the final two lines of the claim.. Appropriate correction is required.
Claims 2-3, 5-6, 10, 12-13, 15-16, 20, are objected to because of the following informalities: “a group” should instead be –the group-- (note MPEP 2173.05(h)). Appropriate correction is required.
Claim 4 is objected to because of the following informalities: i) recitations of “selected from a group” should instead be –selected from the group--; ii) an –and-- is missing between “thereof” and “a degree” in the final two lines of the claim.. Appropriate correction is required.
Claims 7 and 17 are objected to because of the following informalities: an –and-- is missing prior to “the solvent’. Appropriate correction is required.
Claim 13 is further objected to because of the following informalities: the capitalized words should be made lowercase. Appropriate correction is required.
Claim 14 is objected to because of the following informalities: i) recitations of “selected from a group” should instead be –selected from the group--; ii) an –and-- is missing between “thereof” and “a degree” in the final two lines of the claim.. Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
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, 5, 11, 15 and 20 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.
Regarding claim 2, the recitation of molecular weight lacks units and it is not clear what is meant as it is not made clear if the recitation is one of Mn or Mw.
Regarding claim 5, the recitation of molecular weight lacks units and it is not clear what is meant as it is not made clear if the recitation is one of Mn or Mw.
Regarding claim 11, the recitation of molecular weight lacks units and it is not clear what is meant as it is not made clear if the recitation is one of Mn or Mw.
Regarding claim 15, the recitation of molecular weight lacks units and it is not clear what is meant as it is not made clear if the recitation is one of Mn or Mw.
Regarding claim 20, the recitation of molecular weight lacks units and it is not clear what is meant as it is not made clear if the recitation is one of Mn or Mw.
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.
Claims 1-3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Li et al. (US 10,465,147).
Regarding claim 1, Li teaches rheology modifying copolymers comprising at least one first water-soluble monomeric unit, at least one second water-soluble monomeric unit, and at least one monomeric unit containing a basic residue (col 2 ln 5-12). Li teaches the first water-soluble monomer is represented by Formula 1’:
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152
432
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, wherein m is from 1-100, A is –(C=O)- and R and R1 includes alkyl (col 2 ln 15-33; see Formula 1; col 8 where R is methyl, R1 is methyl, m is 1-100; where a PEGMA(#) is exemplified (instant Ar2)); the second water-soluble monomer is represented by Formula 2’:
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168
462
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, wherein n is from 1-100, A is –(C=O)- and R includes alkyl (col 2 ln 34-54; see Formula 2a; col 9); and the monomer unit containing a basic residue is represented by Formula 3’:
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157
448
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, wherein p is from 1-100, A is –(C=O)- and R includes alkyl, R6 includes hydrogen, and R4 includes alkyl (col 2 ln 55 to col 3 ln 12; see Formula 3b; col 10-11; p is 1; where DMAEMA is exemplified (instant Ar1)). Li further teaches the copolymer where the first monomer is present up to 50 wt% of the copolymer, the second monomer is present up to 50 wt% of the copolymer, and the basic residue monomer is present up to 80 wt% of the copolymer (col 12 ln 48-66; col 13 ln 20-30) wherein the first monomer, second monomer and basic residue monomer can be present in any combination and/or order (col 13 ln 35-38).
Li further teaches that the copolymer is obtained using atom transfer radical polymerization (ATRP) using an organic halide initiator (col 15 ln 25-40) which will result in the attachment of the initiator to a terminal end of the copolymer resulting in the following terminal structure:
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131
233
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, where R and R5 include alkyl groups and where the initiator compound is preferably ethyl ɑ-bromoisobuterate (col 15 ln 56 to col 16 ln 16).
The compositions as taught by Li is suitable for rheology modification of a plurality of end-use compositions (col 18 ln 1-11). The recitation that the basic formulation containing said copolymer is to be used in pressure sensitive materials does not confer patentability to the claims since the recitation of an intended use does not impart patentability to otherwise old compounds or compositions. This includes dependent claims 2-3 as they incorporates all of the limitations of claim 1, from which it depends (see In re Tuominen, 671 F.2d 1359, 213 USPQ 89 (CCPA 1982)). Furthermore, the recitation of a new intended use for an old product does not make a claim(s) to that product patentable (see In re Schreiber, 44 USPQ 2d 1429, (Fed. Cir. 1997)).
