DETAILED ACTION
Status of Application
This action is responsive to national-stage application filed 10/24/2023. Following entry of the concurrently filed preliminary amendment, original claims 1-2, 4 and 11, and amended claims 3, 5-10, and 12-13 are currently pending and under examination herein.
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 . However, 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 a 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.
Objection – Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: lack of proper antecedent basis for the subject matter of the phrase “derivatives thereof” (i.e., derivatives of (meth)acrylates) as recited in claim 3. The most relevant disclosure (see, e.g., page 6, line 18 to page 7, line 17) is not seen to provide proper basis for “derivatives” of (meth)acrylates as the units 2) of claimed copolymer composition.
Objections – Claims
Claim 1 is objected to because of the following informalities: a redundant recitation of “an ethylenically unsaturated dithioester monomer” appears in lines 6-7 (cf., lines 5-6).
Claim 13 is objected to because of the following informalities: referring to the final line, it is recommended that “and” (first occurrence) be amended to –or-- to clarify that the various enumerated articles represent alternative choices for “said article of manufacture” as recited in line 2.
Clarification and appropriate correction of the above-noted claims is required.
Claim Rejections – 35 U.S.C. 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 2-5 and 10-12 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.
Regarding Claims 2 and 5, the claims each contain a broad recitation of a particular range or limitation followed by several or all of the linking terms "preferably," "more preferably" and "most preferably" and then narrower recitation(s) of the corresponding range or limitation. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) is considered indefinite, since the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP§ 2173.05(d). More specifically, it is unclear whether the features introduced by such linking term(s) are intended to be restrictive to the corresponding broader recitation(s), or merely exemplary of the remainder of the claims, and therefore not required. For purposes of substantive examination, the features introduced by the aforementioned linking terms are being treated as merely exemplary of the corresponding broader recitations, in accordance with the principal of giving the broadest reasonable interpretation to pending claims. See MPEP § 2173.01(1). However, clarification and appropriate correction are required.
Regarding Claim 3, the expression "derivatives thereof" creates indefiniteness as to the scope of subject matter intended to be covered by the claim. For instance, the portion of the parent “(meth)acrylates” compound that must be retained in any eligible derivate is not clear from the antecedent disclosure. Nor is it clear whether "derivatives" is limited to immediate reaction products prepared from the recited “(meth)acrylates” or encompasses the products of subsequent unspecified reactions. What chemical modifications of the parent compound are intended to qualify as "derivatives" in the context of the claimed invention? Clarification at least by way of explanation is required.
Regarding Claim 4, the claim recites the limitation “said vinyl monomer units”. It is not clear what the limitation refers back to in the claim nor in the claims upon which it depends (i.e., claims 3/1), because there are several different possibilities as to what the limitation might refer back to. As to the different possibilities, “vinyl chloride; vinyl acetate; vinyl ester; vinyl ethers” are recited above in claim 3 in lines 4-5, and the limitation could refer back to one, several or all of the earlier-recited vinyl monomer(s).
Regarding Claim 5, the claim provides the limitation to “said (meth)acrylic monomer units” in line 2. There is no proper and sufficient antecedent basis for this limitation in the claim nor in any claim upon which claim 5 depends (currently, claims 3/1).
Regarding Claim 10, the claim is indefinite as ambiguous as to whether step b) is intended to apply to a surface of a film, which is not positively recited in step b) even though antecedent step a) provides for “forming … a film … comprising the composition of claim 1”. For purposes of substantive examination, an assumption has been made that recited step b) is intended to apply to a surface of “a film” as recited in step a). However, clarification and appropriate correction are required.
Claims 11-12 inherit the indefiniteness ascribed to parent claim 10 supra.
Claim 8 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 8 is drawn to “[t]he composition of claim 7, comprising from 0.1 to 100 wt.% of the thio-functional copolymer based on total weigh of polymer in the composition.” Claim 7 is drawn to “[a] composition comprising the copolymer composition of claim 1 further comprising a vinyl polymer …”. Where the composition of claim 8 comprises 100 wt.% of the thio-functional copolymer, inclusion of the vinyl polymer required by claim 7 is effectively precluded. On this basis, claim 8 is properly rejected as an improper dependent claim for failing to include all the limitations of the claim upon which it depends, namely “a vinyl polymer” as per claim 7. 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.
Common Ownership Notice
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 Rejections – 35 U.S.C. 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 1-3, 5 and 10-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by any one of: Amamoto, et al (Angew. Chem. Int. Ed., 2011, 50, 1660-1663), Nicolay, et al (Macromolecules, Vol. 43, No. 9, 2010, 4355-4361), An, et al (Chem. Commun. 2015, 13058-13070), Le Neindre, et al (Polym. Int., vol. 63, No. 5, 2013, 887-893), Takahashi, et al (ACS Macro Letters, vol. 6, No. 11, 2017, 1280-1284) and CN 111378160 (‘CN ‘160’).
