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 .
This Office action is in response to the amendment filed 5/5/2026. Claims 1-16 are currently pending in the application.
Election/Restrictions
Applicant's election with traverse, of group I drawn to claims 1-12, in the reply filed on 5/5/2026 is acknowledged.
The traversal is on the ground(s) that common feature shared by the pending claims remains a special technical feature that makes a contribution over the prior art. Examiner’s analysis of cited art of Kainz defines the alleged common prior art teachings at too high a level of abstraction. Kainz is directed principally to aqueous polymer dispersions for binder application, whereas the presently pending claims are linked by a specially defined multistage polymer composition and its direct use in preparing a matrix resin composition.
This is not found persuasive because common technical feature of the elected invention of group I and group II is a multi-stage polymer. The multistage polymer is not a special technical feature as it does not make a contribution over a multistage polymer based on the teachings in Kainz et al.
The requirement is still deemed proper and is therefore made FINAL.
Claims 13-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 5/5/2026.
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 1-10 and 12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 and 6-16 of copending Application No. 19/113,070 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both are drawn to a process for making a multistage polymer latex by emulsion polymerization, wherein the multistage polymer comprising a first stage polymer and final stage polymer in the presence of an organophosphorus soap and comprises substantially similar monomers in the first and final stage, obtained multistage polymer is isolated by coagulation.
Copending claims are silent with respect to coagulation with one or more divalent cations.
However, Applicants 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 it teaches that suitable methods of coagulation include coagulation with a divalent cation (bridging paragraph, pages 13-14). Therefore, in light of the teachings in general disclosure of copending application it would have been obvious to one skilled in art to use divalent cation for coagulating the multi-stage polymer, absent evidence to the contrary.
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(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.
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 5-6 are 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.
Claims 5 and 6 recite “R’ is an alkyl and n ranges from 1 to 5” (line 3) and “R’ is an alkyl group comprising 1 to 6 carbon atoms” (lines 1-2), respectively. R’ as an alkyl group has three atoms or groups attached to the carbon atoms (for e.g., methyl is CH3). With R’ being attached to two “O” atoms it is not feasible since C is tetravalent and can be bound to 4 other atoms but not 5. Hence, metes and bounds of present claims cannot be ascertained by one of ordinary skill in art prior to the filing of present application. However, Examiner interprets it to be an alkylene group having the said number of carbon atoms.
Claim 10 is 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 10 recites “at least one organo-phosphorus monomer is present in the first stage polymer in an amount less than 1 wt% based on the total weight of the first stage polymer” and fails to further limit the scope of independent claim on which it is dependent. Specifically, claim 1 requires an organo-phosphorus monomer in the first stage, but less than 1 wt% includes 0 wt% and renders it optional. 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 1-4, 7-9 and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Takamido (US 2016/0177016 1).
Regarding claims 1 and 8, Takamido teaches rubber graft copolymer comprising a rubber polymer part and graft polymer part (abstract) which reads on multistage polymer latex in present claim 1. See example 1, wherein phosphazene derivative having a methacryloyl group (i.e., reads on 1st stage polymer comprises polymerized units derived from organophosphorus monomer in present claim 1) is polymerized in the presence of sodium polyoxyethylene alkyl ether phosphate (i.e., reads on the organo-phosphorus soap in present claims 1, and polyoxyethylene alkyl ether phosphate salt in present claim 8) to prepare rubber latex (i.e., reads on providing a 1st stage polymer in present claim 1). To the rubber latex obtained is added methyl methacrylate and butyl acrylate and polymerized to prepare a rubber graft polymer (paragraphs 0093-0094) which reads on providing a final stage polymer in present claim 1. A mixture comprising rubber graft copolymer is subjected to coagulation using a calcium chloride solution (i.e., reads on coagulation with one or more divalent cations in present claim 1), washed with water, dehydrated and dried to prepare powdered rubber graft copolymer (paragraph 0096) which reads on isolating the multistage polymer in present claim 1. A preferred method of preparing the rubber graft polymer is emulsion polymerization (paragraph 0052) which reads on emulsion polymerization in present claim 1.
Regarding claim 2, Takamido teaches that mixture comprising rubber graft polymer latex is coagulated using a calcium chloride, washed with water, dehydrated and dried to prepare powdered rubber graft copolymer (paragraph 0096). Hence, it is the Office’s position that the isolated multistage polymer inherently has a water content of less than 1 wt% based on weight of the dried multistage polymer as in present claim 2.
Regarding claim 3, see example 1, wherein rubber latex is prepared from a monomer mixture comprising butadiene and styrene (paragraph 0093) which reads on the polymerized units derived from butadiene and styrene in 1st stage polymer in present claim 3. The rubber graft copolymer is prepared from a monomer mixture comprising methyl methacrylate and butyl acrylate in the presence of rubber latex (paragraph 0094) which reads on polymerized units derived from methyl methacrylate and butyl acrylate in final stage in present claim 3.