Regarding claims 2-3, Li teaches the polymer as set forth above and further teaches the average molecular weight of the copolymer is preferably from about 200,000 g/mol or less (col 13, ln 39-54), wherein the basic residue monomer (instant Ar1) comprises up to 80 wt% thereof (col 12 ln 48-66; col 13 ln 20-30) and is preferably DMAEMA (claim 2). Further, Li teaches the first monomer (instant Ar2) is present up to 50 wt% of the copolymer and is preferably a PEGMA(#) of 1-100 (see above) (claim 3).
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.
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 4-20 are rejected under 35 U.S.C. 103 as being unpatentable over Li et al. (US 10,465,147) in view of Shiraishi et al. (US 8,071,888).
Regarding claims 4, 7-8 and 10-11 and Regarding claims 14, 17-18 and 20, Li teaches the polymer as set forth in the rejection of claim 1 above, comprising the rheology modifying copolymer as noted, incorporated here by reference.
Li further taches the copolymer is suitable for use in a plurality of end-use compositions including paints, detergents, cosmetics, etc., where a further excipient material is present such as a carrier, a diluent, an adjuvant, a binder and/or a vehicle (col 18 ln 1-11). As such Li teaches the copolymer may be combined with diluents (instant solvent) and binders (instant polymer resin). Li further teaches the copolymer is usable in formulations in an amount of about 0.5 to about 8 wt% (col 19 ln 66 to col 20 ln 11).
Li does not specifically teach a combination of carbon black, polymer resin and solvent (claim 4) or a film thereof (claim 14). However, Shiraishi teaches ink compositions comprising the combination of 1 to 30 wt% of an adhesive binder resin comprising a vinyl chloride/vinyl acetate/hydroxyalkyl (meth)acrylate copolymer resin having a number-average molecular weight of about 5,000 to 45,000 (col 4 ln 36-55; col 5 ln 33-44)(instant acrylic resin), 2 to 50 wt% of a conductive material including carbon black (col 5 ln 45 to col 6 ln 5), 1 to 29 wt% optional resins/precursors (col 9 ln 1-5), a liquid medium present in an amount from 0.1 to 5 times the solid content of the composition (col 10 ln 47-55), and further optional additives such as plasticizers, dispersants, etc. (col 12 ln 9-14). Shiraishi teaches the optional resin/precursors are present to aid in fixing the electrically conductive material to the base resin material and maintain performance of the ink (col 8 ln 62-68) and include multifunctional (meth)acrylates (col 9-10). Shiraishi teaches the inks are coated onto a paper or resin base material and cured (col 12 ln 34 to col 13 ln 45)(instant film formed by coating and curing).
Shiraishi and Li are analogous art and are combinable because they are concerned with the same technical feature, namely compositions comprising multifunctional (meth)acrylate materials in combination with diluents and base resins. At the time of filing a person having ordinary skill in the art would have found it obvious to form an ink as taught by Shiraishi using the copolymers of Li and would have been motivated to do so as Li teaches use of the copolymers in a plurality of end-use compositions as rheology modifiers which aid in desirable flow characteristics.
Regarding claims 5-6 and claims 15-16, Li in view of Shiraishi render obvious the formulation as set forth in claim 4 above and the film as set forth in claim 14 above. Li teaches the recitations in the manner set forth with respect to claims 2-3 above, incorporated here by reference.
Regarding claim 9 and claim 19, Li in view of Shiraishi render obvious the formulation as set forth in claim 7 above and the film as set forth in claim 17 above. Li further teaches the copolymer imparts a shear rate viscosity from about 0.01 to 20 Pas (col 19 ln 45-52)(= 10 to 20,000 cP).
Regarding claims 12-13, Li in view of Shiraishi render obvious the formulation as set forth in claim 4 above. Shiraishi teaches the liquid mediums include acetates, esters, glycols, ketones, alcohols, alcohols, ethers, etc. (col 10 ln 47 to col 11 ln 18), including isophorone, etc. (col 10 ln 64).
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JANE L STANLEY whose telephone number is (571)270-3870. The examiner can normally be reached M-F 7:30 AM to 3:30 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JANE L STANLEY/ Primary Examiner, Art Unit 1767
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