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/US2022/026966 04/29/2022; PCT/US2022/ 026966 has PRO 63/181,545 04/29/2021.
Information Disclosure Statement
The information disclosure statement (IDS), filed on 11/04/25 and 11/16/23 have been considered. Please refer to Applicant's copy of the 1449 submitted herewith.
Election/Restrictions
Applicant’s election without traverse of claims 1-10, 12-14, and species methyl methacrylate (MMA), lithium nickel cobalt manganese oxide (LiNiCoMnO₂), and polyvinylidene fluoride polymer (specific is polyvinylidene fluoride copolymer) in the reply filed on 06/19/26 is acknowledged.
Claims 1-10, 12-20 are pending. Claims 15-20 have been withdrawn in an amendment filed on 06/19/26. Claim 10 is directed to a non-elected species. Accordingly, claim 10 is withdrawn from further consideration by Examiner, 37 CFR 1.142(b), as being drawn to non-election invention/species. Claims 1-9, 12-14 are examined in this Office action.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 3-9, 12-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6-7, 8, 13-14, 17 of copending Application No. 17/687222 (as amendment filed on 03/17/26). Although the claims at issue are not identical, they are not patentably distinct from each other because regarding claims 1, 3-8, copending claim 1 discloses an acrylic copolymer comprising, as polymerized monomers: a) from 0.2 to 9 weight percent of monomer units comprising tert-butyl cyclohexyl methacrylate and optionally 3,3,5-trimethyl cyclohexyl (meth)acrylate, wherein the monomer a) comprises from 86 to 97 weight% trans isomer, based on the total weight of the acrylic copolymer; b) from 91 to 99.8 weight percent of (meth)acrylate monomer units based on the
total weight of the acrylic copolymer; and c) optionally at least one additional monomer copolymerizable with monomer a) and b), wherein the acrylic copolymer has: i) a Tg of from 116°C to 145°C; and ii) a weight average molecular weight (Mw) of at least 65,000 g/mole, and copending claim 6 discloses the additional monomer c) comprises at least methacrylic acid, or acrylic acid.
Regarding claim 9, copending claim 14 discloses filler.
Regarding claims 12-13, copending claim 13 discloses at least one of Poly(methyl methacrylate)/ethyl acrylate copolymer; poly(methyl methacrylate) /methacrylate copolymer; poly(styreneacrylonitrile); polyvinylidene fluoride; copolymers of vinylidene fluoride and hexafluoropropene; polylactic acid; or combinations thereof.
Regarding claim 14, copending claim 13 discloses at least one of Poly(methyl methacrylate (PMMA))/ethyl acrylate copolymer; poly(methyl methacrylate) /methacrylate copolymer; poly(styreneacrylonitrile); polyvinylidene fluoride; copolymers of vinylidene fluoride and hexafluoropropene; polylactic acid; or combinations thereof (read on blend). The recitation “wherein 5 to 25 weight percent of polyvinylidene fluoride polymer have been replaced with PMMA” is a product-by-process limitation. Product-by process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. Even 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, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Claim 2 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6-7, 8, 13-14, 17 of copending Application No. 17/687222 (as amendment filed on 03/17/26) as applied to claim 1, and further in view of Ueno (US 2022/0059391).
Regarding claim 2, copending claim 6 discloses the additional monomer c) comprises at least methacrylic acid, or acrylic acid, copending claim 7 discloses the monomer c) is present as a polymerized monomer at from 0.01 to 15 weight % based on the weight of the acrylic copolymer (encompassing the claim 2 range of 0.5 to 10 wt%), and claim 17 discloses an article comprising the acrylic copolymer, wherein the article is electronic components but does not disclose 2-carboxyetnyl acrylate.
However, Ueno discloses an electronic component made from acrylic copolymer made from monomer component include: carboxyl group-containing monomers, such as acrylic acid, methacrylic acid, and functionally equivalent carboxyethyl acrylate (para [0030], [0041]).
It would have been obvious to one having ordinary skill in the art at the time the invention was made to have used the carboxyethyl acrylate of the claims in the composition of copending claims because Ueno teaches that the claimed carboxyethyl acrylate and the acrylic acid or methacrylic acid of copending claims are functionally equivalent and it is prima facie obvious to substitute art-recognized functional equivalents known for the same purpose, see MPEP § 2144.06; In re Ruff, 256 F.2d 590, 118 USPQ 340 (CCPA 1958).
A prima facie case of obviousness exists for the acrylic copolymer composition, wherein 0.01 to 15 wt%, encompassing the requirement of claim 2. 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).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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, 6-9, 12-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ge (WO 2020/206108).
