DETAILED ACTION
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior office action.
All outstanding objections and rejections made in the previous Office Action, and not repeated below, are hereby withdrawn.
The new grounds of rejection set forth below are necessitated by applicant’s amendment filed on 9/22/26. In particular, claim 1 has been amended to further limit the molecular weight of the resin.
The newly introduced limitations and/or the new claims were not present at the time of the preceding action. For this reason, the present action is properly made final.
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 .
Claim Rejections - 35 USC § 103
Claim(s) 1-9, 12 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO 2018/124595 (herein Jang) in view of Bortnowska-Barela et al “Bioactive emulsions of o-carboxyphenyl methacrylate copolymers," Acta Polymerica, April 1987, Vol.38, No. 12, pages 652-654 (herein Barela) and Rasulzadeh et al., "The Research of Antibacterial Properties of Methyl Methacrylate and Methacryloyl Salicylate Copolymers," Azerbaijan Chemical Journal, May 2017, No.3, pages 17-19 (herein Rasulzadeh) optionally in view of US 2001/0021752 (herein Watanabe) and US 2020/0231799 (herein Lee).
In setting forth the instant rejection, the machine translation of Jang filed with the IDS on 1/10/24 is relied upon.
As to claims 1, 3-5 and 14, Jang discloses an antibacterial SAN (thus comprising styrene and acrylonitrile) resin exhibiting antibacterial properties. See abstract, pages 2 and 5 and examples. The SAN comprises a (meth)acrylate polymer with an antibacterial group attached to the ester, similar to that of claim 1 except having the claimed A-COOH. See pages 5-6 and examples.
Thus, the difference between Jang and the claimed invention is that Jang is silent on the claimed monomer of formula 1 which has A-COOH.
Barela teaches that acrylic compounds represented by formula 1 impart antibactierla properties. See abstract and examples. The monomers of Barela read on the claimed formula wherein R1=methyl (C1 alkyl), R2=R3=hydrogen, A=unsubstituted C6 aromatic ring (benzene). Further, Rasulzadeh teaches similar monomers (table 2), wherein R1=methyl (C1 alkyl), R2=R3=hydrogen, A=unsubstituted C6 aromatic ring (benzene). The monomers engender antimicrobial/antibacterial properties to polymers. See abstract, pages 18-19 and examples.
Therefore, it would have been obvious at the time of the invention to have substituted the monomers of Jang with the antibacterial monomers of Barela and/or Rasulzadeh because the monomers are taught as suitable alternatives for engendering antibacterial properties.
Further, Jang the SAN has a weight average molecular weight of “about” 100,000 to 300,000 g/mol (see pages 2-3). It is the examiner’s position that the term “about” 100,000 of Jang encompasses values of e.g. 95,000 g/mol and therefore overlaps the claimed range. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to select any amount within the disclosed ranges, including amounts within the scope of the instant claims. Moreover, Jang discloses that the molecular weight controls heat resistance, processability, etc. See page 5. Further, Watanabe teaches similar copolymer resins and teaches that they have a weight average molecular weight of about 1000 to 1,000,000, with amounts chosen based on optimizing insolubility, antimicrobial activities, reaction rates and processability. See paragraph 61 of Watanabe. Lastly, Lee also discloses similar copolymer resins and teaches that they should have a weight average molecular weight of 10,000 to 300,000 g/mol to optimize mechanical strength and moldability. See paragraph 28 of Lee. Therefore, it is evident that the prior art teaches that the molecular weight controls antimicrobial properties, injection molding processability, strength, etc. In light of the discussion above, it would have been obvious at the time of the invention to have modified the resin of Jang via optimizing the molecular weight to within the claimed range as suggested by Jang, Watanage and Lee because one would want to optimize various properties such as processability, mechanical properties, heat resistance, strength, etc. See page 5 of Jang, paragraph 61 of Watanabe and paragraph 28 of Lee.
As to claim 2, Jang discloses that the antimicrobial monomer is added in 0.1 to 10 parts by weight per 100 parts of styrene and acrylonitrile. See pages 4-5 and examples that have between 1 and 3.75 parts (about 0.1 and 0.4 moles of monomer per 1 mole of the monomer units utilized in SAN). Further, note the amounts in Rasulzadeh and Berela that are within the claimed range.
As to claim 7, the molar ratio of styrene to acrylonitrile is taught implicitly in the examples at about weight ratios of 71:29 and 81.6:18.4. Since the molecular weight of styrene (105) is about double that of acrylonitrile (53), the molar ratios are about 36:29 to about 2:1 and within the claimed range.
