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.
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, 11 and 12 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.
Claims 2-3, 11 and 12 recite ranges, such as 250 ppm or more, which do not include the upper end point from the claim from which they depend (i.e. 50,000 ppm). As such, these claims do not include ranges which are broader than those from which they depend and, therefore, do not include all the limitations of the claims from which they depend.
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
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.
And/or
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 10, 13-15 are rejected under 35 U.S.C. 102(a)(1) and/or 35 U.S.C. 102(a)(2) as being anticipated by Yoshimura (U.S. 20220098344 with priority to foreign priority document JP2020-164675; English translation of JP2020-164675 is included).
Examiner notes Yoshimura is available under both 102(a)(1) and 102(a)(2) at this time. With respect to potential 102(b)(2) exceptions, the foreign priority document via the translation provides evidence the subject matter relied upon for the rejection in Yoshimura was present at the time of filing of JP2020-164675. With respect to potential 102(b)(1) exceptions, Applicant cannot rely upon the certified copy of the foreign priority application to overcome this rejection because a translation of said application has not been made of record in accordance with 37 CFR 1.55. When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216.
Yoshimura teaches in Example 7 ¶[0168] a composition which is polymerized into polymethyl methacrylate which comprises 100 ppm of methyl propionate and 99.97 wt% of methyl methacrylate monomer. This is made into case sheets (molded articles). This anticipates Claim 10 and Claim 15. The resulting polymers are 100% methyl methacrylate repeat units which anticipates Claim 13 and Claim 143.
Claims 1-3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lillwitz (U.S. 4,739,108).
Lillwitz teaches in Example III the following methyacrylate monomer composition.
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0.8 wt% of methyl propionate is 8,000 ppm. This anticipates Claim 1, Claim 2 and Claim 3.
Claims 1-3 and 7-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Vaughan (U.S. 5,663,420).
Vaughan teaches in Example 1 a methyl methacrylate (MMA) mixture comprising MMA, 0.061 wt% of methyl propionate and methyl isobutyrate. 0.061 wt% is 610 ppm. This anticipates Claim 1, Claim 2, Claim 3, Claim 7 and Claim 8.
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.
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, 4-5, 7-9, 11 and 13-16 are rejected under 35 U.S.C. 103 as being unpatentable over Yoshimura (U.S. 20220098344 with priority to foreign priority document JP2020-164675; English translation of JP2020-164675 is included).
Yoshimura teaches polymethyl methacrylate made from methyl methacrylate compositions comprising:
20 ppm to 300 ppm methyl isobutyrate (Abstract)
5 ppm to 200 ppm methyl acrylate (Abstact)
99.5 wt% of methyl methacrylate monomer (Abstract)
5 ppm to 200 ppm methyl propionate (¶[0046])
The above methyl methacrylate reads over the methyl methacrylate of Claim 1 and Claim 10’s compositions.
Yoshimura’s range of 5 to 200 ppm is outside the range recited by the following claims. The above 5 ppm to 200 ppm touches the range of the composition of Claim 1 and Claim 11. The above renders these claims obvious.
In ¶[0017] Yoshima teaches the compositions of the present invention (which includes the methyl propionate) suppress the yellowness and decrease in light transmittance. These are the same properties Applicant states the methyl proprionate range claimed produces. Additionally, the as-filed specification does not provide any examples or other demonstration that would suggest different yellowness and light transmission properties from compositions with less than the range recited by the claims. In other words, every example of the as-filed specification is within the range recited by the claims and the comparative example only compares to no methyl propionate present. As such, one of ordinary skill in the art is reasonably suggested the yellowness and light transmission improvements of Yoshimura are substantially similar throughout Yoshimura’s and Applicant’s ranges of this compound.
A prima facie case of obviousness is established when a claimed narrow range is within a broad prior art range or partially overlaps or touches the broad range. In Re Harris, 409 F.3d at 1341; In Re Peterson, 315 F.3d at 1329-30
For all the above rejections that refer to compositional ranges that overlap those recited, it is well settled that where prior art describes components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See MPEP 2144.05. In re Harris, 409, F3.d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 3d 1379, 1382 (Fed. Cir 1997); In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ 2d, 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549,553 (CCPA 1974).
