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 .
Election/Restrictions
2. Applicants’ election with traverse of Group I (claims 1, 3-6, 8-10, 13-15, 18-19 and 24; "polymer latex compositions") in the reply filed on 07/24/2026 is acknowledged. The applicants at pages 1-3 of their Remarks filed 07/24/2026 argue that Wei of record does not clearly and unambiguously chose a silane compound of the claimed Formula I because one of ordinary skill in the art would need to first select the silane compound (V) and then make another selection to select dialkoxy(3-glycidyloxypropyl)alkylsilane or 3-glycidyoxypropyldialkylalkoxysilane from a long list of equality of equally suitable compounds for silane compound (V).
However, this argument is not persuasive because as mentioned in the previous Office action mailed 06/23/2026, Wei teaches a silane compound (III) which may be selected from, among other things, dialkoxy(3-glycidyloxypropyl)alkylsilane or 3-glycidyoxypropyldialkylalkoxysilane (see claim 4), corresponding to the claimed silane compound, or a mixture of a silane compound (II) and a silane compound (V) which may, among other things, be dialkoxy(3-glycidyloxypropyl)alkylsilane or 3-glycidyoxypropyldialkylalkoxysilane (see claims 5 and 6), corresponding to the claimed silane compounds, to obtain a polymer latex composition having increased pot life and durability suitable for the preparation of elastomeric films including dip-molded articles, having high tensile strength and elongation (Page 1, line 31-page 2, line 2 and pages 47-51, and see also claims 1 and 4-15). Thus, it would have been obvious to one of ordinary skill in the art to select the claimed silane compounds from the list of silane compounds for the purposes of preparing a polymer latex composition having increased pot life and durability suitable for elastomeric films including dip-molded articles, having high tensile strength and elongation as suggested by Wei. Moreover, the basis for selecting the claimed silane compound from possibly many silane compounds is also supported by KSR rationale (E) relating to the obvious-to-try standard for establishing obviousness in accordance with MPEP § 2141 [R-6], III (“obviousness can be established when there exists a finite number of predictable solutions with a reasonable expectation of success .” According to MPEP § 2144.08, II, KSR rationale (E) set forth above is satisfied “where the prior art disclosed a “multitude of effective combinations” that did not “render any particular formulation less obvious” and where the claimed composition was “used for the identical purpose taught by the prior art.” This is especially true because the claimed polymer latex composition is used for the identical purpose (i.e., preparation of elastomeric films).
Accordingly, the requirement is still deemed proper and is therefore made FINAL.
3. Claims withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions, there being no allowable generic or linking claim. Applicants timely traversed the restriction requirement in the reply filed on 07/24/206.
4. It is also noted that the applicants request rejoinder of non-elected process claims (see Page 3 of the Applicants’ Remarks filed 07/24/2026). However, the request for rejoinder is moot since the instant claims are not deemed allowable for the reasons set forth below. According to MPEP § 821.04 [R-3], “Rejoinder involves withdrawal of a restriction requirement between an allowable elected invention and a nonelected invention and examination of the formerly nonelected invention on the merits.” Since no allowable subject matter is currently present, the applicants’ request for rejoinder is not granted at this time.
Claim Objections
5. Claims 1, 15 and 19 are objected to because of the following informalities:
As to Claim 1: The applicants are advised to replace “a composition” with the new phrase “a monomer composition”.
As to Claim 15: The applicants are advised to delete the additional comma (,) between “aldehyde” and “boronic acid”.
As to Claim 19: The applicants are advised to replace the claimed “the ethylenically unsaturated compounds different from (i) and (ii) comprising a functional group (A) are” with the new phrase “the ethylenically unsaturated compound different from (i) and (ii) comprising a functional group (A) is”.
The applicants are also advised to replace the claimed phrase “(v) alkyl ester of ethylenically unsaturated acids are selected from methyl (meth)acrylate” with the new phrase ““(v) the alkyl ester of ethylenically unsaturated acids are selected from methyl (meth)acrylate”
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.
