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 1-21 are pending.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 11 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 11 includes a parenthetical “(X2)” which is unclear as to what it refers to.
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.
Claim(s) 1, 7, 8, 10-12, 18-21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by FR 2651236 A1 (“Acome”).
As to claim 1, Acome teaches a methyl methacrylate monomer composition including methyl pyruvate (translation, para. 0008).
As to claims 7 and 8, Acome further teaches an acrylate ester, specifically exemplified by methyl acrylate (translation, para. 0008).
As to claim 10, Acome further teaches the recited additives (translation, para. 0008).
As to claims 11 and 21, Acome teaches radical polymerization with organic peroxides to produce polymethyl methacrylate (para. 0007, translation) as required by claims 11 and 21.
As to claim 12, Acome teaches a methyl methacrylate monomer composition including methyl pyruvate (translation, para. 0008). Acome teaches radical polymerization with organic peroxides to produce polymethyl methacrylate (para. 0007, translation), thus a methacrylate resin composition. It is reasonable to presume the polymerization product contains methyl pyruvate.
As to claims 18 and 19, Acome teaches compositions comprised entirely of methyl methacrylate as monomer, with less than 5 wt % of acrylate monomers (para. 0006), and no styrene monomers.
As to claim 20, Acome teaches molding into resin plates (para. 0011).
Claim(s) 12, 13, and 18-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP H07-094506 B2 (“Itagaki”).
As to claims 12, 13, and 18-20, Itagaki teaches comparative example 1, a resin plate (resin molded body as required by claims 20) of polymerized 100% methyl methacrylate (as required by claims 18 and 19) having 14 ppm of methyl pyruvate (translation, p. 11) as required by claims 12 and 13.
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.
Claim(s) 1-6 and 12-19 are rejected under 35 U.S.C. 103 as being unpatentable over US 5,091,033 (“Nakabayashi”).
As to claims 1-6, Nakabayashi teaches an adhesive composition. Nakabayashi teaches a polymerizable monomer (abstract), preferably acrylic or methacrylic esters such as methyl methacrylate (6:19-21).
While not exemplified, Nakabayashi teaches the composition includes a polymerization catalyst (abstract) which may be methyl pyruvate (7:10-15). Nakabayashi teaches that the polymerizable monomer is present in amounts of 95 to 43 wt % of the composition, and the catalyst is present in 0.01 to 43 wt % of the composition (9:15-28), which calculates to at least 100 ppm of catalyst (such as methyl pyruvate) to methyl methacrylate as required by claims 1-4, and which encompasses the range of claims 5 and 6. As such, the use of methyl pyruvate, including in recited amounts, as a catalyst for polymerizing methyl methacrylate, is an obvious modification suggested by Nakabayashi.
As to claims 12-17, Nakabayashi teaches an adhesive composition. Nakabayashi teaches a polymerizable monomer (abstract), preferably acrylic or methacrylic esters such as methyl methacrylate (6:19-21). Nakabayashi teaches polymerizing and curing the compositions (6:25-30).
While not exemplified, Nakabayashi teaches the composition includes a polymerization catalyst (abstract) which may be methyl pyruvate (7:10-15). Nakabayashi teaches that the polymerizable monomer is present in amounts of 95 to 43 wt % of the composition, and the catalyst is present in 0.01 to 43 wt % of the composition (9:15-28), which calculates to at least 100 ppm of catalyst (such as methyl pyruvate) to methyl methacrylate as required by claims 1-4, and which encompasses the range of claims 5 and 6. As such, the use of methyl pyruvate, including in recited amounts, as a catalyst for polymerizing methyl methacrylate, is an obvious modification suggested by Nakabayashi. Furthermore, it is reasonable to expect the resulting polymerized product to have the recited amounts of the catalyst (such as methyl pyruvate).
As to claims 18 and 19, Nakabayashi teaches the monomer may be just methyl methacrylate (claim 6).
Claim(s) 2, 3, 9, 13, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over FR 2651236 A1 (“Acome”).
The discussion of Acome with respect to claims 1 and 12 is incorporated by reference.
As to claims 2 and 3, Acome teaches up to 60 ppm of methyl pyruvate and/or methyl hydroxyisobutyrate, and as such Acome contemplates up to 60 ppm methyl pyruvate as a component of the monomer mixture (para. 0008), and as such, is obvious as suggested by Acome.