The methyl propionate is reasonably suggested to remain in the resulting copolymer (for Claims 10-15) as there is no evidence it is removed in any appreciable amount during polymerization.
The above methyl isobutyrate and methyl acrylate read over the compounds of Claim 4 and Claim 5, Claim 7 and Claim 8.
The resulting
Radial polymerization initiators are taught in ¶[0064] and radial polymerization is exemplified with reads over Claim 9 and Claim 16. Molded bodies are exemplified which reads over Claim 15. ¶[0108]
The resulting polymers are 100% methyl methacrylate repeat units which anticipates Claim 13 and Claim 14.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Yoshimura (U.S. 20220098344 with priority to foreign priority document JP2020-164675; English translation of JP2020-164675 is included) in view of Eastham (U.S. 9,816,115).
Yoshimura is applied as above.
Yoshimura does not teach or suggest additional monomers such as n-butyl acrylate and does not exclude them either.
Eastham, working in the field of making methyl methacrylate polymers from methyl propionate similar to Applicant and Yoshimura, teaches the methyl methacrylate can be copolymerized with multiple comonomers including n-butyl acrylate. (Column 28 lines 15-20)
Therefore, it would have been obvious to a person having ordinary skill in the art at the time the invention was filed to practice the invention of Yoshimura by adding n-butyl acrylate to the polymerization mixture to produce copolymers of methyl methacrylate and n-butyl acrylate as taught by Eastham. This represents the application of known technique, copolymerization with known comonomers of methyl methacrylate, for the predictable result of a copolymer of methyl methacrylate and n-butyl acrylate.
Claims 1-16 are rejected under 35 U.S.C. 103 as being unpatentable over Ozawa (U.S. 4,175,176) in view of Vaughan (U.S. 5,663,420).
Ozawa teaches methyl methacrylate (MMA) and alkyl acrylate (n-butyl acrylate exemplified) polymers made by radical polymerization (Column 5 lines 50-55) which are used in molded products (Abstract).
The amount of MMA exemplified is 80-87 wt% and the balance is alkyl acrylates such as methyl acrylate and n-butyl acrylate (Table 2).
Ozawa is silent on the methyl propionate in the MMA.
Vaughan, working in the field of MMA production, teaches highly purified MMA monomer which is more environmentally friendly with lower amounts of by-products that are non-polymerizable. (Column 1 line 1 15-25
Vaughan teaches in Example 1 a methyl methacrylate (MMA) mixture comprising MMA, 0.061 wt% of methyl propionate and methyl isobutyrate. 0.061 wt% is 610 ppm.
It would have been obvious to a person having ordinary skill in the art at the time the invention was filed to practice the invention of Ozawa by using the MMA monomer produced by Vaught for the advantage of using a MMA monomer which is more environmentally friendly with lower amounts of by-products that are non-polymerizable as taught by Vaughan. One of ordinary skill in the art would have been motivated to choose Example 1 of Vaught for this purpose because it is exemplified.
The above reads of Claims 1-16 as the amount of styrene in Claim 14 can be zero and the amount of MMA from Ozawa is 80 wt% or more in the examples of Ozawa (relevant for Claims 13 and 14).
The methyl propionate is reasonably suggested to remain in the resulting copolymer (for Claims 10-15) as there is no evidence it is removed in any appreciable amount during polymerization. Additionally, Vaughn suggests the by products, which methyl propionate is a by-product, are undesirable and non-polymerizable further reasonably suggesting to one of ordinary skill in the art the methyl propionate amounts from Vaughan remain in the resulting copolymer at a substantially similar level.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER M RODD whose telephone number is (571)270-1299. The examiner can normally be reached 7 am - 3:30 pm (Pacific).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy 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.
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/Christopher M Rodd/ Primary Examiner, Art Unit 1766
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