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 .
Election/Restrictions
Applicant’s election without traverse of group I in the reply filed on July 17, 2026 is acknowledged.
Claims 8-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group II, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 07/17/2026.
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.
Claims 1-7 and 14-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12146050. Although the claims at issue are not identical, they are not patentably distinct from each other for the following reason.
Regarding present claims 1-7 and 14-20, the patented claims disclose the same core shell copolymer as claimed in present claims.
Claims 1-7 and 14-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 1167433. Although the claims at issue are not identical, they are not patentably distinct from each other for the following reason.
Regarding present claims 1-7 and 14-20, the patented claims disclose the same core shell copolymer as claimed in present claims except that the patented claims disclose acrylonitrile butadiene styrene graft copolymer while present claims recite thermoplastic polymer chains. However, given that acrylonitrile butadiene styrene graft copolymer is one of the examples of thermoplastic polymer chains, the patented claims discloses the same core shell copolymer as presently claimed.
Claim Objections
Applicant is advised that should claims 5-7 be found allowable, claims 18-20 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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.
Claims 1, 5-7, 14 and 18-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pepers et al. (WO 2012/080407) in view of Nakamura et al. (JP 2006-291051).
Regarding claims 1 and 14, Pepers teaches process for preparing a core-shell graft copolymer by polymerizing acrylonitrile and styrene onto a graft comprising styrene-butadiene, i.e. elastic core particles and thermoplastic polymer chains, along with a surfactant comprising a potassium salt of fatty acids and potassium stearate coagulated with a magnesium sulphate solution resulting in molded articles. (Abstract; pages 32-34).
The present invention differs from Pepers in that the present invention requires multivalent metal salt is added to the latex. Nakamura teaches a core-shell graft copolymer with 0.5 – 8.0 wt. % calcium chloride (multi-valent salt comprising a halogenide added to the latex for coagulation. (0008-0031). In view of Nakamura, one having an ordinary skill in the art would be motivated to modify Pepers by using calcium chloride as a coagulant because Nakamura discloses a core shell graft polymer obtained in the presence of a fatty acid based surfactant and coagulated with a calcium salt and metal plating is mentioned in [0004]. Such modification would be obvious because one would expect that the use of coagulant agent as taught by Pepers would be similarly useful and applicable to the core-shell graft copolymer preparation taught in Nakamura.
Regarding claims 5 and 18, Pepers in view of Nakamura discloses the core shell graft copolymer of claim 1 comprising article having surface area comprising a core shell graft copolymer of claim 1 (pages 1-2).
Regarding claims 6 and 19, Pepers in view of Nakamura discloses the core shell graft copolymer of claims 5 and 19 wherein the core shell graft copolymer is coated with a metallic coating (page 2).
Regarding claims 7 and 20, Pepers in view of Nakamura discloses the core shell graft copolymer of claims 6 and 19, wherein Pepers in view of Nakamura is silent with regards to electroplating.
Although Pepers in view of Nakamura does not disclose , it is noted that “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Pepers in view of Nakamura meets the requirements of the claimed metallic coating, Pepers in view of Nakamura clearly meets the requirements of the present claims.
Allowable Subject Matter
Claims 2-4 and 15-17 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Regarding claims 2-4 and 15-17, Pepers in view of Nakamura does not specifically teach such limitations recited in present claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SAMIR SHAH whose telephone number is (571)270-1143. The examiner can normally be reached 8:00am - 5:00pm.
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/SAMIR SHAH/Primary Examiner, Art Unit 1787
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