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 .
Status of the Claims
2. Claims 1-7, 9-10, 12-13, 15-21, 23-24 are currently pending. Claims 9-10, 12-13, 15-16, 21, 23-24 have been withdrawn as being drawn to non elected inventions. Claims 1-7 and 17-20 are currently under examination. This office action is in response to the amendment filed on 12/30/2025.
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.
3. Claim 1-7 and 17-20 are 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.
Concerning claim 1 the claim recites “the structural appearance of a step-growth polymer backbone” which renders the claim indefinite as it is not clear where the boundary of this limitation is or what is or is not a structural appearance of a step-growth polymer backbone.
Claims 2-7 and 17-20 are rejected as being dependent from a rejected base claim.
Claim Interpretation
4. Concerning claim 1 the recitation of “the structural appearance of a step-growth polymer backbone” is given the broadest reasonable interpretation of having a structure which is capable of being formed by a step growth polymerization process either alone or in combination with another process and is not restricted to “typical” or easily recognized step growth backbones.
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 (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.
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.
5. Claim(s) 1-7 and 19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Janssen (WO 2012/036554 A1).
Concerning claim 1, 4-7, 19 Janssen teaches an exemplary method of making a hyperbranched polymer which includes providing 87.2 mmol of 4-vinyl pyridine, 29.1 mmol of 2-hydroxyethyl methacrylate and 2.9 mmol of butanediol dimethacrylate in the presence of n-dodecane thiol and AIBN and polymerizing (pg 31 lines 35-40 and pg 32 lines 1-15). The polymerization is indicated to be a free radical polymerization reaction which uses AIBN as a radical source ( pg 24 lines 19-25). The n-dodecane thiol is a thiol chain transfer agent while the butanediol dimethacrylate is a dimethacrylate and divinyl monomer. The butanediol dimethacrylate is indicated to be a branching monomer (pg22 lines 1-6).
Additionally applicants specification pg 12 lines 35-38 and pg 13 lines 1-5 indicates that monomers which contain in addition to two vinyl groups ester linkages (e.g. dimethacrylates such as EGDMA) polymerize to form polyester structures wherein the longest repeating units comprise esters. Applicants specification pg 32 lines 10-15 further indicates that the divinyl monomer of EGDMA (ethylene glycol dimethacrylate) includes repeating units of ethylene glycol and polyacid monomer residues.
As such the polymerization would be considered to be a radical polymerization to form carbon carbon backbone segments of step growth monomer residues and the polymer would be a polyester.
Janssen does not explicitly state that the conversion of radically polymerizable vinyl groups to saturated carbon carbon bonds in the polymer is 80% or more or that the polymer has a backbone which has the structural appearance of a step-growth polymer.
However the example uses 87.2 mmol of 4-vinyl pyridine, 29.1 mmol of 2-hydroxyethyl methacrylate and 2.9 mmol of butane diol dimethacrylate. This indicates that there is a total of 122.1 mmol of vinyl groups among the monomers of which it is possible to have 2.9 mmol which are unreacted but also a part of the polymer. This would indicate a minimum conversion rate of the vinyl groups in the polymer of approximately 97.7 % which is within the claimed range of 80% or more. As such Janssen teaches the claimed method of preparing a polymer.
Moreover the creation of a hyperbranching polymer using butane diol dimethacrylate would result in a polymer structure that looks as if it can be made by creating an methacrylate oligomer with multiple carboxylic acid groups and then reacting that oligomer by step growth polymerization with butane diol. In this case the oligomer having multiple carboxylic acid groups would correspond to the structure of monomer An where n is greater than 2 and butane diol would correspond to the claimed structure of Bm where m is 2 the functionality is an OH group which can react with the carboxylic acid group from the monomer An. This in turn would give that the backbone of the polymer has a structure which is capable of being formed by step growth polymerization, and as such the polymer would meet the claimed limitations.
Concerning claim 2-3 Janssen teaches the method of claim 1 as is stated above and teaches an exemplary method of making a hyperbranched polymer which includes providing 87.2 mmol of 4-vinyl pyridine, 29.1 mmol of 2-hydroxyethyl methacrylate and 2.9 mmol of butanediol dimethacrylate in the presence of n-dodecane thiol and AIBN and polymerizing (pg 31 lines 35-40 and pg 32 lines 1-15). The polymerization is indicated to be a free radical polymerization reaction which uses AIBN as a radical source ( pg 24 lines 19-25). The n-dodecane thiol is a thiol chain transfer agent while the butanediol dimethacrylate is a dimethacrylate and divinyl monomer. The butanediol dimethacrylate is indicated to be a branching monomer (pg 22 lines 1-6).
