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 § 102
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.
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, 2, 4, 7, 8, and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2022/0177799 Garcia et al. (provided by applicant in the 8/20/2024 IDS).
Garcia et al. disclose a method to produce ethylene-carboxylic acid copolymers. Paragraph 9 teaches supplying an ethylene monomer and an acrylate into a reactor, which meets the Applicants claimed supplying step. Garcia et al. further teach methacrylate, methacrylic acid and mixtures thereof, see paragraphs 120-130, along with other examples such as maleic, fumaric and itaconic acid, see paragraphs 136-138, which meet the claimed carboxylic acid monomer (see paragraphs 43 to 45).
For the claimed copolymerizing step of “using” a chain transfer agent of Chemical Formula 1, note that it embraced the methyl isobutyl ketone or MIBK (see instant claim 4). While Garcia et al. does not teach this explicitly as a transfer agent, it is explicitly taught as being present in the process therein. Paragraph 13 specifically discloses MIBK as a carrier solvent for peroxide.
When a species is clearly named, the species claim is anticipated no matter how many other species are additionally named. Garcia et al. teaches a method of producing a copolymer that comprises of supplying a monomer and comonomer as claimed to a reactor and copolymerizing in the presence of, which meets the general term of “using”, a ketone such as MIBK. In regards to claim 1, the required method steps, reactants and the compound represented by Chemical formula 1, are anticipated by Garcia et al.
As noted above, the Examiner recognizes that Garcia et al. do not specifically refer to MIBK as a chain transfer agent, however, it meets the structure of the Chemical Formula 1, making it an anticipatory teaching. MPEP 2112.02 II. states that when a claim recites using an old composition or structure and the "use" is directed to a result or property of that composition or structure, then the claim is anticipated.
As for claim 2, Garcia et al. teaches that MIBK is present in the reactor during the polymerization, which anticipates the claim limitation wherein if R1 is a methyl group and R2 is an alkyl group containing 4 to 6 carbons, see paragraph 13.
As for claim 4, Garcia et al. teach the use of the claimed MIBK and thus anticipating the claim limitation, see paragraph 13.
As for claim 7, Garcia teaches that the radical initiator is fed into the reactor with the chain transfer agent, and acrylate, see paragraph 9. This disclosure anticipates the claimed method of supplying a radical initiator
As for claim 8, Garcia et al. discloses that the initiator can be an organic peroxides such as a tert-amyl proxypivalate, see paragraphs 48 and 49, which anticipates the claimed radical initiator comprising of an organic acid.
As for claim 10, the claimed maleic and methacrylic acid comonomers are anticipated by the teachings of Garcia et at., see paragraphs 121 and 136.
Claim Rejection § 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 3 is rejected under 35 U.S.C. 103 as being unpatentable over US 2022/0177799, Garcia et al.
As for claim 3, Garcia et al. discloses the same structure, paragraphs 30-38, where the disclosed Ra and Rb are equivalent to the Chemical Formula 1 of claim 1, R1 and R2 groups. The teachings of paragraphs 30-38 indicate that the R groups can be comprised of 1 to 6 carbons and in different combinations with examples covering methyl, propyl, and pentyl, which can be combined in different ways, where sum of the number of carbons in the R groups is 6. Further, the difference between diethyl ketone and other preferred agents disclosed in paragraph 37, differ in the selection of ethyl rather than a propyl group, which would give a sum of the carbons in the R groups to 6. Paragraph 32 teaches that Ra and Rb can be same or different.
Case law holds that differences in concentrations do not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating criticality for the claimed ranges. "Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation", In re Aller, 105 USPQ 233, see MPEP 2144.05. It would have been obvious for one of ordinary skill at the effective date of the filingto have modified selections taught in Garcia et al. because this would lead to a “suitable ketone or aldehyde as chain transfer agents” (Garcia at paragraph 0030).
Claims 5, 6, 9, and 11 are rejected under 35 U.S.C. 103 as being unpatentable over US 2022/0177799, Garcia et al. as applied to claim 1 above, and further in view of US 8,871,876 B2, Berbee et al.
Regarding claims 5 and 6: Garcia et al. teaches a process of synthesizing ethylene-carboxylic acid copolymers by supplying an ethylene monomer, carboxylic monomer, initiator, and the transfer agent of claim 1, paragraph 9.
Garcia et al. does not teach the chain transfer agent constant which is provided in claims 5 and 6.
Berbee et al. teaches a process of synthesizing a copolymer consisting of ethylene and a carboxylic acid to form the ethylene-carboxylic acid copolymers in combination with a transfer agent, see column 2 lines 33-39. Berbee et al. disclose that chain transfer agents involve termination of growing polymer chains, which limits the molecular weight of the polymer, column 6 lines 49-55. Controlling the concentration of the chain transfer agent will give control over the length of the polymer weight, column 6 lines 57-60. Berbee et al. teach that one of the preferred chain transfer agents disclosed are methylethylketone, and the transfer constants taught are less than 0.1, see column 7 lines 3-8.
MPEP 2144.07 teaches the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). It would be obvious for one of ordinary skill at the effective date of filing date to combine the teachings of Garcia et al. and with Berbee et al. because the chain transfer constant has an impact on the polymer molecular weight and distribution and can facilitate the optimization of polymerization conditions, leading to more efficient and controlled polymer production.
Regarding claim 9, Garcia teaches what is noted in claim 1 above. Garcia does not teach the temperature of the copolymerization being in a range from 150 to 350 °C, and the pressure range from 1,500 to 3,000 bar.
Berbee et al. teaches in the example of running the reaction at 215 and 233 °C and pressure of 2137 bar, see table 7. The temperature range of the claim is from 150 to 350 °C, and pressure from 1,500 to 3,000 bar. Variation of temperature and pressure is a standard way to optimize reactions to increase yield, efficiency and to obtain the desired product. Berbee et al. show success of synthesizing a copolymer consisting of ethylene and carboxylic acid in combination with using a chain transfer agent at higher temperature and pressure in comparison to the moderate temperature and pressure used by Garcia et al.
MPEP 2144.07 teaches the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). It would be obvious for one of ordinary skill at the effective date of filing, 03/09/2023, to combine the teachings of Garcia et al. and with Berbee et al. because temperature and pressure of the reaction are essential in optimization and efficiency of polymer synthesis.
Regarding claim 11,Garcia teaches what is noted in claim 1 above. Garcia does not teach recycling unreacted portions of the ethylene monomer and carboxylic acid comonomer and chain transfer agent.
Berbee et al. teaches recycling unreacted portions of the reactants by having different sections within the reactor (either already installed or modified on the reactor) which can be used to separate and recycle the chain transfer agent, see column 7 lines 39-42. This disclosure shows the ability to separate and recycle parts, reacted or partially reacted, through modifications or adjustments of the reactor.
MPEP 2144.07 teaches the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). It would be obvious for one of ordinary skill at the effective date of filing, 03/07/2023, to combine teachings of Garcia et al. with Berbee et al. because recycling of the unreacted starting materials and functional groups will lead to more efficient, cheaper, and more environmentally friendly production of polyethylene-carboxylic acid copolymer.
Conclusion
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/V.V.Z./ Examiner, Art Unit 1765 /HEIDI R KELLEY/Supervisory Patent Examiner, Art Unit 1765
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