Regarding claims 1, 6, Ge discloses an acrylic copolymer composition, wherein the acrylic copolymer comprises: one or more (meth)acrylic monomer units; (meth)acrylic acid hydrophilic monomer units; and one or more hydrophobic monomer units such as MMA/methacrylic acid and 3,3,5- trimethylcyclohexyl (meth)acrylate (page 9, lines 4-9, claims 1, 3), meeting the requirements of claims 1, 6.
Regarding claim 7, Ge discloses Tg from 114 0C to 140 0C (claim 1), fall into claimed range of 110 0C to 140 0C.
Regarding claim 8, Ge discloses a weight average molecular weight of from from 75,000 g/mole to 200,000 g/mole (claim 5), fall into claimed greater than 65,000 g/mol.
Regarding claim 9, Ge discloses additive such as antioxidants (claim 13).
Regarding claims 12-13, Ge discloses compatible (co)polymer such as polyvinylidene fluoride, copolymers of vinylidene fluoride and hexafluoropropene (page 12, lines 16-20).
Regarding claims 14, Ge discloses the copolymer composition is a PMMA copolymer blend with a polyvinylidene fluoride polymer (page 12, lines 16-20). The recitation “wherein 5 to 25 weight percent of polyvinylidene fluoride polymer have been replaced with PMMA” is a product-by-process limitation. Product-by process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. Even 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, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Claims 1, 12-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bizet (US 2018/0355206).
Regarding claims 1, 12-13, Bizet discloses a copolymer composition comprising at least one vinylidene fluoride polymer and at least one acrylic copolymer comprising monomers comprising functional groups exhibiting an affinity for metals or which are capable of becoming fixed to metals, wherein said acrylic copolymer is a copolymer of methyl methacrylate and methacrylic acid and in that said vinylidene fluoride polymer (claim 1), meeting the requirements of claims 1, 12-13.
Regarding claim 9, Bizet discloses additive such as lithium nickel cobalt manganese oxide (LiNMC) (para [0063]).
Claims 1, 9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Seecharan (US 2011/0017085).
Regarding claim 1, Seecharan discloses an acrylic copolymer composition comprising a copolymer of methyl methacrylate such as butyl (meth)acrylate or hexyl (meth)acrylate and beta-carboxyethyl acrylate (para [0045]), meeting the requirements of claim 1.
Regarding claim 9, Seecharan discloses additive such as pigments (para [0051]).
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 2 is rejected under 35 U.S.C. 103 as being unpatentable over Seecharan as applied to claim 1 above.
Seecharan includes the features of claim 1 above.
Regarding claim 2, Seecharan discloses beta-carboxyethyl acrylate in amount of 0.5 to 25 wt% (para [0045]), encompassing claimed range of 0.5 to 10 wt%.
A prima facie case of obviousness exists for the acrylic copolymer composition, wherein beta-carboxyethyl acrylate in amount of 0.5 to 25 wt%, encompassing the requirement of claim 2. 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).
Claims 3-5 are rejected under 35 U.S.C. 103 as being unpatentable over Ge as applied to claim 1 above.
Ge includes the features of claim 1 above.
Regarding claim 3, Ge discloses from 50 to 80 wt% methacrylate monomer unit (claim 1), overlapping claimed range of 75 to 99 wt%.
A prima facie case of obviousness exists for the acrylic copolymer composition, wherein Ge discloses from 50 to 80 wt% methacrylate monomer unit , overlapping the requirement of claim 3. 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 4, Ge discloses from 0.01 to 25 wt% monomer such as t-butyl methacrylate (claim 3), encompassing claimed range of 0.1 to 10 wt%.
A prima facie case of obviousness exists for the acrylic copolymer composition, wherein Ge discloses from 0.01 to 25 wt% monomer such as t-butyl methacrylate, encompassing the requirement of claim 4. 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 5, Ge discloses from 0.1 to 20 wt% monomer units chosen from tert-butyl cyclohexyl methacrylate, 3,3,5-trimethylcyclohexyl(meth)acrylate, and a mixture thereof (claim 1), encompassing claimed range of 0.2 to 10 wt%.
A prima facie case of obviousness exists for the acrylic copolymer composition, wherein Ge discloses from 0.1 to 20 wt% monomer units chosen from tert-butyl cyclohexyl methacrylate, 3,3,5-trimethylcyclohexyl(meth)acrylate, and a mixture thereof, encompassing the requirement of claim 5. 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
References Aekema (WO 2018/152541), Arkema (JP 5378235), Wood (US 2003/204020), Sichuan (CN 111500228), Arkema (WO 2017/089683), Samsung (JP 2016105398), and Etrust (CN 108987754) were cumulative in nature to the above rejection and thus not set forth.
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).
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, RANDY P GULAKOWSKI can be reached at (571)272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/KUMAR R BHUSHAN/Primary Examiner, Art Unit 1766
Prosecution Insights