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 .
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.
Priority
3. This application is a 371 of PCT/KR2023/007430 05/31/2023.
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application KOREA, REPUBLIC OF 10-2022-0072523 06/15/2022 filed on 12/27/23.
Information Disclosure Statement
The information disclosure statement (IDS), filed on 12/27/23, 09/09/24, 01/14/25, 02/06/25, and 02/26/25 have been considered. Please refer to Applicant's copy of the 1449 submitted herewith.
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 1-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14, 19-20 of U.S. Patent No. 12,624,202. Although the claims at issue are not identical, they are not patentably distinct from each other because both claimed inventions are directed to a thermoplastic resin composition and their method of preparation. Regarding instant claims 1-2, 10-11, 13-14, patented claim 1 discloses a thermoplastic resin composition and patented claim 19 discloses a method of preparing a thermoplastic resin composition, comprising kneading and extruding, at 180 to 300° C and 80 to 400 rpm, the composition comprising: an alkyl (meth)acrylate-aromatic vinyl compound-vinyl cyanide compound graft copolymer (A) comprising: a polymer seed comprising: 70 to 85% by weight of a first alkyl (meth)acrylate (overlapping instant claims 2, 14 range of 45 to 72% by weight) and 15 to 30% by weight of a first aromatic vinyl compound (overlapping instant claims 2, 14 range of 28 to 55% by weight), a rubber core surrounding the polymer seed and comprising: 78 to 90% by weight of a first alkyl acrylate (fall into instant claims 2, 14 range of 78 to 91% by weight) and 10 to 22% by weight of a second aromatic vinyl compound (fall into instant claims 2, 14 range of 9 to 22% by weight), and a graft shell surrounding the rubber core and comprising: 65 to 80% by weight of a third aromatic vinyl compound (fall into instant claims 2, 14 range of 65 to 82% by weight), 14 to 25% by weight of a first vinyl cyanide compound (fall into instant claims 2, 14 range of 12 to 30% by weight), and 3 to 15% by weight of a second alkyl acrylate (read on instant claims 2, 14 range of 3 to 15% by weight); and a non-graft copolymer (B) comprising: a second alkyl (meth)acrylate, a fourth aromatic vinyl compound, and a second vinyl cyanide compound, wherein the graft copolymer (A) satisfies both Equations 1 and 2: [Equations 1] 200 ≤ 2⨯r2 ≤ 300 (fall into instant claims 1-2, 14 range of 180 ≤ 2⨯r2 ≤ 300 [Equation 2] 25 ≤ r2-r1 ≤ 45, wherein r1 represents an average radius (nm) from a center of the graft copolymer to a surface of the polymer seed facing the rubber core, and r2 represents an average radius (nm) from the center of the graft copolymer to a surface of the rubber core facing the graft shell; patented claim 10 discloses a difference between a refractive index of a sol of the thermoplastic resin composition and a refractive index of a gel of the thermoplastic resin composition is 0.005 or less (fall into instant claims 1, 10 range of 0.006 or less), and the refractive indexes are obtained by adding acetone to the thermoplastic resin composition, performing stirring and centrifugation to obtain an insoluble gel and a soluble sol, and then refractive indexes thereof are measured, patented claim 11 discloses the thermoplastic resin composition possesses a haze of 5% or less (fall into instant claims 1, 11 range of 10% or less) as measured using an injection specimen having a thickness of 3 mm according to ASTM D1003, and patented claim 13 discloses the thermoplastic resin composition possesses an Izod impact strength of 11 kgf.Math.cm/cm or more (fall into instant claimed 1, 13 range of 10 kgf.Math.cm/cm or more) as measured at room temperature using a specimen having a thickness of ¼″ according to ASTM D256 (read on instant claims 1, 13).
A prima facie case of obviousness exists for the thermoplastic resin composition, wherein the patented claims disclose the overlapping range of the first alkyl (meth)acrylate and the first aromatic vinyl compound of instant claims 2, 14, equation 1 of instant claims 1-2, 14. It is well-settled that where claimed ranges “overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 267 (CCPA 1976).
Regarding instant claim 3, patented claim 2 discloses in the graft copolymer (A), a difference between a refractive index of the rubber core and a refractive index of the graft shell is 0.08 to 0.09 (fall into instant claim 3 range of 0.093 or less).
Regarding instant claim 4, patented claim 4 discloses a difference between a refractive index of the polymer seed of the graft copolymer (A) and a refractive index of the non-graft copolymer (B) is 0.007 or less (fall into instant claim 4 range of 0.015 or less).