6. Claims 1, 4-6, 8-10, 13-15, 18-19, and 24 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9, 12, and 16 of co-pending U.S. Application no. 18/281,705 (hereinafter referred to as “US Appl. ‘705”; corresponding to US PG PUB 2024/0166784).
The claims of US Appl. ‘705 and the present application recite polymer latex compositions for the preparation of elastomeric films, comprising particles of a latex polymer obtained by free-radical emulsion polymerization of a composition comprising ethylenically unsaturated monomers and a silane compound, wherein the latex polymer has a functional group. The claims of US Appl. ‘705 and the present application also recite that the functional group of the latex polymer is selected from carbon-carbon double bond, epoxy, primary or secondary amino, hydroxy, glycol, imino, thiol, and isocyanato groups. The claims of US Appl. ‘705 and the present application further recite that the monomer composition to obtain the particles of the latex polymer comprises (i) 15-99 wt.% of conjugated dienes including butadiene or isoprene, (ii) 1-80 wt.% of monomers selected from ethylenically unsaturated nitrile compounds including alpha-chloronitrile or methacrylonitrile, (iii) 0-10 wt.% of an ethylenically unsaturated compound different from (i) and (ii), including hydroxy functional ethylenically unsaturated compounds, 0-80 wt.% of vinyl aromatic monomers, such as styrene, and 0-65 wt% of alkyl esters of ethylenically unsaturated acids, such as methyl (meth)acrylate, the weight percentages being based on the total weight of the ethylenically unsaturated monomers in the monomer composition. Moreover, the claims of US Appl. ‘705 and the present application recite a compounded polymer latex composition suitable for the production of dip-molded articles comprising the polymer latex composition and optionally adjuvants selected from pigments, accelerators, sulfur vulcanization agents, and optionally comprising polyvalent cations and/or silica-based fillers.
However, the claims of US Appl. ‘705 do not mention the presently claimed silane compounds with sufficient specificity to constitute anticipation within the meaning of 35 USC 102.
Nevertheless, the claims of US Appl. ‘705 do recite adding silane compound (III) which may be selected from, among others, dialkoxy(3-glycidyloxypropyl)alkylsilane or 3-glycidyoxypropyldialkylalkoxysilane (see claim 4 of US Appl. ‘705), corresponding to the presently claimed silane compounds, or a mixture of a silane compound (II) and a silane compound (V) which may, among other things, be dialkoxy(3-glycidyloxypropyl)alkylsilane or 3-glycidyoxypropyldialkylalkoxysilane (see claims 5 and 6 of US Appl. ‘705), corresponding to the presently claimed silane compounds, for the purposes of preparing a polymer latex composition suitable for the preparation of elastomeric films including dip-molded articles. Thus, it would have been obvious to one of ordinary skill in the art to select the presently claimed silane compounds as the silane compounds in the polymer latex composition, with a reasonable expectation of successfully preparing elastomeric films including dip-molded articles as suggested by the claims of US Appl. ‘705. The basis for selecting the presently claimed silane compounds from possibly many silane compounds is also supported by KSR rationale (E) relating to the obvious-to-try standard for establishing obviousness in accordance with MPEP § 2141 [R-6], III (“obviousness can be established when there exists a finite number of predictable solutions with a reasonable expectation of success.” According to MPEP § 2144.08, II, KSR rationale (E) set forth above is satisfied “where the prior art disclosed a “multitude of effective combinations” that did not “render any particular formulation less obvious” and where the claimed composition was “used for the identical purpose taught by the prior art.” This is especially true because the presently claimed polymer latex composition is used for the identical purpose (i.e., preparation of elastomeric films).
This is a provisional nonstatutory double patenting rejection.
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, 3-6, 8-10, 13-15, 18-19, and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Wei et al. (WO 2022/197175)1.
