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 .
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.
Information Disclosure Statement
The information disclosure statement filed 6/7/2024 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. Applicant did not submit original copies of cited foreign documents WO1999/25780 and WO2009/138388. It has been placed in the application file, but the information referred to therein has not been considered.
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.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 6 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.
Claim 6 depends from claim 2, and states that R’’ is a methyl group. The term “methyl group” is used in chemistry to refer to the group -CH3. Note, however, the claimed structure requires that R’’ is a divalent group which is bonded to both a silicon atom and an oxygen atom (see the structure in parent claim 2). One of ordinary skill in the art will recognize that a methyl group cannot be bonded to two different atoms in this manner. The claim is therefore indefinite, as it is unclear what structure is intended.
Claims 2-5 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Regarding claim 2: Claim 2 depends from claim 1, and states that the telechelic methacrylate functional silicone has the structure shown below.
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The claim further states that R’ has the following structure, wherein R’’’ may be hydrogen.
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Independent claim 1 states that the silicone is required to be a methacrylate functional silicone; however, one of ordinary skill in the art will recognize that when R’’’ is hydrogen, R’ are terminal acrylate groups not methacrylate groups. Further note that R is limited to hydrogen or hydrocarbon groups and therefore cannot be a methacrylate group. As a result, claim 2 reads on the use of a silicone that does not have a methacrylate functionality when both instances of R’ are structures wherein R’’’ is hydrogen. Claim 2 therefore impermissibly broadens the scope of the parent claim to read on the use of silicone(s) that do not contain a methacrylate functionality.
Claims 3-5 depend from claim 2 and do not correct this deficiency. The claims are therefore rejected per the same rationale as claim 2.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Interpretation
Regarding claim 6: As discussed earlier in this Action, the scope of claim 6 is indefinite as it is unclear how variable R’’, which is a divalent group, can be a methyl group (-CH3), which is a monovalent group. For the purposes of examination on the merits, the examiner notes that claim 6 has been interpreted to require that R’’ is a methylene group (-CH2-) which is a divalent hydrocarbon group having the same number of carbon atoms (i.e., 1) as a methyl group.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1-5 and 11-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yasui et al, JP2012046645A.
The examiner notes that a machine translation of Yasui was used to prepare this Action. Additionally, the website https://www.krayden.com/products/jnc-fm-7711 is cited as evidence that the Yasui meets claimed limitations.
Yasui discloses an emulsion made via emulsion polymerization of a monomer mixture comprising an ethylenically unsaturated monomer and a silicone lubricant comprising radically polymerizable group(s) (abstract; page 1: lines 6-8).
Example 1 of Yasui (page 6: lines 16—33) discloses the production of a copolymer via emulsion polymerization (for claims 1, 15) of a reaction mixture comprising Silaplane FM-7711 and a combination of methyl methacrylate and butyl acrylate, corresponding to the claimed at least one alkyl (meth)acrylate (for claim 1).
Regarding the claimed telechelic methacrylate functional silicone: As noted above, the polymer of Yasui’s Example 1 is prepared from a monomer mixture comprising Silaplane FM-7711. This compound has the structure shown below, with a molecular weight of about 1000 g/mol (see https://www.krayden.com/products/jnc-fm-7711).
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This corresponds to the claimed structure wherein each R is a methyl group (i.e., a C1 hydrocarbon) (for claims 2-4), R’’ is a C3 hydrocarbon group ((for claims 2, 3, 5), and R’’’ is a methyl group (for claim 2). Furthermore, as noted above, Silaplane FM-7711 is reported to have a molecular weight of about 1000 g/mol. The structure shown above has two -Si(ME)2(CH2)3OC(O)C(CH3)CH2 groups, each with a molecular weight of about 185.32. The polydimethylsiloxane (PDMS) chain therefore has a molecular weight of about 1000-(2×185.32) = 629.36 g/mol. Given that the repeating unit -Si(ME)2O- has a molecular weight of about 74.15, the value of n in the above structure is about 629.36/74.15 ≈ 8.5 (for claim 2). Silaplane FM-7711 therefore corresponds to the claimed telechelic methacrylate functional silicone (for claims 1, 2).
