DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Claim Amendment filed 03/13/2024
2. New claims 13-16 were added, which are supported at page 4, lines 10-15, of the specification as originally filed.
Thus, no new matter is present.
Claim Objections
3. Claim 1 is objected to because of the following informalities:
As to Claim 1: The applicants are advised to replace the claimed phrase “A composition for latex polymerization comprising” with thew new phrase “A composition for latex polymerization, wherein the composition comprises”.
The applicants are also advised to replace the claimed phrase “wherein an ionic conductivity is 275 µs/cm or more” with the new phrase “wherein the composition has an ionic conductivity is 275 µs/cm or more” as supported at paragraphs [0026] and [0027] of applicants’ published application, i.e., US PG PUB 2024/0384072.
Appropriate corrections are required.
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.
Double Patenting I
4. Claims 1-6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of co-pending U.S. Application No. 19/371,523 (hereinafter referred to as “US Appl. ‘523”; corresponding to US PG PUB 2026/0167758) in view of English Translation of KR1019970070034 (hereinafter referred to as “KR ‘’034”).
The claims of US Appl. ‘523 and the present application are directed to a composition for latex polymerization to prepare a latex for dip molding, wherein the composition comprises an ethylenically unsaturated nitrile monomer, butadiene and isoprene monomers (conjugated diene-based monomer), an ethylenically unsaturated nitrile monomer selected from acrylonitrile, methacrylonitrile, or α-cyanoethylacryonitrile, and an ethylenically unsaturated acid monomer selected from acrylic acid, methacrylic acid or itaconic acid. The claim of US Appl. ‘523, like the present application, also recite 1-55 parts by weight of the ethylenically unsaturated nitrile monomer. The claim of US Appl. ‘523 further recite 65-80 parts by weight of isoprene monomer and 1-10 parts by weight of butadiene monomer (which overlaps with the presently claimed 30-90 parts by weight of the conjugated diene-based monomer), and 1.5-6 parts by weight of the ethylenically unsaturated acid monomer (which overlaps with the presently claimed 0.001-20 parts by weight of the ethylenically unsaturated monomer). See MPEP section 2144.05 (The subject matter as a whole would have been obvious to one having ordinary skill in the art at the time the invention was made, since it has been held that choosing the over lapping portion, of the range taught in the prior art and the range claimed by the applicant, has been held to be a prima facie case of obviousness.).
However, the claims of US Appl. ‘523 do not specifically mention the addition of an ionic compound recited in claims 1 and 5 of the present application, much less the presently claimed iconic conductivity of its composition.
Nevertheless, KR ‘034 teaches the use of sodium chloride and potassium chloride (which according to present claim 5 corresponds to the presently claimed ionic compound) for the purposes of obtaining a latex-based composition having excellent thermal stability and reproducible particle size (Page 1, Paragraph 1 and Page 2, Paragraph 5).
Given the above teachings, it would have been obvious to one of ordinary skill in the art to add the presently claimed ionic compound, i.e., potassium chloride or sodium chloride, taught by KR ‘034 in the latex-based composition of US Appl. ‘523, with a reasonable expectation of successfully obtaining excellent thermal stability and reproducible particle size.
Moreover, the presently claimed ionic conductivity naturally follows from the claims of US Appl. ‘523 and KR ‘034 since the claims of US Appl. ‘523 and KR ‘034 would have suggested the presently claimed composition for latex polymerization for the reasons set forth above. See MPEP section 2145, II (“The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious”). See also MPEP section 2113.01 “Products of identical chemical composition cannot have mutually exclusive properties. 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.”
This is a provisional nonstatutory double patenting rejection.
Double Patenting II
5. Claims 1-6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 and 6-8 of co-pending U.S. Application No. 18/080,486 (hereinafter referred to as “US Appl. ‘486”; corresponding to US PG PUB 2023/0383039) in view of English Translation of KR1019970070034 (hereinafter referred to as “KR ‘’034”).
The claims of US Appl. ‘486 and the present application are directed to a composition for latex polymerization to prepare a latex for dip molding, wherein the composition comprises an ethylenically unsaturated nitrile monomer, conjugated diene-based monomer selected from 1,3-butadiene or isoprene, an ethylenically unsaturated nitrile monomer selected from acrylonitrile, methacrylonitrile, or α-cyanoethylacryonitrile, and an ethylenically unsaturated acid monomer selected from acrylic acid, methacrylic acid or itaconic acid. The claim of US Appl. ‘486 also recite 45-80 wt.% of conjugated diene-based monomer, 15-45 wt.% of ethylenically unsaturated nitrile monomer, and 1-10 wt% of the ethylenically unsaturated acid monomer, which overlap with those presently claimed, i.e., 30-90 parts by weight of conjugated diene-based monomer, 1-55 parts by weight of ethylenically unsaturated nitrile monomer and 0.001-20 parts by weight of the ethylenically unsaturated acid monomer. See MPEP section 2144.05 (The subject matter as a whole would have been obvious to one having ordinary skill in the art at the time the invention was made, since it has been held that choosing the over lapping portion, of the range taught in the prior art and the range claimed by the applicant, has been held to be a prima facie case of obviousness.). Moreover, by virtue of using the transitional phrase “comprising” the present claims do not exclude additional ingredients, including the polyester polyol recited in the claims of US Appl. ‘486.