This would result in the longest chains in the polymer comprising vinyl polymer chains which are carbon carbon backbone segments from the vinyl pyridine and hydroxyethyl methacrylate interspaced with other chemical groups such as the ester groups of the branching butanediol dimethacrylate monomer. Moreover the use of the butanediol dimethacrylate would result in branching point that are in the vinyl polymer chains because of the reaction of methacrylate group of the butane diol dimethacrylate reacting with other vinyl monomer but giving a branching site. As such the polymer of Janssen teaches the claimed limitations.
6. Claims 1-7 and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Findlay (US 2010/0130641 A1).
Concerning claims 1, 4-7, and 19 Findlay teaches a method of preparing a branched polymer by polymerizing 43 mmol of diethylaminoethyl methacrylate 2.2 mmol of polyethyleneglycol22 monomethacrylate 6.8 mmol of ethylene glycol dimethacrylate in the presence of 6.8 mmol of dodecanethiol using AIBN as a free radical polymerization initiator (paragraph 0116). As such this polymerization would be a free radical vinyl polymerization in the presence of a thiol chain transfer agent. Ethylene glycol dimethacrylate would be a divinyl monomer.
Findlay does not specifically indicate that the polymer has a backbone which has the structural appearance of a step-growth polymer backbone or that the free radical vinyl polymerization will form carbon carbon backbone segments of step-growth monomer residues.
Applicants specification pg 12 lines 35-38 and pg 13 lines 1-5 indicates that monomers which contain in addition to two vinyl groups ester linkages (e.g. dimethacrylates such as EGDMA) polymerize to form polyester structures wherein the longest repeating units comprise esters. Applicants’ specification pg 32 lines 10-15 further indicates that the divinyl monomer of EGDMA (ethylene glycol dimethacrylate) includes repeating units of ethylene glycol and polyacid monomer residues.
As such the polymer of Findlay would be considered to be a polyester as it includes ester groups from the ethyleneglycol dimethacrylate monomer.
When the preferred ethylene glycol dimethacrylate branching monomers are used as is indicated in the example the branched polymer would have a structure which corresponds to a step growth monomer residue of a monomer which comprises multiple (meth)acrylic acid groups and another monomer which is a difunctional monomer such as the previously indicated ethylene glycol unit. As such the structure formed by the polymerization of the preferred branching monomer would have the structural appearance of a step growth polymer backbone and of the claimed step growth monomer residues as the polymer would be capable of being made by a step growth polymerization process of these monomers.
It should be noted that ethylene glycol dimethacrylate is the only monomer is the polymerization that would have able to provide radically polymerization vinyl groups which are not converted to saturated carbon-carbon bonds. Given that the polymer is made from 43 mmol of diethylaminoethyl methacrylate 2.2 mmol of polyethyleneglycol22 monomethacrylate 6.8 mmol of ethylene glycol dimethacrylate, there is a total of 58.8 mmol of double bonds in the monomers used to make the polymer. Of these 52 mmol must be reacted to from saturated carbon-carbon bonds. It should be noted that a minimum of half of the 13.6 mmol of the double bonds of the ethylene glycol dimethacrylate must be reacted otherwise the monomer would not become part of the polymer and as the polymer is indicated to be a branched polymer more than half of the vinyl groups in the difunctional monomer must be reacted. This would indicate that a minimum of approximately 88.4 % (52/58.8) of the radically polymerizable vinyl group are converted to saturated carbon-carbon bonds in the polymer. As such the exemplary polymer of Findlay teaches all of the claimed limitations and so teaches the claim.
Concerning claim 2 Findlay teaches the method of making a polymer of claim 1 as is stated above which is made by a one step polymerization carried out in using an azo polymerization initiator in the presence of a thiol chain transfer agent, polyfunctional monomer of ethylene glycol dimethacrylate. This would indicate that the longest chains in the polymer would comprise vinyl polymer chains, resulting from the free radical polymerization of the vinyl groups of ethylene glycol dimethacrylate, interspersed with other chemical groups such as the ester group and ethylene glycol group that are a part of the ethylene glycol dimethacrylate monomer. As such the method of making the polymer of Findlay would teach the claimed polymer.