Regarding claims 11-14: As noted above, the polymer of Yasui’s Example 1 is prepared from a monomer mixture comprising methyl methacrylate (for claims 13, 14) and butyl acrylate (for claim 14). An ordinary artisan will recognize that methyl methacrylate and butyl acrylate have structures which comprise a methyl group (i.e., a C1 alkyl) (for claims 11, 12) and a butyl group (i.e., a C4 alkyl group) (for claims 11, 12), respectively.
Claim(s) 1-5 and 11-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Naveed et al, published in Journal of Colloid and Interface Science vol 600 (2021).
Naveed discloses the production of a PDMS-based additive via the copolymerization of telechelic methacryloxypropyl PDMS with methyl methacrylate and glycidyl methacrylate (abstract; page 175: 2.2 Synthesis of PDMS additives).
Examples 1-4 (page 176: Table 1) disclose additives made by copolymerizing telechelic PDMS with methyl methacrylate, corresponding to the claimed alkyl (meth)acrylate (for claims 1, 13), and glycidyl methacrylate. Said telechelic PDMS has the structure shown below (page 178: Scheme 1).
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This corresponds to the claimed structure wherein each R is a methyl group (i.e., a C1 hydrocarbon) (for claims 2-4), R’’ is a C3 hydrocarbon group ((for claims 2, 3, 5), and R’’’ is a methyl group (for claim 2). Furthermore, Naveed teaches that the telechelic PDMS used in the prior art examples has a molecular weight of 5000 (examples 3, 4) or 10000 g/mol (Examples 1, 2)(page 175: 2.1 Materials). Per the same process as outlined in paragraph 19 above, an ordinary artisan can calculate that these molecular weights correspond to values of n that are about 62.4 and 129.9, respectively (for claim 2). The prior art telechelic PDMS therefore corresponds to the claimed telechelic methacrylate functional silicone (for claim 1).
Regarding claims 11 and 12: As noted above, the prior art additive is made from a monomer mixture comprising methyl methacrylate, which has a structure comprising a methyl group (i.e., a C1 alkyl group) (for claims 11, 12).
Claim(s) 1-6 and 11-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Minge et al, published in WO2009/138388.
The examiner notes that the machine translation of Minge submitted by applicant on 6/7/2024 was used to prepare this Action.
Minge discloses an impact modifier made by copolymerizing a vinyl monomer(s) and a polymerizable polysiloxane (abstract). Example 1f (page 16: lines 33 to page 17: line 4; Table 1) discloses a copolymer made by copolymerizing a telechelic PDMS (MA-PDMS-MA) and methyl methacrylate, corresponding to the claimed at alkyl (meth)acrylate (page 16: lines (for claims 1, 13).
Said MA-PDMS-MA is reported to be an α, ω-dimethacryloxymethyl PDMS having a molecular weight of 3000 g/mol. Note that this corresponds to the claimed structure wherein each R is a methyl group (i.e., a C1 hydrocarbon) (for claims 2, 3, 4, 6), R’’ is a methylene group (i.e., a C1 hydrocarbon group) (for claims 2, 3, 6), and each R’’’ is a methyl group (i.e., a C1 hydrocarbon group) (for claims 2, 6). Furthermore, based on the molecular weight of 3000 g/mol, it is calculated that n is about 36.2 (for claim 2). The prior art MA-PDMS-MA therefore corresponds to the claimed telechelic methacrylate functional silicone (for claim 1).
Regarding claims 11 and 12: The copolymer of Example 1g is made from a monomer mixture comprising methyl methacrylate, which has a structure comprising a methyl group (i.e., a C1 alkyl group) (for claims 11, 12).
Claim(s) 1-5, 7, 11, 12, and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cheng et al, WO2020/023819.