Instant claims 5-9, 15-16 and patented claims 5-9, 14, 20 are same.
Regarding instant claim 12, patented claim 12 discloses the thermoplastic resin composition possesses a gloss of 115 or more (encompassing instant claim 12 range of 122 or more) as measured at 45° using an injection specimen having a thickness of 3 mm according to ASTM D2457.
A prima facie case of obviousness exists for the thermoplastic resin composition, wherein the patented claims patented claim 10 discloses the thermoplastic resin composition possesses a gloss of 115 or more as measured at 45° using an injection specimen having a thickness of 3 mm according to ASTM D2457, encompassing instant claim 12. It is well-settled that where claimed ranges “overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 267 (CCPA 1976).
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 1-16 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.
In claims 1, 2, 14, Equation 1 is indefinite in that it is not apparent what the
asterisk (*) in the expression "2*r2" denotes. Do applicants intend to recite 2xr2
instead? Otherwise, applicants are suggested to delete the indefinite term.
Claims 3-13, 15-16 depends directly or indirectly from the rejected claims 1-2, 14.
Appropriate correction is required.
Potential Allowable Subject Matter
9. Claims 1-16 are declared allowable over the prior art of record and if the obviousness-type double patenting present, supra, is overcome (e.g. by Applicant filing of a Terminal Disclaimer).
The following is a statement of reasons for the indication of allowable subject matter: Closest prior art is Kim (US 2014/0235749).
Kim discloses a thermoplastic resin composition comprising: (A) an alkyl (meth)acrylate-aromatic vinyl compound-vinyl cyanide compound graft copolymer comprising (para [0010]): (A1) a polymer seed comprising at least one of an aromatic vinyl compound, a vinyl cyanide compound and an alkyl (meth)acrylate compound, but does not monomer contents for embodiment wherein seed comprises an aromatic vinyl compound and an alkyl (meth)acrylate) (regarding claims 2, 14); (A2) a rubber core comprising alkyl acrylate, but does not disclose that core can additionally include an aromatic vinyl compound (regarding claims 2, 14); and (A3) a graft shell comprising at least one of an aromatic vinyl compound, a vinyl cyanide compound and an alkyl(meth)acrylate compound; and (B) a matrix polymer comprising one or more compounds of an aromatic vinyl compound, a vinyl cyanide compound and an alkyl(meth)acrylate compound (para [0015]-[0029]) but does not contains imide-based compounds (regarding claims 1-2, 14), wherein the graft copolymer satisfies Equation (1) 150≤2xr2≤370 (para [0012]) and Equation (2) 10≤r2-r1≤70 (para [0013]). Working example (Example 11) in Kim comprises: (A) a graft copolymer comprising: (A1) a polymer seed comprising styrene, acrylonitrile and methyl methacrylate; (A2) a rubber core comprising butyl acrylate; and (A3) a graft shell comprising styrene and acrylonitrile; and (B) a matrix polymer comprising styrene and acrylonitrile. However, Kim does not provide any guidance to formulate a composition wherein the graft copolymer comprises the presently claimed polymer seed, rubber core and graft shell, wherein each comprises specific monomeric units and contents thereof, in combination with a matrix polymer comprising an aromatic vinyl compound, a vinyl cyanide compound, an alkyl(meth)acrylate compound, and imide-based compounds. Thus, Kim does not fairly suggest modifying Example 11 such that i) the polymer seed comprises from 70 to 85 wt.% methyl methacrylate and 15 to 30 wt.% styrene, ii) the rubber core further contains an aromatic vinyl compound such that it comprises 78 to 90 wt.% butyl acrylate and 10 to 22 wt. % aromatic vinyl compound, iii) the graft shell further contains an alkyl acrylate such that it comprises 65 to 80 wt. % styrene, 14 to 25 wt. % acrylonitrile and 3 to 15 wt.% alkyl acrylate, iv) the matrix comprising an aromatic vinyl compound, a vinyl cyanide compound, an alkyl(meth)acrylate compound, and imide-based compounds, and/or v) the graft copolymer satisfies the presently claimed Equations 1 and 2, and or claim 1 haze value. Accordingly, Kim fails to teach or suggest all the limitations of the presently claimed thermoplastic resin composition and/or method of making the same.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KUMAR R BHUSHAN whose telephone number is (313)446-4807. The examiner can normally be reached 9.00 AM to 5.50 PM (EST).
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/KUMAR R BHUSHAN/Primary Examiner, Art Unit 1766
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