Concerning claim 3 Findlay teaches the method of making a polymer of claim 1 as is stated above which is made by a one step polymerization carried out in using an azo polymerization initiator in the presence of a thiol chain transfer agent, polyfunctional monomer of ethylene glycol dimethacrylate which is a multimethacrylate monomer.
It should be noted that the only monomer of ethylene glycol dimethacrylate is not branched in and of itself, even though the polymer which is makes is indicated to be branched. As such the only place for the branching of the polymer to occur would be at the place where the methacrylate groups have polymerized with one another which would be in the vinyl polymer chains which are carbon carbon backbone segments. As such the method of making the polymer of Findlay would teach the claimed limitations.
Claim Rejections - 35 USC § 103
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.
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.
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.
7. Claim(s) 17-18, 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Janssen (WO 2012/036554 A1).
Concerning claims 17-18 Janssen teaches a method of making a hyperbranched polymer which comprises molar ratios of co-monomers: branching monomer: chain transfer agent of from 5-80:0.5-20:1-30 (pg 20 lines 10-15). The branching monomer is indicated to be a molecule comprising two or more vinyl groups (pg 21 lines 15-30) and so would correspond to a multi vinyl monomer. Particularly the branching monomer is indicated to preferably be butanediol methacrylate or methylene bisacrylamide (pg 22 lines 5-6), which would correspond to divinyl monomers. The comonomer is indicated to be a compound that comprises a carbon carbon unsaturated bond and is preferably a monounsaturated monomer such as a vinyl or allyl compound (pg 22 lines 9-15) which would correspond to the a monovinyl monomer. The method is indicated to include a polymerization initiator which is preferably azo bis isobutyronitrile (pg 24 lines 19-30) which would act as a source of radicals. The chain transfer agent is indicated to be any thiol containing molecule and is indicated to preferably be an organic linear or branched c6-c20 alkyl thiol (pg 24 lines 34-37 and pg 25 lines 9-11).
Additionally applicants specification pg 12 lines 35-38 and pg 13 lines 1-5 indicates that monomers which contain in addition to two vinyl groups ester linkages (e.g. dimethacrylates such as EGDMA) polymerize to form polyester structures wherein the longest repeating units comprise esters. Applicants specification pg 32 lines 10-15 further indicates that the divinyl monomer of EGDMA (ethylene glycol dimethacrylate) includes repeating units of ethylene glycol and polyacid monomer residues. The use of these monomers would result in a branched polymer where the branch points are in the vinyl polymer chains and in the longest chains in the polymer comprising vinyl polymer chains interspersed with other chemical groups
The comonomers are indicated to be able to include (meth)acrylate monomers (pg 24 lines 1-20).
As such when the preferred butylene glycol di(meth)acrylate (pg 22 lines 5-6) branching monomers are used as the branching monomer the branched polymer would have a structure which corresponds to a step growth monomer residue of a monomer which comprises multiple (meth)acrylic acid groups and a second monomer which is a difunctional monomer such as the previously indicated ethylene glycol unit. As such the structure formed by the polymerization of the preferred branching monomer would have the structural appearance of a step growth polymer backbone and of the claimed step growth monomer residues particularly as larger amounts of the branching monomer are used as the use of larger amounts of the branching monomer would result in the polymer having more units that correspond to appearance of the step growth structure in the backbone.
The indicated molar ratio of the components indicated above of a molar ratios of co-monomers: branching monomer: chain transfer agent of from 5-80:0.5-20:1-30 (pg 20 lines 10-15) indicates that the branching monomer is present in an amount of from .62 mol% to 80 mol % of the vinyl monomers used with is an overlapping range with the claimed range of 50 mol% or more, and when this is present would result in a lesser molar amount of the monovinyl monomer. It should be noted that broadly Janssen indicates that the comonomer is an optional component and so need not be present (pg 19 lines 15-20).
These amounts indicate overlapping ranges with the claimed ranges an amount of the multivinyl monomer and the lesser amount of the divinyl monomer which corresponds to an amount of the multivinyl monomer that is slightly above 50 mol%.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. 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). See MPEP 2144.05.I.
Janssen does not specifically teach the amount of the conversion of the saturated carbon carbon bonds in the polymer.
