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 .
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.
Claim 2 is 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.
The limitation “the monomer represented by Chemical Formula 1 is included in an amount of 0.01 mole to 0.7 moles, based on 1 mole of the antibacterial SAN resin” can be interpreted in two ways.
1) that the monomer represented by Chemical Formula 1 is included in an amount of 0.01 mole to 0.7 moles, based on 1 mole total of the monomer units of the antibacterial SAN resin.
2) the monomer represented by Chemical Formula 1 is included in an amount of 0.01 mole to 0.7 moles, based on 1 mole of the copolymer of the antibacterial SAN resin.
The first interpretation appears to be what is implied in the examples and gives amounts of the monomer unit of about 1 to 70 mole%. The second interpretation gives much lower amounts of 0.01 to 0.7 units of the monomer are present in 1 copolymer, thus suggesting that only up to only 70% of the copolymers even have the unit and as low as only 1 in 100 copolymers have the unit.
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.
Claim(s) 1-12 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 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, 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.
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 10, the SAN has a weight average molecular weight of about 100,000 to 300,000 g/mol (see pages 2-3), which overlaps the claimed range. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). Also see MPEP 2144.05 stating that when there is overlap with the claimed ranges and the prior art, a prima facie case of obviousness exists. 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.
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 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).
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.
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.
Conclusion
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.
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, 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.
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 S KAUCHER/Primary Examiner, Art Unit 1764
Prosecution Insights