Example 2 of Cheng (¶0099; 0094) discloses the emulsion polymerization (for claims 1, 15) of a monomer mixture comprising a telechelic PDMS (TSO-1) and butyl acrylate, corresponding to the claimed alkyl (meth)acrylate (for claim 1). TSO-1 is reported to have the structure shown below wherein p is 198 (¶0092), corresponding to n (for claim 2).
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This corresponds to the claimed structure wherein each R is a methyl group (i.e., a C1 hydrocarbon) (for claims 2-4), R’’ is a C3 hydrocarbon group ((for claims 2, 3, 5), and R’’’ is a methyl group (for claim 2). The prior art TSO-1 therefore corresponds to the claimed telechelic methacrylate functional silicone (for claim 1).
Regarding claim 7: The monomer mixture comprises 50 wt% of TSO-1 (¶0099).
Regarding claims 11, 12: Butyl acrylate has a structure comprising a butyl group (i.e., a straight C4 alkyl group).
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.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Yasui et al, JP2012046645A.
As discussed earlier in this Action, Yasui’s Example 1 discloses the production of a copolymer via polymerization of a monomer mixture comprising Silaplane FM-7711, butyl acrylate, and methyl methacrylate.
Yasui is silent regarding the use of a telechelic silicone having the claimed structure wherein R’’ is the required structure.
Note that the difference between the structure of Silaplane FM-7711 as depicted earlier in this Action and the claimed structure is the number of -CH2- units in the group linking the terminal methacrylate groups to the silicone chain. It has been held that compounds which are position 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, 195 USPQ 426 (CCPA 1977) (MPEP § 2144.09(II)). Because the structure of the prior art Silaplane FM-7711 and the claimed telechelic silicone are so similar, one of ordinary skill in the art would reasonably expect that the properties of the prior art copolymer comprising a telechelic PDMS wherein R’’ is a C3 hydrocarbon group would not be materially different from those of the claimed invention which reads on the use of a telechelic PDMS wherein R'’ is a C1 hydrocarbon group. The burden is therefore shifted to applicant to provide evidence demonstrating the criticality of the claimed species of R’’.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Naveed et al, published in Journal of Colloid and Interface Science vol 600 (2021).
As discussed earlier in this Action, Naveed’s Examples 1-4 discloses the production of copolymers via polymerization of a monomer mixture comprising a telechelic PDMS wherein R’’ is a C3 hydrocarbon group and methyl methacrylate.
Naveed is silent regarding the use of a telechelic silicone having the claimed structure wherein R’’ is the required structure.
Note that the difference between the structure of the telechelic PDMS used in Naveed and the claimed structure is the number of -CH2- units in the group linking the terminal methacrylate groups to the silicone chain. Because the structure of the prior art telechelic PDMS and the claimed telechelic silicone are so similar, one of ordinary skill in the art would reasonably expect that the properties of the prior art copolymer comprising a telechelic PDMS wherein R’’ is a C3 hydrocarbon group would not be materially different from those of the claimed invention which reads on the use of a telechelic PDMS wherein R'’ is a C1 hydrocarbon group. The burden is therefore shifted to applicant to provide evidence demonstrating the criticality of the claimed species of R’’; see In re Wilder cited earlier in this Action.
Claim(s) 7-10 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Minge et al, WO2009/138388.
As discussed earlier in this Action, Minge discloses the production of an impact modifier by copolymerizing vinyl monomer(s) with a polymerizable silicone with may be a telechelic PDMS having terminal methacrylate groups (page 11: lines 30-32). Said telechelic PDMS may be present in an amount of 10 to 90 wt% relative to the total weight of the monomer mixture use to make the copolymer (page 11: lines 36-39), overlapping the claimed range (for claims 7, 8). Said vinyl monomer(s) are preferably (meth)acrylate monomers (page 11: line 40 to page 12: line 5); note that Minge specifically teaches that a combination of butyl acrylate and methyl methacrylate as said vinyl monomer(s) (for claims 14) (page 12: lines 18-20). The monomer mixture may further comprise an auxiliary monomer such as acrylic acid (for claim 9) in an amount of 0.1 to 2 wt% (for claim 10) (page 12: lines 28-34).
