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 .
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 1-4, 6, 7, and 9-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bennison et al. (US 2010/0167061).
Considering Claims 1 and 10: Bennison et al. teaches an ionomer composition comprising a sodium ionomer, a zinc ionomer, and a silane coupling agent (¶0043), where the sodium ioniomer is 81.1% and the zinc ionomer is 11.9% by mole of the composition (Table 3). The ionomer of E4 in Table 3 is a blend of a sodium ionomer and zinc ionomer in a 3:1 ratio by weight (¶0105). Bennison et al. teaches adding the silane as a masterbatch (¶0044).
Bennison et al. does not teach adding the silane in a masterbatch with the zinc ionomer. However, the instant claims are product by process claims. "[E]ven 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) (citations omitted). See MPEP § 2113.
Considering Claim 2: Bennison et al. teaches the ionomers as being ethylene methacrylic acid (¶0098).
Considering Claims 3 and 4: Bennison et al. teaches the neutralization degree of the polymers as being 14 to 53 mole percent (Table 2).
Considering Claims 6 and 7: Bennison et al. teaches using an amino alkoxysilane coupling agent (¶0043).
Considering Claim 9: Bennison et al. teaches adding the silane coupling agent in an amount of 0.05 to 1 weight percent of the composition (¶0043).
Considering Claim 11: Bennison et al. teaches the melt flow rate of the polymer as being 0.8 to 8.2 in the examples (Table 2).
Considering Claims 12 and 15: Bennison et al. teaches the composition as being the interlayer in laminated glass (¶0057).
Considering Claims 13 and 14: The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients, in the claimed amounts, and teaches the composition as being made by a substantially similar process. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. [….] would necessarily arise from a composition with all the claimed ingredients in the claimed amounts. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
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.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Bennison et al. (US 2010/0167061) as applied to claim 1 above.
Considering Claim 5: Bennison et al. teaches the composition of claim 1 as shown above.
Bennison et al. teaches an example where the weight ratio of the sodium ionomer and the zinc ionomer is 3:1 (¶0105). Bennison et al. teaches that the sodium to zinc ratio controls the haze of the interlayer (¶0109). It would have been obvious to a person of ordinary skill in the art to have increased the amount of sodium ionomer through routine experimentation, and the motivation to do so would have been, as Bennison et al. suggests, to reduce the haze of the interlayer.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Bennison et al. (US 2010/0167061) as applied to claim 6 above, and further in view of Smith (US 2019/0030863).
Considering Claim 8: Bennison et al. teaches the composition of claim 6 as shown above.
Bennison et al. does not teach the claimed silanes. However, Smith et al. teaches using aminopropylmethyldiethoxysilane as the coupling agent in an ionomer composition (¶0094). Bennison et al. and Smith are analogous art as they are concerned with the same field of endeavor, namely ionomer interlayers for glass laminates. It would have been obvious to a person of ordinary skill in the art to have used the coupling agent of Smith as the coupling agent of Bennison et al., and the motivation to do so would have been, as Smith suggests, it forms an adhesive bond with the glass while anchoring the ionomer through bonding interaction (¶0093).
Claims 16-18 are rejected under 35 U.S.C. 103 as being unpatentable over Bennison et al. (US 2010/0167061).
Considering Claims 16 and 17: Bennison et al. teaches an ionomer composition comprising a sodium ionomer, a zinc ionomer, and a silane coupling agent (¶0043), where the sodium ioniomer is 81.1% and the zinc ionomer is 11.9% by mole of the composition (Table 3). The ionomer of E4 in Table 3 is a blend of a sodium ionomer and zinc ionomer in a 3:1 ratio by weight (¶0105).
Bennison et al. teaches adding the silane as a masterbatch (¶0044), and teaches melt kneading the components to form the composition (¶0040). Bennison et al. does not teach the claimed order of mixing. However, the selection of any order of mixing ingredients is prima facie obvious. In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930). It would have been obvious to a person of ordinary skill in the art to have mixed the zinc ionomer and silane prior to addition to the sodium ionomer, and the motivation to do so would have been, to uniformly distribute the silane in the ionomer composition.
Considering Claim 18: Bennison et al. is silent towards the melt kneading temperatures. However, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP § 2144.05. It would have been obvious to a person of ordinary skill in the art to have used a lower temperature in the initial masterbatch formation, and the motivation to do so would have been, to prevent premature gelling of the alkoxysilane groups.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Nakata et al. (US 20130056049) teaches a composition comprising a layer of zinc ionomer and a silane coupling agent and a layer of sodium ionomer (Abstract).
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LIAM J HEINCER whose telephone number is (571)270-3297. The examiner can normally be reached M-F 7:30-5:00.
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.
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.
/LIAM J HEINCER/Primary Examiner, Art Unit 1767
Prosecution Insights