Regarding Claim 1, the cited references each describe a copolymer composition comprising: a) a copolymer comprising specific species of Applicant’s thio-functional monomer unit 1) and ethylenically unsaturated monomer unit 2) as discussed below.
In particular, Amamoto, et al describe a copolymer composition comprising a copolymer of butyl acrylate (BA) monomer unit and dimethacrylate trithiocarbonate (TTC) monomer unit (see page 1661, Scheme 1 and page 1663, final paragraph of left-hand column).
Nicolay, et al describe a copolymer composition comprising a copolymer of dimethacrylate trithiocarbonate monomer unit and methyl methacrylate monomer unit (see page 4357, Table 1).
An, et al describe a copolymer composition comprising a copolymer of a disulfide-functionalized dimethacrylate monomer unit and butyl acrylate monomer unit (see page 13060, Fig. 2).
Le Neindre, et al describe a copolymer composition comprising a copolymer of a xanthate-functionalized methacrylate monomer unit and methyl methacrylate monomer unit (see page 889, Scheme 1).
Takahashi, et al describe a copolymer composition comprising a copolymer of a TEMPS-functionalized methacrylate (HMA) monomer unit and hexyl methacrylate (HMA) monomer unit (see page 1281, Figure 1(b)-(c)).
CN ‘160 describes a copolymer composition comprising a copolymer comprising a dimethyl allyl dithiocarbamate monomer unit (c) and a diene compound monomer unit (b) (see Example 22 of corresponding English language translation, of record).
Regarding Claim 2, Amamoto, et al further describe preparation of cross-linked polymer 5 from TTC 4 (1.01 g, 2.00 mmol) and BA (5.6 ml. 38 mmol) with the polymer being obtained at a conversion of 99.4% (see page 1663, final paragraph). Given the almost quantitative conversion, the quantities of precursor monomers (TTC 4, BA) may be used to calculate the weight percent of thio-functional monomer units in the cross-linked polymer 5. The reported amounts of TTC 4 and BA are 1.01 g and 38 mmol, respectively, and the latter equates to 4.87 g BA (0.038 mol · 128.17 g/mol = 4.87 g). Hence, the weight percent of TTC 4 in the cross-linked polymer 5 is 0.17 wt. % ((1.01/5.88) · 100 = 0.17), a value well within the claimed range for wt.% of thio-functional monomer units.
Regarding Claim 3, each of Amamoto, et al, Nicolay, et al, An, et al, Le Neindre, et al, and Takahashi, et al describe a copolymer composition comprising a copolymer wherein the ethylenically unsaturated monomer unit 2) is a species of “(meth)acrylates or derivatives thereof” as noted above.
Regarding Claim 5, Nicolay, et al (page 4357, Table 1) and Le Neindre, et al (page 889, Scheme 1)
each describe a copolymer composition, wherein methyl methacrylate monomer units constitute 100 wt.% of the (meth)acrylic monomer units in the copolymer a), as claimed.
Regarding Claims 10-11, Amamoto, et al further discloses a process for providing a healable article (page 1662, right-hand column, 2nd paragraph and Figure 4a; page 1663, final paragraph of left-hand column), comprising the steps of: a) forming an article, profile, a film, a sheet, or a coating
comprising the composition described in reference to claim 1 above, b) exposing the surface of the
article, profile, sheet or coating to environmental forces, leaving a marred and/or scratched surface ("partially cut"), c) exposing said marred surface to radiation for an effective period of time to allow S-S and/or S-C bonds in the copolymer a) to break and reform, healing the marred and/or scratched surface ("the macroscopic crack almost completely disappeared after the UV irradiation").
Claims 1-4, and 7-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Enck, et al (WO 2018/019977 A1).
Regarding Claims 1, 3, 7, and 9, Enck, et al have already disclosed a composition comprising a copolymer composition (Example 12, “2-stage acrylic dispersion”), wherein the copolymer composition comprises: a copolymer (second stage, feed Z4) comprising an ethylenically unsaturated disulfide monomer unit (“disulfide diethanol dimethacrylate, DSDMA”) and other ethylenically unsaturated
monomer units (“methyl methacrylate”, “n-butyl acrylate”) [for claim 3]; and the composition further comprises a vinyl polymer wherein the vinyl polymer does not comprise a thio-functional monomer units as polymerized monomers (first stage, feed Z1) [for claim 7], wherein said vinyl polymer is an all-acrylic polymer comprising 63 wt. % of methyl methacrylate monomer units and 37 wt. %, of other (meth)acrylic monomers (“hydroxyethyl methacrylate, n-butyl acrylate) [for claim 9].
Regarding Claim 2, Enck et al in Example 12 further disclose that feed Z4 comprises: 4.50 g disulfide diethanol dimethacrylate (DSDMA), 92.70 g methyl methacrylate and 217.80 g n-butyl acrylate, which amounts equate to 1.4 wt.% of DSDMA ((4.5/315) · 100 = 1.43), a value well within the claimed ranges for wt.% of thio-functional monomer units.