Regarding claim 4, see example 1, wherein rubber latex is prepared from a monomer mixture comprising butadiene and phosphazene derivative having a methacryloyl group (paragraph 0093) which reads on polymerized units derived from butadiene and organo-phosphorus monomer in 1st stage polymer in present claim 4. The rubber graft copolymer is prepared from a monomer mixture comprising methyl methacrylate (i.e., reads on polymerized units derived from methyl methacrylate in final stage in present claim 4) and butyl acrylate in the presence of rubber latex (paragraph 0094). The graft copolymer is prepared from a monomer mixture comprising aromatic vinyl monomer (paragraph 0035). Examples of aromatic vinyl monomer includes styrene (paragraph 0042) which read on the polymerized units derived from styrene in final stage in present claim 4.
Regarding claim 7, Takamido teaches that in the rubber graft copolymer, the amount of rubber polymer part is not less than 60 parts by weight and not more than 85 parts by weight bases on 100 parts by weight of rubber graft copolymer (i.e., reads on the amount of 1st stage polymer based on the total weight of multistage polymer in present claim 7). The amount of graft polymer part is not less than 15 parts by weight and not more than 40 parts by weight based on 100 parts by weight of rubber graft copolymer (paragraph 0050) which reads on the amount of final stage polymer based on the total weight of multistage polymer in present claim 7.
Regarding claim 9, see example 1, wherein the rubber graft copolymer has a volume average particle diameter of 160 nm (paragraph 0095) which reads on the mean particle size in present claim 9.
Regarding claim 12, see Table 1, wherein the graft polymer part includes phosphazene derivative containing methacryloyl group (i.e., reads on final stage comprises polymerized unit derived from one or more organo-phopshorus monomers in present claim 12.
Claims 1-3 and 5-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kainz et al (WO 2019/091889 A1).
It is noted that WO 2019/091889 (WO) is being utilized for date purposes. However, since WO is not in English, US equivalent for WO, namely, Kainz et al (US 2020/0262942 A1) is referred to in the body of the rejection below. All column and line citations are to the US equivalent.
Regarding claim 1, see example 1, wherein the polymerization process comprises polymerizing in the presence of phosphorus containing dispersing aid Rhodafac® RSE610/A25 (i.e., reads on the organo-phosphorus soap in present claim 1). Feed 1 monomer mixture comprises Sipomer® PAM-200 (see paragraph 0028 and reads on organophosphorus monomer in 1st stage polymer in present claim 1). The polymerization mixture was allowed to react (i.e., reads on providing a 1st stage polymer in present claim 1). Subsequently, feed 2 was constantly added and polymerized (paragraphs 0124-0127) which reads on providing final stage polymer in present clam 1. The production of polymer powder by drying of aqueous polymer dispersion is carried out by spray drying (paragraph 0103) which reads on isolating the multistage polymer by spray drying in present claim 1. Production of aqueous polymer dispersion is by emulsion polymerization (paragraph 0020) which reads on providing multistage polymer latex by emulsion polymerization in present claim 1.
Regarding claim 2, Kainz et al teach that production of polymer powder by drying of aqueous polymer dispersion is carried out by spray drying (paragraph 0103). Hence, given that the polymer dispersion is dried by spray drying to obtain a polymer in powder form, it is the Office’s position that the isolated multistage polymer has a water content of less than 1 wt% based on weight of the dried multistage polymer as in present claim 2.
Regarding claim 3, see example 1, wherein the feed 1 homogeneous mixture comprises styrene, 2-ethylhexyl acrylate, acrylic acid (i.e., reads on the monomers used to form the 1st stage polymer in present claim 3) and feed 2 comprises styrene (paragraph 0127) which reads on monomers used to form the final stage polymer in present claim 3.
Regarding claim 5, Kainz et al that examples of phosphorus containing monomers include H2C=CH-C(=O)-OCH2CH2-O-P(=O)(-OH)2 (paragraph 0027) which reads on organo-phosphorus monomer in present claim 5, wherein R = H and R’ is an alkylene group and n is 1.
Regarding claim 6, Kainz et al that examples of phosphorus containing monomers include H2C=C(CH3)-C(=O)-OCH2CH2-O-P(=O)(-OH)2 (paragraph 0027) which reads on organo-phosphorus monomer in present claim 6, wherein R = -CH3 and R’ is an alkylene group comprising 2 carbon atoms.
Regarding claim 7, see example 1, wherein the amount of monomers in feed 1 homogeneous mixture is about 76% by weight based on the total weight of multistage polymer and in feed 2 is about 24% by weight based on the total weight of multistage polymer (paragraph 0127)
Regarding claim 8, see example 1, wherein Rhodafac® 610/A25 is used as the phosphorus containing dispersing aid (paragraphs 0125-0126). It is noted that Rhodafac® 610/A25 is ammonium salt of polyoxyethylene tridecyl ether phosphate (i.e., reads on polyoxyalkylene alkyl ether phosphate salt in present claim 8.