As to claim 9, while not exemplified, Acome teaches the additional acrylate monomer is preferably a C1 to C4 acrylate, which includes n-butyl acrylate in a limited set of monomers defined by that preferred range, and thus the use of n-butyl acrylate is suggested by Acome.
As to claims 13 and 14, Acome teaches up to 60 ppm of methyl pyruvate and/or methyl hydroxyisobutyrate, and as such Acome contemplates up to 60 ppm methyl pyruvate as a component of the monomer mixture (para. 0008), and as such, is obvious as suggested by Acome.
Claim(s) 11 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over US 5,091,033 (“Nakabayashi”) as applied to claim 1, further in view of EP 0535828 A1 (“Doba”).
As to claims 11 and 21, Nakabayashi teaches the catalyst is for polymerizing and curing the polymerizable monomers (6:26-31), thus forming methacrylic resin. While Nakabayashi does not state radical polymerization, Nakabayashi states that methyl pyruvate is an alpha ketocarbonyl light initiator, which as evidenced by Doba, p. 4 as a radical initiator, and thus it is reasonable to expect the polymerization to be radical.
Claim(s) 12-17 are rejected under 35 U.S.C. 103 as being unpatentable over US 2005/0074556 (“Kano”).
As to claims 12 and 17, Kano teaches a film forming composition of a polymer, including monomers that are specifically preferred to be methacrylates (para. 0034).
While not exemplified, Kano teaches the polymer may be dissolved in a solvent, including methyl pyruvate (para. 0079), and teaches a solid content (polymer) between 2 to 30 % (para. 0081), such that the majority of the composition is solvent, which in the case of methyl pyruvate, would be present in well over the ranges recited by claims 12-17.
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 and 10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of copending Application No. 18/512,500 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because copending claim 7 recites a composition recited methyl methacrylate and additives, including methyl pyruvate in one list, and methyl isobutyrate.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1 and 10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 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 copending claim 7 recites a composition recited methyl methacrylate and additives, including methyl pyruvate in one list, and methyl propionate.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 10, and 12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 16 and 28 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 copending claim 16 recites a monomer composition and additives from a list including the recited additives as required by claims 1 and 10. Copending claim 28 recites a methacrylic resin composition with additives from a list including the recited additives as required by claim 12.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-3, 7-14, and 18-21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 9, 12, 13, 16, 18, 21, 27, and 31 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 copending claim 1 teaches a monomer composition comprising methyl methacrylate and a compound including methyl pyruvate or 2-methylbutyrate. Copending claim 12 recites an acrylic ester as required by claim 7. Copending claim 16 recites methyl isobutyrate as required by claim 10. Copending claim 18 recites polymerizing the resin composition as required by claim 21, thus obtaining a methacrylic resin of claim 11. Copending claim 19 recites a methacrylic polymer and additive from a list including methyl pyruvate and methyl 2-methylbutyrate as required by claim 12. Copending claim 31 recites the resin molding body recited by claim 20. As such, these copending claims anticipate the subject matter of claims 1, 7, 10-12, 20, and 21.
Claims 2 and 3 are obvious over the subject matter of copending claims 1 and 9, because these claims recited that the total amount of the additives, including methyl pyruvate and methyl 2-methylbutyrate exceed 50 ppm, and thus contemplates compositions having the recited additives in amounts exceeding 50 ppm.
Claims 8 and 9 are obvious over the copending claims because copending claims 12 and 13 recite the additional alkyl acrylates of claims 8 and 9, and thus those acrylates are an obvious combination suggested by the copending claims.
Claims 13 and 14 are obvious over the subject matter of copending claims 19 and 27, because these claims recited that the total amount of the additives, including methyl pyruvate and methyl 2-methylbutyrate exceed 50 ppm, and thus contemplates compositions having the recited additives in amounts exceeding 50 ppm.
Claims 18 and 19 are obvious over the subject matter of copending claim 21, because claim 21 recites that the methacrylic polymer includes 70 % of or more of methyl methacrylate, which includes 100 %, and thus renders the polymer of claims 18 and 19 obvious.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KREGG T BROOKS whose telephone number is (313)446-4888. The examiner can normally be reached Monday to Friday 9 am to 5:30 pm.
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/KREGG T BROOKS/ Primary Examiner, Art Unit 1764
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