Janssen does teaches that the hyperbranched polymer can be made by including a crosslinking step (pg 26 lines 1-15). This crosslinking step includes complementary reactive groups in the crosslinker and the Hyperbranched polymer that effectively leads to a covalent bond formation between the crosslinker and the hyperbranched polymer and examples of this indicate that one of the crosslinker and hyper branched polymer can be a primary or secondary amine reactive group and the other can have reactive groups such as (meth)acrylates, meth)acrylamides or vinyl derived groups to form amine linkages in Michael type additions (pg 11 lines 15-35). Janssen further teaches that ion exchange group may be formed without crosslinking the hyperbrached polymer which allows for the ion exchange capacity to be increased without increasing crosslinking (pg 13 lines 15-25). This is performed by reacting a group activator that can react with a group on the hyperbrached polymer which leads to a charged group in the hyperbranched polymer. The reactive groups of the hyperbranched polymer are indicated to be the same reactive groups which may react with a crosslinker (pg 13 lines 30-37) which would include vinyl groups. Janssen further teaches that the control over properties and performance of the crosslinked hyperbranched polymer with ion exchange groups may be exerted by choosing the proper ratio between the Hyperbranched polymer the group activator and the crosslinker (pg 14 lines 1-10) and the method can include a post crosslinking step where the crosslinked hyper branched polymer may be subjected to a reaction with a group activator such that remaining reactive group of the hyperbranched polymer react with the group activator ( pg 14 lines 9-15).
It would have been obvious to one of ordinary skilled in the art at the time of filling to use the preferred alkylene di(meth)acrylate and a lesser amount of monovinyl monomer in mol% to give the claimed backbone which has the structural appearance of a step growth polymer backbone because Janssen teaches ranges of these components with overlap with the claimed ranges and teaches that the preferred branching monomer is an alkylene di(meth)Acrylate such as ethylene glycol di(meth)acrylate, and it would be obvious to convert the double bonds of the polymer to saturated carbon carbon bonds to give the claimed method and vinyl group conversion rate because Janssen teaches that vinyl bonds can be reactive groups of the hyperbranched polymer and teaches that these reactive groups can be reacted with a crosslinker and a group activator and can include a post crosslinking step that any of these remaining groups and teaches that reacting these groups would help improve the ionic conductivity of the final polymer formed.
Concerning claim 20 Janssen teaches the method of claim 1 as is stated above.
Janssen does not specifically teach that the method comprises the incorporation of trivinyl monomer and divinyl monomer and optionally monovinyl monomers.
Jansen does teach that the branching monomer is a required component as is stated above, and that the branching monomer may comprise a mixture of different branching monomer compounds (pg 21 lines 25-30). Janssen further teaches that the exemplary branching monomers include di (meth)Acrylates as well as tri(meth)acrylate esters such as trimethylolpropane tri(meth)acrylate (pg 21 lines 30-38). The di(meth)Acrylate monomer correspond to divinyl monomers and the tri(meth)acrylate esters correspond to the trivinyl monomers
It would have been obvious to one of ordinary skill in the art at the time of filling to use a combination of trivinyl and divinyl monomers is the method of Janssen to give the claimed method because Janssen teaches that tri(meth)Acryalte and di(meth)Acrylate monomers can be used as the branching monomer and teaches that the branching monomer can be a mixture of different branching monomers and so it would be obvious to mix tougher the di(meth)Acrylate and tri(meth)acrylate monomers because Janssen teaches that the branching monomer can be a mixture of the indicated branching monomers.
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.
8. Claims 1-7 and 17-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 and 10 of U.S. Patent No. 12448467 (patent application number 16/608,072 recited in previous office actions). Although the claims at issue are not identical, they are not patentably distinct from each other
Concerning claim 1-7,17-19 The claim recites a method of preparing a branched polymer comprising the free radical polymerization of one or more multivinyl monomers and optionally one or more monovinyl monomers in the presence of one or more chain transfer agents, which are selected from a thiol alpha methyl styrene dimer and 2-isoprooxyethanol, providing that the multivinyl monomers are 50 mol% or more of the vinyl monomer (thereby indicating that the monovinyl monomer is preset in a lesser amount ) and where the conversion of double bond functionality to saturated carbon carbon bonds is 80% or more (claim 1) and where the multivinyl monomer is a divinyl monomer (claim 2) and can be ethylene glycol dimethacrylate (claim 10).
When ethylene glycol dimethacrylate is used as the multvinyl monomer this would result in a polymer having the structural appearance of a step growth polymer backbone where the branch points are in the vinyl polymer chains and the polymer is a polyester.