Regarding claim 9, polymer particles have a weight average particle diameter in the range of ≥ 50 and ≤ 500 nm (paragraph 0102).
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 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over Rohrbach (US 2020/0181336 A1) in view of Belowich et al (US 2018/0016376 A1).
Regarding claim 1, Rohrbach discloses a process for making a polymer composition comprising: providing a multistage polymer latex by emulsion polymerization in the presence of phosphate surfactant (i.e., reads on providing a multistage polymer latex by emulsion polymerization in presence of organophosphorus soap in present claim 1), wherein the multistage polymer comprises a 1st stage polymer (i.e., reads on providing a 1st stage polymer in present claim 1) and a final stage polymer (i.e., reads on providing a final stage polymer in present claim 1) and coagulating the multistage polymer (abstract) which reads on isolating the multistage polymer by coagulation in present claim 1. The multistage polymer is coagulated by mixing with one or more multivalent cations such as Ca2+ or Mg2+ (paragraph 0030) which reads on coagulation with divalent cations in present claim 1.
Rohrbach is silent with respect to organo-phosphorus monomer in the first stage polymer.
However, Belowich et al teach a composition comprising a stable aqueous dispersion of polymer particles comprising structural units of phosphorus acid monomer and structural units of a photoinitiator monomer. Gloss retention of paints containing the latex is markedly improved (abstract). The latex is advantageously prepared in two stages (paragraph 0009). The phosphorus acid monomer and photoinitiator are staged together preferably in first stage. Copolymerizing phosphorus acid monomer and photoinitiator monomer in the first stage provides for a mechanism for the functionalized photoinitiator groups to be situated on the surface of the latex particles thereby imparting the advantageous gloss retention and improved dirt pickup resistance (paragraph 0011). Therefore, in light of the teachings in Belowich et al, it would have been obvious to one skilled in art prior to the filing of present application to include the phosphorus acid monomer, of Belowich et al, in the first stage polymer, of Rohrbach, for above mentioned advantages.
Regarding claim 2, Rohrbach teaches drying the coagulated multistage polymer to a water content of less than 1 wt% based on the dry weight of the multistage polymer (abstract).
Regarding claim 3, latex is synthesized similarly to the comparative example, except for using Rhodafac® RS-610 (paragraph 0050). It is noted that Rhodafac® RS-610 is a phosphorus containing surfactant. See comparative example 1, wherein the first stage monomer mixture comprises butadiene and styrene (i.e., reads on polymerized units derived from one or more of butadiene and styrene in present claim 3) and the final stage comprises styrene and methyl methacrylate (paragraph 0044) which reads on polymerized units derived from one or more of styrene and methyl methacrylate in present claim 3.
Regarding claim 4, See comparative example 1, wherein the first stage monomer mixture comprises butadiene (i.e., reads on first stage comprising polymerized units derived from butadiene in present claim 4) and the final stage comprises styrene and methyl methacrylate (paragraph 0044) which reads on final stage polymer comprises polymerized units derived from styrene and methyl methacrylate in present claim 4. Additionally, Belowich et al teach multi-stage polymer comprising organophosphorus monomer in the first stage (paragraph 0011).
Regarding claims 5 and 6, examples of phosphorus acid monomers, in Belowich et al, include
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wherein R is H (paragraph 0012) which reads on organo-phosphorus monomer in present claim 5, wherein R = CH3, R’ = alkylene group, and n = 1 in present claim 5; and R = CH3 and R’ = alkylene group comprising 2 carbon atoms in present claim 6.
Regarding claim 7, Rohrbach teaches that weight ratio of first and final stage polymer is 0.1: 1 or higher and 20:1 or lower (paragraph 0027) which overlaps with the wt% of first stage polymer and final stage polymer in present claim 7.
Regarding claim 8, see example 1, of Rohrbach, wherein the multi-stage polymer is prepared in the presence of Rhodafac® RS-610 (paragraph 0050). It is noted that Rhodafac® RS-610 is ammonium salt of polyoxyethylene tridecyl ether phosphate (i.e., reads on polyoxyalkylene alkyl ether phosphate salt in present claim 8).
Regarding claim 9, Rohrbach teaches that multistage polymer has a mean particle size of 50 nm to 1 micrometer (paragraph 0017).
Regarding claim 10. Belowich et al teach that phosphorus acid monomer is preferably present in amounts of 0.05 to 2% by weight (paragraph 0008) which overlaps with the amount of organo-phosphorus monomer in present claim 10. 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.
Regarding claim 11, Rohrbach teaches that second stage which is an intermediate stage can be formed in the presence of first stage polymer (paragraph 0010) which reads on the providing at least one intermediate stage between the first stage and final stage polymer in present claim 11.
Regarding claim 12, Belowich et al that phosphorus acid monomer may be staged in second stage (paragraph 0011) which reads on final stage comprises polymerized units derived from organo-phosphorus monomer in present claim 12.
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.
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/KARUNA P REDDY/Primary Examiner, Art Unit 1764
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