DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . Claims 1-4 are currently pending in the application.
Claim Objections
Claims 1-4 are objected to because of the following:
The claim language may be amended to replace “polymeric subunit” with “polymerized subunit”, given that the recited unit structures in claims 1 and 3 are based on a single monomer unit.
Appropriate correction and/or clarification is required.
Claim Rejections - 35 USC § 102 and 103
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.
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 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yoshimura (US 2006/0241229 A1).
Yoshimura teaches free radical emulsion polymerization of a monomer composition in the presence of surfactants. Example 16 is drawn to an acrylic polymer formed from monomers consisting of acrylic acid (AA, 2.5 parts by wt., 80% conc.), butyl acrylate (BA, 40 parts by wt.), methyl methacrylate (MMA, 30 parts by wt.) and 2-ethylhexyl acrylate (EHA, 30 parts by wt.) ([0136]-[0139], 16, Table 1). The calculated wt.% of AA is 1.96, BA is 39.22, MMA is 29.41 and EHA is 29.41 and fall within the claimed ranges, and free radical emulsion polymerization of the monomer composition must inherently provide for a random copolymer.
In light of above, the presently cited claim is anticipated by the reference.
Claims 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Zorn et al. (US 2020/0291220 A1).
Zorn teaches an acrylic polymer having a glass transition, at most, of -10oC (Ab., [0013]), by prepared polymerizing monomers M1 and M2, wherein the total amount of M1 monomer ranges from 70 to 99.8 wt. %, and M2 monomer ranges from 0.2 to 20 wt. % by wt. of the polymer. Zorn further teaches M1 as comprising monomers M1a and M1b at a weight ratio of from 10:1 to 2:1. Disclosed M1a monomers include butyl acrylate, 2-ethylhexyl acrylate or a mixture thereof, i.e., teaches equivalence thereof. Disclosed M1b monomer includes methyl methacrylate, and disclosed M2 monomer includes acrylic acid [0065]-[0081], [0087]-[0094], [0127]-[0133]. Zorn further teaches that the acrylic polymer latex is prepared by free radical aqueous emulsion polymerization ([0177], Examples).
Zorn is silent on an acrylic polymer consisting of polymerized units within claimed ranges in one single embodiment as in the claimed invention.
At the outset, it is noted that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP § 2144.05.
Given the teaching in Zorn on monomers suitable for preparing the acrylic polymer by free radical aqueous emulsion polymerization, and the teaching on the upper limit of the glass transition at -10oC, it would have been obvious to prepare acrylic polymers within the scope of Zorn by selecting a combination of soft and hard monomers, such as a monomer mixture consisting of butyl acrylate and 2-ethylhexyl acrylate (as M1a monomers), methyl methacrylate (as M1b monomer), and acrylic acid (as M2 monomer) in amounts within the scope of the claimed invention. The disclosed free radical aqueous emulsion polymerization method must inherently provide for random acrylic polymers.
Additionally, given the teaching on M1a and M1b (i.e., M1) at a weight ratio of from 10:1 to 2:1, a skilled artisan would have found it obvious to utilize M1a and M1b at 2:1 wt. ratio, for e.g., at 65.34 : 32.67, and M2 at 2.01 wt.%, wherein M1a is a mixture of butyl acrylate and 2-ethyl hexyl acrylate, at 65.34 wt.%, and M1b is methyl methacrylate at 32.67 wt.%, the remainder being acrylic acid at 2.01 wt.%. Additionally, Zorn discloses butyl acrylate and 2-ethylhexyl acrylate as equally suitable alternatives to one another and therefore recognizes the equivalence of the two monomers as M1a. Thus, it would have would have been prima facie obvious, using no more than ordinary creativity, logic, judgment, and common sense, to combine butyl acrylate and 2-ethylhexyl acrylate in equal amounts (i.e. in a 1:1 ratio) based on the fact that both are disclosed in parallel as being equally suitable for use in this capacity, thereby obviating the subunits and amounts recited in claims 1 and 2.
Likewise, a skilled artisan would have found it obvious to utilize M1a and M1b (as M1) at a 2:1 wt. ratio, for e.g., at 64 : 32, and M2 at 4 wt.%, wherein M1a is a mixture of butyl acrylate and 2-ethyl hexyl acrylate, at 64 wt.%, 32 wt.% each based on their art recognized equivalence, and M1b is methyl methacrylate at 32 wt.%, the remainder being acrylic acid at 4 wt.%, thereby obviating the subunits and amounts recited in claims 3 and 4. Regarding the lower limit of the third subunit amount in claim 4, even if the numeral following the term “between” is excluded, it is to be noted that a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are sufficiently close that one of ordinary skill in the art would expect the ranges to yield products having the same properties. See MPEP 2144.05(I).
Conclusion
Any inquiry concerning this communication or earlier communications from the
examiner should be directed to Satya Sastri at (571) 272 1112. The examiner can be reached Monday-Friday, 9AM-5.30PM (EST). If attempts to reach the examiner by telephone
are unsuccessful, the examiner's supervisor, Mr. Robert Jones can be reached at (571)-270-
7733. The fax phone number for the organization where this application or proceeding is
assigned is (571) 273 8300.
Information regarding the status of an application may be obtained from the Patent
Application Information Retrieval (PAIR) system. Status information for published applications
may be obtained from either Private PAIR or Public PAIR. Status information for unpublished
applications is available through Private PAIR only. For more information about the PAIR
system, see https://ppair-my.uspto.gov/pair/PrivatePair. Should you have questions on access to
the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-
free). If you would like assistance from a USPTO Customer Service Representative or access to
the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-
1000.
/Satya B Sastri/
Primary Examiner, Art Unit 1762