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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 27-DEC-2023, 20-FEB-2020, and 19-NOV-2024 were filed before the mailing date of the first Office action on the merits. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements have been considered by the examiner.
Claim Interpretation
The claims recite the term “thickener” which has been interpreted by the Office as a “composition” and not a product or article. This is based upon the original specification equating the ‘thickener’ to a ‘methacrylic resin’.
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.
Claims 1-10 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 claim 1 - The last 6 lines of instant claim 1 are within parentheses. As such, it cannot be clearly ascertained if these 6 lines are intended to be part of the claim or not.
Regarding claim 7 - Claim 7 recites the limitation "the drying method" in line 2. There is insufficient antecedent basis for this limitation in the claim.
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.
Claims 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Nield (US Pat. 3,676,404) in view of Hickey et al. (US 2002/0065336).
Regarding claims 1-6, and 10 - Nield teaches a methyl methacrylate copolymer (1:30-66), comprising 90 parts methyl methacrylate, 5 parts α-methyl styrene, and 5 parts maleimide (Example 22). Nield suggests other monomers such as n-octyl acrylate or butyl acrylate are functionally equivalent monomers to the maleimide depending upon the softening point of the copolymer (4:70 – 5:16). As such, it is submitted that one of ordinary skill in the art would clearly envisage a copolymer comprising 90 parts methyl methacrylate, 5 parts α-methyl styrene, and 5 parts of either n-octyl acrylate or butyl acrylate.
Nield does not teach a specific molecular weight range but does note that polymethyl methacrylate has utility in many different applications (1:20-25). Hickey et al. teaches that copolymers various acrylate and methacrylate monomers are useful as thickening agents for cyanoacrylate adhesives (paras. 20-21 and 17). Hickey et al. teaches that the thickener for the cyanoacrylate adhesive should have a molecular weight of about 100,000 to 1,000,000 and used in an amount of 0.5-25% by wight of the adhesive (para. 21). Nield and Hickey et al. are analogous art because they are concerned with a similar technical difficulty, namely, that of copolymers various acrylate and methacrylate monomers and uses thereof. At the time of filing, a person having ordinary skill in the art would have found it obvious to have made the methyl methacrylate copolymer of Nield in a molecular weight range of about 100,000 to 1,000,000 as taught by Hickey et al. and would have motivated to do so since Hickey et al. suggests use of such copolymers various acrylate and methacrylate monomers would be an additional commercial use as a thickener and therefore provide an additional economic benefit.
The Office realizes that all of the claimed effects or physical properties, η1 and η2 ratio being greater than 1 and less than 5, are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification suggests that results in the claimed effect or physical property by copolymerizing a certain amount of alkyl acrylate and aromatic vinyl monomer (orig. spec. para. 24). As such, the applied reference Nield specifically teaches this feature. Therefore, the claimed effects and physical properties, i.e. (η1 and η2 ratio being greater than 1 and less than 5) would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Regarding claim 7 - Nield further teaches various polymerization solvents and drying methods of their copolymers and the formation of spherical granules or particle when desired (examples 11 and 17). For example, polymerizing in a non-aqueous solvent such as methanol, dissolved in chloroform, reprecipitated in ether and dried in vacuo (example 10). As such it would have been obvious to have reduced the moisture content of the methyl methacrylate copolymer to as low as possible depending upon its final commercial use. Since, Hickey et al. suggest using a methacrylate copolymer in a very moisture sensitive product, ie. cyanoacrylate adhesives, drying the copolymer to a below 1% or less of moisture would have been obvious to one of ordinary skill in the art in order to produce an cyanoacrylate adhesive that has long shelf stability.
Regarding claims 8 and 9 - Nield further teaches various polymerization solvents and drying methods of their copolymers and the formation of spherical granules or particle when desired (examples 11 and 17). Nonetheless, since Nield teaches the formation of granules and particles it would have been well within the skill of one of ordinary art to from such granules and particles into a desired size (see MPEP 2144.04, IV, A).
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 1-3 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/246,851 in view of Hickey et al. (US 2002/0065336). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claim 1 of copending Application No. 18/246,851 teaches a thickener comprising 95-99% methyl methacrylate and 0.1-5% of an alkyl methacrylate having a carbon number of 4 or more. Hickey et al. teaches that the thickener for the cyanoacrylate adhesive should have a molecular weight of about 100,000 to 1,000,000 and used in an amount of 0.5-25% by wight of the adhesive (para. 21). Copending Application No. 18/246,851 and Hickey et al. are analogous art because they are from the same field of endeavor, namely, thickeners for cyanoacrylates. At the time of filing, a person having ordinary skill in the art would have found it obvious to have made the methyl methacrylate copolymer of Claim 1 of copending Application No. 18/246,851 in a molecular weight range of about 100,000 to 1,000,000 as taught by Hickey et al. and would have motivated to do so since Hickey et al. suggests use of such molecular weight range is desired for methacrylate thickeners in cyanoacrylate adhesives.
The Office realizes that all of the claimed effects or physical properties, η1 and η2 ratio being greater than 1 and less than 5, are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification suggests that results in the claimed effect or physical property by copolymerizing a certain amount of alkyl acrylate and aromatic vinyl monomer (orig. spec. para. 24). As such, Claim 1 of copending Application No. 18/246,851 specifically teaches this feature. Therefore, the claimed effects and physical properties, i.e. (η1 and η2 ratio being greater than 1 and less than 5) would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARK EASHOO whose telephone number is (571)272-1197. The examiner can normally be reached M-F, 7am - 4pm.
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, Patricia Mallari can be reached at 571-272-4729. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
MARK EASHOO, Ph.D.
Supervisory Patent Examiner
Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767
Prosecution Insights