Minge does not specifically exemplify the production of a polymer comprising the claimed amounts of monomer(s) (for claims 7-8, 10) or using the recited monomer(s).
Regarding the amounts of each monomer: It has been held that in the case where the claimed ranges overlap or lie inside ranges disclosed in the prior art, a prima facie case of obviousness exists; see In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages; see In re Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (MPEP § 2144.05). As noted above, the prior art ranges overlap the claimed ranges. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious before the effective filing date to prepare a copolymer comprising the required amount(s) of each monomer in view of the teachings of Minge.
Regarding the specific compounds: It has been held that the selection of a known material based on its suitability for its intended use is prima facie obvious; see Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). See also In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious); Ryco, Inc. v. Ag-Bag Corp., 857 F.2d 1418, 8 USPQ2d 1323 (Fed. Cir. 1988) (MPEP § 2144.07). As discussed above, Minge teaches the use of a combination of butyl acrylate and methyl methacrylate as the vinyl monomer(s) and acrylic acid as an auxiliary monomer in the prior art copolymer. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to prepare a copolymer comprising the required monomers in view of the prior art’s teachings.
Claim(s) 6 and 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over Cheng et al, WO2020/023819.
As noted earlier in this Action, Cheng teaches the production of polymer particles via a step of emulsion polymerization of a monomer mixture comprising a silicone monomer. Said monomer mixture may further comprise (meth)acrylate ester and/or (meth)acrylic acid (for claims 9) as comonomers (¶0048).
Regarding claim 6: The prior art silicone monomer may have the formula shown below.
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Variable R1 is a hydrocarbon group, p is 0 to 1000, and Ra is the following structure
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wherein R16 is methyl and R15 is a hydrocarbon group containing 8 or fewer carbon atoms (¶0043-0045); note that this reads on the use of a methylene group (i.e., C1 hydrocarbon).
Regarding claim 8: The amount of silicone monomer is reported to be 40wt% or more (¶0050), overlapping the claimed range.
Regarding claim 10: Cheng teaches that the amount of any additional monomers is 70 wt% or less (¶0051), overlapping the claimed range.
Cheng does not specifically exemplify the production of a polymer comprising the claimed amounts of monomer(s) (for claims 8, 10) or using the recited monomer(s) (for claims 6, 9(.
Regarding the amounts of each monomer: As noted above, the prior art ranges overlap the claimed ranges. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious before the effective filing date to prepare a copolymer comprising the required amount(s) of each monomer in view of the teachings of Cheng; see In re Wertheim, In re Woodruff, and In re Peterson cited above.
Regarding the specific compounds: As discussed above, Cheng teaches the use of a (meth)acrylic acid as a comonomer which may be included in the prior art copolymer. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to prepare a copolymer comprising the required monomers in view of the prior art’s teachings; see Sinclair & Carroll Co. v. Interchemical Corp., In re Leshin, and Ryco, Inc. v. Ag-Bag Corp cited earlier in this Action.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Landfester et al, published in Polymer vol. 46 (2005), discloses the production of a polysiloxane-acrylate copolymer latex via miniemulsion polymerization (abstract; page 9893: 2.2 Synthesis via radical polymerization). Sample UP-30 (page 9895: Table 2) discloses the preparation of a polysiloxane-acrylate latex via miniemulsion polymerization of a reaction mixture comprising TegoRad 2500 and butyl acrylate. TegoRad 2500 is a telechelic polysiloxane having terminal acrylate groups with the structure shown below.
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Note that Landfester does not teach the use of a methacrylate-functional silicone as required by independent claim 1.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEFFREY S LENIHAN whose telephone number is (571)270-5452. The examiner can normally be reached Mon.-Fri. 5:30-2:00PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Riviere Kelley can be reached at 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JEFFREY S LENIHAN/Primary Examiner, Art Unit 1765