However, the claims of US Appl. ‘486 do not specifically mention the addition of an ionic compound recited in claims 1 and 5 of the present application, much less the presently claimed iconic conductivity of its composition.
Nevertheless, KR ‘034 teaches the use of sodium chloride and potassium chloride (which according to present claim 5 corresponds to the presently claimed ionic compound) for the purposes of obtaining a latex-based composition having excellent thermal stability and reproducible particle size (Page 1, Paragraph 1 and Page 2, Paragraph 5).
Given the above teachings, it would have been obvious to one of ordinary skill in the art to add the presently claimed ionic compound, i.e., potassium chloride or sodium chloride, taught by KR ‘034 in the latex-based composition of US Appl. ‘486, with a reasonable expectation of successfully obtaining excellent thermal stability and reproducible particle size.
Moreover, the presently claimed ionic conductivity naturally follows from the claims of US Appl. ‘486 and KR ‘034 since the claims of US Appl. ‘486 and KR ‘034 would have suggested the presently claimed composition for latex polymerization for the reasons set forth above. See MPEP section 2145, II (“The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious”). See also MPEP section 2113.01 “Products of identical chemical composition cannot have mutually exclusive properties. 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.”
This is a provisional nonstatutory double patenting rejection.
Double Patenting III
6. Claims 1-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of U.S. Patent No. 11,708,441 (hereinafter referred to as the “patent”) in view of English Translation of KR1019970070034 (hereinafter referred to as “KR ‘’034”).
The claims of the patent and the present application are directed to a composition for latex polymerization to prepare a latex for dip molding, wherein the composition comprises an ethylenically unsaturated nitrile monomer, isoprene monomer (conjugated diene-based monomer), an ethylenically unsaturated nitrile monomer selected from acrylonitrile, methacrylonitrile, or α-cyanoethylacryonitrile, and an ethylenically unsaturated acid monomer selected from acrylic acid, methacrylic acid or itaconic acid. The claims of the patent and the present application also recite the addition of water, an emulsifier, a polymerization initiator and a molecular-weight control (adjusting) agent. The claims of the patent further recite 70-90 parts by weight of the isoprene monomer (overlaps with the presently claimed 30-90 parts by weight of the conjugated diene based monomer), 10-55 parts by weight of the ethylenically unsaturated nitrile monomer (encompassed by the presently claimed 1-55 parts by weight of the ethylenically unsaturated nitrile monomer) and 1.5-3.5 parts by weight of the ethylenically unsaturated acid monomer (encompassed by the presently claimed 0.00-20 parts by weight of the ethylenically unsaturated acid monomer).
However, the claims of the patent do not specifically mention the addition of an ionic compound recited in claims 1 and 5 of the present application, much less the presently claimed iconic conductivity of its composition.
Nevertheless, KR ‘034 teaches the use of sodium chloride and potassium chloride (which according to present claim 5 corresponds to the presently claimed ionic compound) for the purposes of obtaining a latex-based composition having excellent thermal stability and reproducible particle size (Page 1, Paragraph 1 and Page 2, Paragraph 5).
Given the above teachings, it would have been obvious to one of ordinary skill in the art to add the presently claimed ionic compound, i.e., potassium chloride or sodium chloride, taught by KR ‘034 in the latex-based composition of the patent, with a reasonable expectation of successfully obtaining excellent thermal stability and reproducible particle size.
Moreover, the presently claimed ionic conductivity naturally follows from the claims of the patent and KR ‘034 since the claims of the patent and KR ‘034 would have suggested the presently claimed composition for latex polymerization for the reasons set forth above. See MPEP section 2145, II (“The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious”). See also MPEP section 2113.01 “Products of identical chemical composition cannot have mutually exclusive properties. 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.”
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
7. Claims 1-9, 11-13, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Ha et al. (WO 2021/071086; utilizing US 11,667,773 as its English equivalent) in view of English Translation of KR1019970070034 (hereinafter referred to as “KR ‘’034”).
It is noted that WO 2021/071086 is used for date purposes only, and all column and line numbers cited below refer to its English equivalent, namely US 11,667,773 since WO 2021/071086 is in Korean.
