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 .
DETAILED ACTION
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 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 1-6 and 8-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Keller et al (US 2004/0249068, ‘068 hereafter).
Regarding claims 1-6 and 8-9, ‘068 discloses a polymer composition comprising polyvinyl butyral (PVB) resin and non-ionic surfactant reading upon amphiphilic oligomer plasticizer ([0009]-[0010], Examples), wherein the surfactant can be a nonylphenol-EO6 satisfying presently claimed formula 1a ([0015], [0025], MARLOPHEN NP6, R1 being a C9-aliphatic hydrocarbon group ); or a fatty alcohol or butyloctanol-5EO ([0015], [0028] MARLIPAL-O-13/40, fatty alcohol may include lauryl, cetyl, stearyl or oleyl groups, ISOFOL12+5EO, R2 being C12-aliphatic hydrocarbon group), satisfying presently claimed formula 1b and limitations of claims 2 and 8-9. ‘068 also discloses that the amount of the surfactant can be up to 10% by weight ([0010], [0016]), satisfying present claim 6. ’608 does not expressly set forth that the surfactant has HLB value as in present claims 3-5, however, ‘068 discloses the surfactants used in the composition having chemical structure being identical to the amphiphilic oligomer plasticizer as presently claimed, thus it is reasonable to expect that the surfactants of ‘068 would have possessed the same HLB as presently claimed, in absence of an objective showing to the contrary. "Case law holds that a product and its properties are inseparable. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).( See MPEP 2112.01).
Claims 1-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chen et al (US 2016/0160023, ‘023 hereafter).
Regarding claims 1-8, ‘023 discloses a polymer composition comprising polyvinyl butyral (PVB) resin and a blending agent being a nonylphenol-nEO ether satisfying presently claimed formula 1a which reads upon amphiphilic oligomer plasticizer ([0009], [0048]-[0049], [0080], SURFONIC N-40 and N-60 are nonylphenol-4EO and nonylphenol-6EO ether, Examples DL-1 to DL-5), and also satisfies the limitations of claims 2 and 8; wherein the blending agent has HLB in a preferred range of 8 to 14 ([0049]), satisfying present claims 3-5. ‘023 also discloses that the amount of the surfactant can be 10 to 25% by weight (Examples DL-1 to DL-5), satisfying present claims 6-7.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Chen et al (US 2016/0160023, ‘023 hereafter).
Regarding claim 10, ‘023 teaches all the limitations of claim 1, ‘’023 discloses that the blending agent can be a nonylphenol-nEO ether, but does not specifically set forth that the blending agent is polyoxyethylene octaphenyl ether. However, the presently claimed polyoxyethylene octaphenyl ether, which has R1 being C8 aliphatic hydrocarbon group as in formula 1a (see present claim 1), is a homologue of nonylphenol-nEO ether, wherein R1 is a C9 aliphatic hydrocarbon group. Case law holds that homologues or position isomers are prima facie structurally obvious even in the absence of an explicit teaching to modify. “Compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195USPQ 426 (CCPA 1977). (See MPEP 2144.09 II).
Relevant Prior Art
The following prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Karagiannis et al (US 2016/0160031). Karagiannis discloses a polymer blend comprising PVB and a cellulose ester [0009]-[0011]), wherein an amphiphilic oligomer satisfying present formula 1a or 1b in an amount of 5 to 40% by weight is used as a compatibilizer in the composition ([0105]-[0109]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RUIYUN ZHANG whose telephone number is (571)270-7934. The examiner can normally be reached on 8:00-5:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arron Austin can be reached on 571-272-8935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RUIYUN ZHANG/Primary Examiner, Art Unit 1782
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