As to Claims 1, 3-6, 8-10, 13-15 18-19, and 24: Wei et al. disclose a polymer latex composition for the preparation of elastomeric films, comprising particles of a latex polymer obtained by free-radical emulsion polymerization of a composition comprising ethylenically unsaturated monomers and a silane compound, wherein the latex polymer has a functional group (Page 1, lines 1-7 and Page 2, lines 4-10). Wei et al. also disclose that the functional group of the latex polymer is selected from carbon-carbon double bond, epoxy, primary or secondary amino, hydroxy, glycol, imino, thiol, and isocyanato groups (Page 4, lines 15-20). Wei et al. further disclose that the monomer composition to obtain the particles of the latex polymer comprises (i) 15-99 wt.% of conjugated dienes including butadiene or isoprene, (ii) 1-80 wt.% of monomers selected from ethylenically unsaturated nitrile compounds including alpha-chloronitrile or methacrylonitrile, (iii) 0-10 wt.% of an ethylenically unsaturated compound different from (i) and (ii), including hydroxy functional ethylenically unsaturated compounds, 0-80 wt.% of vinyl aromatic monomers, such as styrene, and 0-65 wt% of alkyl esters of ethylenically unsaturated acids, such as methyl (meth)acrylate, the weight percentages being based on the total weight of the ethylenically unsaturated monomers in the monomer composition (Page 5, line 28-Page 10, line 30 and Page 14, line 5-Page 21, line 25). Moreover, Wei et al. disclose a compounded polymer latex composition suitable for the production of dip-molded articles comprising the polymer latex composition and optionally adjuvants selected from pigments, accelerators, sulfur vulcanization agents, and optionally comprising polyvalent cations and/or silica-based fillers (Page 38, lines 7-25).
However, Wei et al. do not mention the claimed silane compounds with sufficient specificity to constitute anticipation within the meaning of 35 USC 102. They also do not mention the particular amount of such silane compounds as required by present claim 3.
Nevertheless, Wei et al. do disclose the addition of silane compound (III) which may be selected from, among others, dialkoxy(3-glycidyloxypropyl)alkylsilane or 3-glycidyoxypropyldialkylalkoxysilane, corresponding to the presently claimed silane compounds, or a mixture of a silane compound (II) and a silane compound (V) which may, among other things, be dialkoxy(3-glycidyloxypropyl)alkylsilane or 3-glycidyoxypropyldialkylalkoxysilane, corresponding to the presently claimed silane compounds, for the purposes of preparing a polymer latex composition having good durability and high tensile strength suitable for the preparation of elastomeric films including dip-molded articles (Page 2, lines 1-10, Page 3, line 9-Page 4, line 5 and Page 4, line 10-Page 5, line 25). Wei et al. also disclose adding these silane compounds in an amount of 0.1-20 wt.% to the polymer latex composition (Page 4, lines 9-15).
Given the above teachings, it would have been obvious to one of ordinary skill in the art to select the presently claimed silane compounds as the silane compounds in the claimed amount, with a reasonable expectation of successfully preparing polymer latex composition having good durability and high tensile strength suitable for elastomeric films including dip-molded articles as suggested by Wei et al. The basis for selecting the presently claimed silane compounds from possibly many silane compounds is also supported by KSR rationale (E) relating to the obvious-to-try standard for establishing obviousness in accordance with MPEP § 2141 [R-6], III (“obviousness can be established when there exists a finite number of predictable solutions with a reasonable expectation of success.” According to MPEP § 2144.08, II, KSR rationale (E) set forth above is satisfied “where the prior art disclosed a “multitude of effective combinations” that did not “render any particular formulation less obvious” and where the claimed composition was “used for the identical purpose taught by the prior art.” This is especially true because the presently claimed polymer latex composition is used for the identical purpose (i.e., preparation of elastomeric films).
Correspondence
8. 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.
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/HANNAH J PAK/Primary Examiner, Art Unit 1764
1 Cited in the IDS submitted by applicants on 05/01/2025.
Prosecution Insights