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 .
Claims filed 11/17/2023 are made of record. Claims 1-16 are currently pending in the application.
Information Disclosure Statement
It is noted that IDS filed on 5/8/2026 is a corrected version of the IDS filed 3/14/2026. Accordingly, references in IDS filed 3/14/2026 are not considered and a line is put through these references.
Election/Restriction
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-8, drawn to monomer composition, classified in C07C 69/54.
II. Claims 9-14 and 16, drawn to methacrylic resin composition and method of making the composition, classified in C08L 33/12.
III. Claim 15, drawn to resin molded body, classified in B29C 39/00.
The inventions are independent or distinct, each from the other because:
Inventions I and (II, III) are related as mutually exclusive species in an intermediate-final product relationship. Distinctness is proven for claims in this relationship if the intermediate product is useful to make other than the final product, and the species are patentably distinct (MPEP § 806.05(j)). In the instant case, the intermediate monomer composition is deemed to be useful as a reactant to form a graft or block copolymer and the inventions are deemed patentably distinct because there is nothing of record to show them to be obvious variants. Additionally, intermediate product loses its identity upon polymerization to form a resin.
Inventions II and III are directed to related products. The related inventions are distinct if: (1) the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect; (2) the inventions do not overlap in scope, i.e., are mutually exclusive; and (3) the inventions as claimed are not obvious variants. See MPEP § 806.05(j). In the instant case, the inventions as claimed are distinct because the methacrylic resin composition can be used as a coating agent and therefore the two inventions are mutually exclusive, do not overlap in scope, have a different mode of operation and function. Furthermore, the inventions as claimed do not encompass overlapping subject matter and there is nothing of record to show them to be obvious variants.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply: (a) the inventions have acquired a separate status in the art in view of their different classification; (b) the inventions require a different field of search (for example, searching different classes/subclasses or electronic resources, or employing different search queries); and (c) the prior art applicable to one invention would not likely be applicable to another invention.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with Toyomi Ohara on 5/21/2026 a provisional election was made WITHOUT traverse to prosecute the invention of group I, claims 1-8. Affirmation of this election must be made by applicant in replying to this Office action. Claims 9-16 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
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 1-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of copending Application No. 18/512,517 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both are drawn to monomer composition comprising methyl methacrylate, methyl propionate, methyl isobutyrate, methyl pyruvate and methyl 2-methylbutyrate. The monomer compositions additionally include acrylic esters such as methyl acrylate, ethyl acrylate and n-butyl acrylate.
Copending claims are silent with respect to the amount of methyl isobutyrate.
However, applicant’s attention is drawn to MPEP 804 where it is disclosed that “the specification can always be used as a dictionary to learn the meaning of a term in a patent claim.” Toro Co. v. White Consul. Indus., Inc., 199 F.3d 1295, 1299, 53 USPQ2d 1065, 1067 (Fed. Cir. 1999). Further, those portions of the specification which provide support for the patent claims may also be examined and considered when addressing the issue of whether a claim in an application defines an obvious variation of an invention claimed in the patent. (underlining added by examiner for emphasis) In re Vogel, 422 F.2d 438,164 USPQ 619,622 (CCPA 1970).
Consistent with the above underlined portion of the MPEP citation, attention is drawn to example 3, of copending application wherein the composition comprises 8000 ppm relative to the total mass of MMA (Table 1, paragraph 0097). Therefore, in light of the teachings in general disclosure of copending application, it would have been obvious to one skilled in art to prepare a monomer composition comprising methyl methacrylate and methyl isobutyrate in presently claimed amounts.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of copending Application No. 18/512,529 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both are drawn to monomer composition comprising methyl methacrylate, methyl isobutyrate, methyl propionate, methyl pyruvate and methyl 2-methylbutyrate. The monomer compositions additionally include acrylic esters such as methyl acrylate, ethyl acrylate and n-butyl acrylate.
Copending claims are silent with respect to the amount of methyl isobutyrate.
However, applicant’s attention is drawn to MPEP 804 where it is disclosed that “the specification can always be used as a dictionary to learn the meaning of a term in a patent claim.” Toro Co. v. White Consul. Indus., Inc., 199 F.3d 1295, 1299, 53 USPQ2d 1065, 1067 (Fed. Cir. 1999). Further, those portions of the specification which provide support for the patent claims may also be examined and considered when addressing the issue of whether a claim in an application defines an obvious variation of an invention claimed in the patent. (underlining added by examiner for emphasis) In re Vogel, 422 F.2d 438,164 USPQ 619,622 (CCPA 1970).
Consistent with the above underlined portion of the MPEP citation, attention is drawn to example 6, of copending application wherein the composition comprises 8000 ppm relative to the total mass of MMA (Table 1, paragraph 0100). Therefore, in light of the teachings in general disclosure of copending application, it would have been obvious to one skilled in art to prepare a monomer composition comprising methyl methacrylate and methyl isobutyrate in presently claimed amounts.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of copending Application No. 19/207,694 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both are drawn to monomer composition comprising methyl methacrylate, methyl isobutyrate in overlapping amounts, methyl propionate, methyl pyruvate and methyl 2-methylbutyrate. The monomer compositions additionally include acrylic esters such as methyl acrylate, ethyl acrylate and n-butyl acrylate. Therefore, present claims are fully anticipated by claims in copending application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of copending Application No. 19/207,763 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both are drawn to monomer composition comprising methyl methacrylate, methyl isobutyrate, methyl propionate, methyl pyruvate, and methyl 2-methylbutyrate. The monomer compositions additionally include acrylic esters such as methyl acrylate, ethyl acrylate and n-butyl acrylate.
Copending claims are silent with respect to the amount of methyl isobutyrate.