Regarding Claim 4, recited limitation to “said vinyl monomer units comprise (meth)acrylic monomer units” is understood to apply to one, several, or all of “vinyl chloride; vinyl acetate; vinyl ester; vinyl ethers,” recited in claim 3 as alternative selections for units 2) and not as further limiting to “(meth)acrylates or derivatives thereof,” which is also recited in claim 3 as an alternative choice for units 2) and which is described by Enck et al as other ethylenically unsaturated monomer units (“methyl methacrylate”, “n-butyl acrylate”) of the copolymer of second stage, feed Z4, as discussed above.
Regarding Claim 8, Enck et al in Example 12 further disclose that feed Z1 comprises a total of 135 g of feed monomers and feed Z4 comprises a total of 315 g of feed monomers, i.e., 70 wt.% of thio-functional copolymer based on total weight of polymer in the composition, as claimed.
Claims 1, 6, 10-11 and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CN 109666121 A (‘CN ‘121’) (citing infra to corresponding English language translation, of record).
Regarding Claim 1, CN ‘121 has already disclosed a hybrid dynamic crosslinked polymer useful for self-healing materials (see ¶ [0306]). CN ‘121 in Example 10 (¶¶ [0327]-[0329]) describes a composition comprising a copolymer composition, wherein the copolymer composition comprises a copolymer comprising: an ethylenically unsaturated disulfide monomer unit (“2-pyridyIdithioethyl methacrylate”); and one ethylenically unsaturated monomer unit (“2-pyridyIdithioethyl methacrylate”), as claimed.
Regarding Claim 6, CN ‘121 further discloses that the hybrid dynamic crosslinked polymer further comprises any one or any of various named additives, including several species of the same additives as claimed; namely, fillers, an antioxidant, and antistatic agent (see ¶¶ [0057], [0246]).
Regarding Claims 10-11, CN ‘121 further discloses a process for providing a healable (i.e., self-healing) article, comprising the steps of: forming an article comprising the composition described in paragraph [0306] above; exposing the surface of the article to environmental forces, leaving a marred and/or scratched surface (¶ [0329] – “the polymer was scratched with a blade to a depth of about 1 mm”); exposing said marred surface to radiation for an effective period of time to allow S-S and/or S-C bonds in the copolymer to break and reform, healing the marred and/or scratched surface (id. –“the
polymer was scratched with a blade to a depth of about 1 mm, and then heat-treated [i.e., heat radiation, for claim 11] in a vacuum oven at 110oC for 12 to 14 hours, and it was observed that the scratches completely disappeared”).
Regarding Claim 13, CN ‘121 further discloses that “the tough dynamic polymer in this embodiment (i.e., Example 10) can be used as a sealant or interlayer adhesive having self-healing properties, … applied to sealing of a tempered glass and a supporting frame” (¶ [0329]). Inasmuch as tempered glass is traditionally used as window pane material, CN ‘121 is considered to implicitly describe the claimed article of manufacture that is “a window”. In addition, insofar as the claimed article of manufacture is “an automotive part,” CN ‘121 discloses applying the described hybrid dynamic crosslinked polymer material as “automotive industrial functional coating materials,” among various other practical application (¶ [306]).
Claim Rejections – 35 U.S.C. 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.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Amamoto, et al (Angew. Chem. Int. Ed., 2011, 50, 1660-1663) in view of Ji-kang, et al (J. Phys E: Sci. Instrum. 19 (1986), 315).
Regarding Claim 12, Amamoto, et al disclose the process of claim 10 as discussed above (see pages 7-8 supra). Amamoto, et al describe exposing a marred surface (“partially cut”) to UV irradiation for an effective period of time to allow S-S and/or S-C bonds in the copolymer a) to break and reform. While a UV lamp is used as a source of the radiation (see page 1665, final paragraph of left-hand column), Amamoto does not explicitly disclose that the radiation is supplied from one or more of a Hg lamp or an LED, as claimed. Nevertheless, commercial mercury lamps are well known in the art as affording a long-life source of UV radiation as confirmed by Ji-kang, et al (see page 313). To modify Amamoto, et al by supplying the UV radiation from a Hg lamp as per Ji-kang, et al would have been obvious to one of ordinary skill in the art at the time of effective filing, as such modification merely involves the straightforward use of a known element (Hg lamp) to perform its previously established function (UV radiation source). Indeed, the selection of a known element/material based on its suitability for its intended use has been held to be prima facie obvious (see MPEP § 2144.07).
Conclusion
Claims 1-13 are rejected. No claims are in condition for allowance at this time.
Correspondence
Any inquiry concerning this communication should be directed to Examiner F. M. Teskin whose telephone number is (571) 272-1116. The examiner can normally be reached on Monday through Friday from 9:00 AM – 5:30 PM.
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/FRED M TESKIN/Primary Examiner, Art Unit 1762
/FMTeskin/06-27-26
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