As to Claims 1-9, 11-13, and 15: Ha et al. disclose a composition for latex polymerization suitable for dip molding and a dip-molded article, such as glove for medical field, produced using the same (Col. 1, lines 15-21 and Col. 3, lines 25-67). Ha et al. also disclose that that the composition comprises conjugated diene based monomer, ethylenically unsaturated nitrile monomer, and ethylenically unsaturated acid monomer (Col. 5, line 55-Col. 6, line 67). Ha et al. further disclose employing 40-89 wt.% of the conjugated diene based monomer such as 1,3-butadiene or isoprene (encompassed by the claimed 30-90 parts by weight of the conjugated diene-based monomer), 10-50 wt.% of ethylenically unsaturated nitrile monomer such as acrylonitrile (encompassed by the claimed 1-55 parts by weight of the ethylenically unsaturated nitrile monomer), and 0.1-10 wt.% of the ethylenically unsaturated acid monomer including acrylic acid or methacrylic acid (encompassed by the claimed 0.001-20 parts by weight of the ethylenically unsaturated acid monomer) (Col. 5, line 60-Col. 6, line 67). Moreover, Ha et al. disclose the addition of water, an emulsifier, a polymerization initiator, and a chain transfer agent (molecular weight adjusting agent) to the composition (Col. 9, lines 4-10 and Col. 10, lines 10-25). Additionally, Ha et al. disclose that the latex composition is used to prepare a copolymer having an average particle size of 90-200 nm (equivalent to 900-2,000 A and overlaps with the presently claimed particle diameter of 1,000-3,000 A) (Col. 8, lines 1-12), and the viscosity of the latex is 1,000 cPs or less (Col. 16, lines 30-36), which overlaps with the claimed latex’s viscosity of 50-2,500 cps. See MPEP section 2144.05 (The subject matter as a whole would have been obvious to one having ordinary skill in the art at the time the invention was made, since it has been held that choosing the over lapping portion, of the range taught in the prior art and the range claimed by the applicant, has been held to be a prima facie case of obviousness.).
However, Ha et al. do not specifically mention the addition of an ionic compound recited in claims 1 and 5 of the present application, much less the presently claimed iconic conductivity of its composition.
Nevertheless, KR ‘034 teaches the use of sodium chloride and potassium chloride (which according to present claim 5 corresponds to the presently claimed ionic compound) for the purposes of obtaining a latex-based composition having excellent thermal stability and reproducible particle size (Page 1, Paragraph 1 and Page 2, Paragraph 5).
Given the above teachings, it would have been obvious to one of ordinary skill in the art to add the presently claimed ionic compound, i.e., potassium chloride or sodium chloride, taught by KR ‘034 in the latex-based composition discussed in Ha et al., with a reasonable expectation of successfully obtaining excellent thermal stability and reproducible particle size.
Moreover, the presently claimed ionic conductivity naturally follows from Ha et al. and KR ‘034 since Ha et al. and KR ‘034 would have suggested identical or substantially identical composition to that presently claimed for the reasons set forth above. See MPEP section 2145, II (“The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious”). See also MPEP section 2113.01 “Products of identical chemical composition cannot have mutually exclusive properties. 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.”
8. Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Ha et al. (WO 2021/071086; utilizing US 11,667,773 as its English equivalent) in view of English Translation of KR1019970070034 (hereinafter referred to as “KR ‘’034”) as applied to claims 1-9, 11-13 and 15 above, and further in view of Choung et al. (US 2021/0253768).
The disclosures with respect to Ha et al. and KR ‘034 in paragraph 7 are incorporated here by reference. However, they do not specify the solid content of the latex as required by present claim 10.
Nevertheless, Choung et al. disclose the use of a copolymer latex having a solid content of 35-65 wt.% (which overlaps with the claimed solid content of 50-65 wt.%) for dip molding and exhibiting desired durability (Paragraph [0045] and see also abstract).
Given the above teachings, it would have been obvious to one of ordinary skill in the art to employ the copolymer latex having the claimed solid content taught by Choung et al., with a reasonable expectation of successfully using the same for dip molding and exhibiting desired durability.
9. Claims 14 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Ha et al. (WO 2021/071086; utilizing US 11,667,773 as its English equivalent) in view of English Translation of KR1019970070034 (hereinafter referred to as “KR ‘’034”) and Choung et al. (US 2021/0253768).
The disclosures with respect to Ha et al. and KR ‘034 in paragraph 7 are incorporated here by reference. Ha et al. further disclose a dip molded article including gloves for medical field (Col. 1, lines 15-21 and Col. 3, lines 25-67). However, they do not specify the solid content of the latex required by the cited claims.
Nevertheless, Choung et al. disclose the use of a copolymer latex having a solid content of 35-65 wt.% (which overlaps with the claimed solid content of 50-65 wt.%) for dip molding and exhibiting desired durability (Paragraph [0045] and see also abstract).