However, applicant’s attention is drawn to MPEP 804 where it is disclosed that “the specification can always be used as a dictionary to learn the meaning of a term in a patent claim.” Toro Co. v. White Consul. Indus., Inc., 199 F.3d 1295, 1299, 53 USPQ2d 1065, 1067 (Fed. Cir. 1999). Further, those portions of the specification which provide support for the patent claims may also be examined and considered when addressing the issue of whether a claim in an application defines an obvious variation of an invention claimed in the patent. (underlining added by examiner for emphasis) In re Vogel, 422 F.2d 438,164 USPQ 619,622 (CCPA 1970).
Consistent with the above underlined portion of the MPEP citation, attention is drawn to general disclosure of copending application wherein the composition comprises methyl isobutyrate in amounts of 40 ppm or more and 20,000 ppm or less paragraph 0078). Therefore, in light of the teachings in general disclosure of copending application, it would have been obvious to one skilled in art to prepare a monomer composition comprising methyl methacrylate and methyl isobutyrate in overlapping amounts as in present claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 2-3 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 2 recites “methyl isobutyrate content is 400 ppm by mass or more” (lines 2-3) and fails to further limit the scope of claim 1. Specifically, methyl isobutyrate can be present in any amounts higher than 400 ppm, while it cannot exceed 50,000 ppm by mass in independent claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim 3 recites “methyl isobutyrate is 500 ppm by mass or more” (lines 2-3) and fails to further limit the scope of independent claim 1 on which it is dependent. Specifically, methyl isobutyrate can be present in any amounts higher than 500 ppm, while it cannot exceed 50,000 ppm by mass in independent claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
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.
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 Aoshima et al (US 4,518,462 A).
Regarding claims 1, 2 and 3, Aoshima et al disclose in comparative example 2, a composition comprising methyl methacrylate and 1,350 ppm of methyl isobutyrate from the bottom of second distillation column (col. 12, lines 39-46) which reads on the mass of methyl isobutyrate in the monomer composition comprising methyl methacrylate in present claims 1, 2 and 3.
Claims 1-3 and 7-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Krill et al (WO 2021/058293 A1).
It is noted that WO 2021/058293 A1 (WO) is being utilized for date purposes. However, since WO is not in English, US equivalent for WO, namely, Krill et al (US 2022/0388942 A1) is referred to in the body of the rejection below. All column and line citations are to the US equivalent.
Regarding claims 1, 2 and 3, Krill et al disclose in example 3, a distillation stream 31 comprising 96.7% by weight of methyl methacrylate and 0.2% (i.e., equivalent to 2,000 ppm) by weight of MIB (abstract and paragraph 0047) which reads on mass of methyl isobutyrate in the monomer composition comprising methyl methacrylate in present claims 1, 2 and 3.
Regarding claims 7 and 8, see example 3, wherein the distillation stream further comprises MP (paragraph 0047 and abstract) which reads on methyl propionate in present claims 7 and 8.
Claims 1-2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Krill et al (US 2021/0032386 A1).
Regarding claims 1-2, Krill et al disclose in example 2, a composition comprising MMA (i.e., methyl methacrylate) and 475 ppm of methyl isobutyrate (Table 1) which reads on the amount of methyl isobutyrate in present claims 1-2.
Claims 1-8 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Kurihara et al (WO 2022/230596 A1).
The applied reference has a common Assignee with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
It is noted that EP 4 332 080 A1 (EP) is being utilized for date purposes. However, since WO is not in English, EP equivalent for WO, namely, Kurihara et al (EP 4 332 080 A1) is referred to in the body of the rejection below. All column and line citations are to the US equivalent.
Regarding claims 1-3, Kurihara et al disclose methyl methacrylate composition containing methyl methacrylate (i.e., reads on monomer composition comprising methyl methacrylate in present claim 1) and compound A (abstract). See example 1, wherein the composition comprises methyl methacrylate and methyl isobutyrate in amounts of 2898 ppm (Table 1).
Regarding claims 4-6, Kurihara et al teach that monomers that can be copolymerized with methyl methacrylate include acrylate esters such as methyl acrylate, ethyl acrylate and butyl acrylate (paragraph 0071).
Regarding claims 7-8, Examples of compound A, in Kurihara et al, preferably include methyl isobutyrate, methyl propionate, and methyl 2-methylbutyrate (paragraph 0034-0035).
Claim Rejections - 35 USC § 103
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.
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.
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 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Krill et al (US 2021/0032386 A1).
Regarding claims 1-3, Krill et al disclose in example 1, a composition comprising MMA (i.e., methyl methacrylate) and 230 ppm of methyl isobutyrate (Table 1).
Krill et al fails to disclose in an inventive example a monomer composition comprising presently claimed amount of methyl isobutyrate.
However, Krill et al in the general disclosure teach that it is preferable for the composition to comprise methyl isobutyrate in amounts of less than 600 ppm (paragraph 0054). Case law holds that when the range of instant claims and that disclosed in prior art overlap, a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05. Therefore, in light of the teachings in general disclosure of Krill et al and case law, it would have been obvious to one skilled in art prior to the filing of present application to have selected the overlapping range (such as greater than 300 ppm as in present claim 1, greater than 400 ppm as in present claim 2, and greater than 500 ppm as in present claim 3), absent evidence to the contrary.
Regarding claims 4-6, Krill et al teach that to-be-polymerized compositions may also further unsaturated monomers copolymerizable with methyl methacrylate. These include methyl acrylate, ethyl acrylate and butyl acrylate (paragraph 0041).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KARUNA P REDDY whose telephone number is (571)272-6566. The examiner can normally be reached 8:30 AM to 5:00 PM M-F.
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, Arrie (Lanee) Reuther can be reached at 571-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KARUNA P REDDY/Primary Examiner, Art Unit 1764
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