As to claims 7-9, since the antibacterial monomer is identical, it stands to reason that the proposed SAN resin would also be resistant against the same claimed bacterium. Nevertheless, see the tables in Jang disclosing discloses that the monomers are resistant to Escherichia coli and Staphylococcus.
As to claim 11, a method of preparing the SAN resins disclosed above is taught that includes adding the monomers and polymerizing in the presence of an initiator (AIBN) at 70 oC for 4 hours.
As to claim 12, Jang is silent on the conversion rate. Rasulzadeh and Berela disclose conversions that are within the claimed range. See examples. Therefore, one would have been motivated to utilize the conversion rates of Rasulzadeh and Berela as guidance to prepare the modified SAN polymer. Moreover, one of ordinary skill would have sought to optimize the conversion rate by polymerizing the reaction long enough to reduce waste of unreacted monomers, while not too long as to induce the cost of heating and time. Therefore, it would have been obvious at the time of the invention to have modified the conversion as to reduce cost and increase production of the monomer.
Claim(s) 13 and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO 2018/124595 (herein Jang) in view of Bortnowska-Barela et al “Bioactive emulsions of o-carboxyphenyl methacrylate copolymers," Acta Polymerica, April 1987, Vol.38, No. 12, pages 652-654 (herein Barela) and Rasulzadeh et al., "The Research of Antibacterial Properties of Methyl Methacrylate and Methacryloyl Salicylate Copolymers," Azerbaijan Chemical Journal, May 2017, No.3, pages 17-19 (herein Rasulzadeh) in further view of US 2001/0021752 (herein Watanabe) and US 2020/0231799 (herein Lee).
The discussion with respect to Jang et al. set-forth above is incorporated herein by reference.
As to claim 13, Jang is silent on ABS resin.
Watanabe discloses methods of making SAN and ABS to have antibacterial properties. See abstract, paragraph 29 and examples. Watanabe specifically discloses that ABS may comprise SAN and/or be replaced by SAN. See paragraph 29 and examples. Similarly Lee teaches that SAN resin is typically mixed with ABS to yield material suitable for having good impact resistance. See paragraphs 2, 29 and examples. Lee
Therefore, it would have been obvious at the time of the invention to have utilized the modified SAN of Jang with ABS as suggested by Watanabe because one would want to utilize the SAN for their intended use and depending on their desired application (e.g. hoses). See paragraph 29 of Watanabe.
As to claim 15, as elucidated for claim 13 above, Lee discloses that the SAN is present in 40 to 85 wt% with the remainder being ABS (about 15 to 60 wt%) with examples within the claimed range. See paragraph 70. Lee teaches that such ranges yield compositions that have good low-gloss, appearance, impact resistance and moldability. See paragraph 70. Therefore, it would have been obvious at the time of the invention to have modified the resin of Jan to be in an ABS composition within the claimed amounts as taught by Lee because one would want to yield compositions that have good low-gloss, appearance, impact resistance and moldability. See paragraph 70 of Lee.
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive.
The declaration and arguments attempt to obviate the 103 rejections by showing secondary considerations, namely nonobviousness via unpredictable results.
In response, the examiner disagrees.
First, the it is not clear how a results of 99.30 and 99.94 are unexpected over 98.9% (shown in the declaration). What is the significance of a 0.4% difference? Is this normal variance that would be expected? Is this within experimental error? To be probative of nonobviousness results must be unexpected not just different. In re Merck & Co. 800 F.2d 1091, 1098, 231 PQ 375, 280 (Fed. Cir. 1986). Also see MPEP 716.02, first paragraph. It is not evident how a slight change in properties would be unexpected. Further, the examples of the originally filed specification show a variance for molecular weights within the claimed range of 99.94 (example 1), 99.30 (example 2), 99.07 (example 3) to 98.18 (example 4). Clearly, the new comparative example 4 of 98.9% is within this variance. Note that MPEP 716.02(b) states that the burden is on applicant to establish that the results are unexpected and significant. Applicant has the burden of explaining proffered data.
Secondly, the prior art of record shows that the molecular weight may affect the antimicrobial properties (paragraph 61 of Watanabe). Also see page 5 of Jang, paragraph 61 of Watanabe and paragraph 28 of Lee, which describe how the molecular weight affects other properties such as the strength and injection moldability, etc.
Thus, Lee and Watanabe counter applicants contention that the molecular weight of the SAN resin affects the moldability, strength, etc. Again, the results would be known from the prior art.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARK S KAUCHER whose telephone number is (571)270-7340. The examiner can normally be reached M-F 8-6 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie Lanee Reuther can be reached at (571) 270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARK S KAUCHER/Primary Examiner, Art Unit 1764