Given the above teachings, it would have been obvious to one of ordinary skill in the art to employ the copolymer latex having the claimed solid content taught by Choung et al., with a reasonable expectation of successfully using the same for dip molding and exhibiting desired durability.
10. Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Choung et al. (US 2021/0253768)1 in view of English Translation of KR1019970070034 (hereinafter referred to as “KR ‘’034”).
As to Claims 1-7: Choung et al. disclose a composition for latex polymerization suitable for dip molding and a dip-molded article, such as medical gloves and molded article for health care, produced using the same (Paragraphs [0021] and [0056]). Choung et al. also disclose that that the composition comprises an isoprene monomer (conjugated diene-based monomer), ethylenically unsaturated nitrile monomer, and ethylenically unsaturated acid monomer (Paragraph [0008]). Choung et al. further disclose employing 30-90 parts by weight of the isoprene monomer (conjugated diene-based monomer), 1-55 parts by weight of ethylenically unsaturated nitrile monomer such as acrylonitrile, and 0.001-20 parts by weight of the ethylenically unsaturated acid monomer including acrylic acid or methacrylic acid (Paragraphs [0013], [0033], and [0034]). Moreover, Ha et al. disclose the addition of water, an emulsifier, a polymerization initiator, and a molecular weight control (adjusting) agent to the composition (Paragraph [0040]).
However, Choung et al. do not specifically mention the addition of an ionic compound recited in claims 1 and 5 of the present application, much less the presently claimed iconic conductivity of its composition.
Nevertheless, KR ‘034 teaches the use of sodium chloride and potassium chloride (which according to present claim 5 corresponds to the presently claimed ionic compound) for the purposes of obtaining a latex-based composition having excellent thermal stability and reproducible particle size (Page 1, Paragraph 1 and Page 2, Paragraph 5).
Given the above teachings, it would have been obvious to one of ordinary skill in the art to add the presently claimed ionic compound, i.e., potassium chloride or sodium chloride, taught by KR ‘034 in the latex-based composition discussed in Choung et al., with a reasonable expectation of successfully obtaining excellent thermal stability and reproducible particle size.
Moreover, the presently claimed ionic conductivity naturally follows from Choung et al. and KR ‘034 since Choung et al. and KR ‘034 would have suggested identical or substantially identical composition to that presently claimed for the reasons set forth above. See MPEP section 2145, II (“The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious”). See also MPEP section 2113.01 “Products of identical chemical composition cannot have mutually exclusive properties. 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.”
11. Claims 8-16 are rejected under 35 U.S.C. 103 as being unpatentable over Choung et al. (US 2021/0253768) in view of English Translation of KR1019970070034 (hereinafter referred to as “KR ‘’034”) and Ha et al. (WO 2021/071086; utilizing US 11,667,773 as its English equivalent).
It is noted that WO 2021/071086 is used for date purposes only, and all column and line numbers cited below refer to its English equivalent, namely US 11,667,773 since WO 2021/071086 is in Korean.
The disclosures with respect to Choung et al. and KR ‘034 in paragraph 10 are incorporated here by reference. Choung et al. further disclose a latex for dip molding comprising a copolymer, a dip molded article manufactured from the same, and the dip molded article includes medical gloves and other articles for health care (Paragraphs [0021] and [0056]), wherein the copolymer latex has a solid content of 35-65 wt.% (which overlaps with the claimed solid content of 50-65 wt.%) (Paragraph [0045]).
However, they do not specify the latex’s average particle diameter and viscosity as recited in the cited claims.
Nevertheless, Ha et al. disclose that the use of a copolymer prepared from a latex composition having an average particle size of 90-200 nm (equivalent to 900-2,000 A and overlaps with the presently claimed particle diameter of 1,000-3,000 A) (Col. 8, lines 1-12), and the viscosity of the latex is 1,000 cPs or less (Col. 16, lines 30-36), which overlaps with the claimed latex’s viscosity of 50-2,500 cps, for dip molding and preparing articles such as medical gloves (Col. 1, lines 15-21 and Col. 3, lines 25-67). See MPEP section 2144.05 (The subject matter as a whole would have been obvious to one having ordinary skill in the art at the time the invention was made, since it has been held that choosing the over lapping portion, of the range taught in the prior art and the range claimed by the applicant, has been held to be a prima facie case of obviousness.).
Given the above teachings, it would have been obvious to one of ordinary skill in the art to use the copolymer having the claimed average particle size and viscosity taught by Ha et al., with a reasonable expectation of successfully using the same for dip molding and preparing medical gloves.
Correspondence
12. Any inquiry concerning this communication or earlier communications from the examiner should be directed to HANNAH J PAK whose telephone number is (571)270-5456. The examiner can normally be reached 8-5 PM; M-F.
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.
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/HANNAH J PAK/Primary Examiner, Art Unit 1764
1 Equivalent to US Patent 11,708,441.
Prosecution Insights