Response to Arguments
9. Applicant's arguments filed 12/30/2025 have been fully considered but they are not persuasive. Applicant argues with regard to the 112(b) rejection, the 102(a)(1) rejection, and the 103 rejection that the examiner has made the claim interpretation provided in the claim interpretation section above an that the office action further asserts that the claims do not indicate a proportion of multifunctional monomer required to form step growth like backbone segments and that Applicant’s declaration does not provide experimental evidence distinguishing the claimed polymer form the prior art. Applicant submits that the office is continuing to interpret the claim language from the office’s own analytical viewpoint, rather than from the viewpoint of a person of ordinary skill in the art, which must be controlling. The present rejection reflects an artificial and incorrect assessment that does not reflect the reality of how a polymer chemist would understand and recognize polymer backbone structures. The declaration provided by the inventor- who is well placed to interpret terms of art in polymer chemistry- should be given significant evidentiary weight, and applicants submits that it is legal error to disregard it. The declaration clearly states that the step-growth characteristics are not met by Findlay or Janssen. The wording “having a backbone which has the structural appearance of a step-growth polymer backbone” is precise and definite as used in the claims and focuses on the essence of what the invention actually achieves. As explained in the declaration, this terminology is neither indefinite nor ambiguous to a skilled person. Rather it is a clear and limiting structural feature. Fundamentally, the backbones in the present invention appear as though they have been made by step-growth methods, whereas the backbones in Janssen and Findlay do not, rather they appear as though they have been made by chain-growth methods. For example in figure 11 of the present incudes several visual clues that cause the skilled reader to recognize a backbone having the appearance of a step growth polymer backbone. The immediate impression is that of a polyester- a class of polymer associated with step growth polymerization- rather than a vinyl polymer associated with chain growth polymerization. There is extensive functionality within the backbone itself (in this case ester linkages) which give the backbone the appearance of step growth characteristics, rather than the backbone being predominantly carbon carbon linkages, which would typically signify chain -growth origins. This step growth appearance is in part a consequence of the very short vinyl polymer segments such that other functionalities dominate the backbone structure. In contrast the polymer so Findlay and Janssen are clearly visually recognizable as chain growth polymers. Any polymer chemist would immediately recognize the structures of Findlay and Janssen as vinyl polymers formed by chain growth polymerization , not as polymers having backbones with the structural appearance of step growth polymer backbones. There main backbones are carbon carbon chains, with functionality predominantly present in pendant groups rather than within the backbone. The office argues that the claimed limitation is not restricted to “typical” step-growth polymer backbones and could encompass any backbone that could theoretically be formed by step growth polymerization. Applicant respectfully submits that this is not the correct inquiry. The key question is not whether one could theoretically devise an unusual or impractical step growth process to form a similar backbone but whether a polymer chemist would recognize the resulting polymer as having a step growth appearance. The claims are directed to recognition and structure not to hypothetical synthetic possibilities. The predominant vinyl polymer characteristics of Janssen contribute to backbones that do not have the structural appearance of step growth polymer backbones. Janssen therefore cannot render claims 17-18 and 20 obvious without impermissible hindsight reconstruction. Applicant further submits that a key objective of this response is to urge the office to give greater weight to what a person skilled in the art would understand by the claimed language rather than substituting an overly analytical interpretation divorced from technical reality.
This argument is not found to be persuasive as the language used is not clear when a polymer backbone has “the structural appearance of a step growth polymer backbone”. Applicant refence to visual clues, and immediate impressions, of types of polymers that are associated with step growth polymer backbones however does not provide a clear way to distinguish if a polymer backbone has the structural appearance or not. One of ordinary skill in the art could just as easily look at the structure of figure 11 that applicant pointed to and see that it looks like a highly crosslinked dimethacrylate polymer because it includes carbon carbon backbone segments resulting from the reaction of methacrylate groups and does not seem to include any terminal OH or COOH groups, moreover one of ordinary skill in the art would recognize that the thiol residue indicated in figure 11 would most often be found in chain growth polymerization where it acts as a common chain transfer agent. The fact that an ester group is present by no means requires that a polymer be formed by step growth polymerization and one of ordinary skill in the art would recognize this, as all acrylic polymers include ester groups and many acrylic monomers have multiple points which can be formed into polymer chains such as the dimethacrylate monomers used in the prior art of record. It should be noted that polyesters can be formed by chain growth mechanisms such as the radical ring opening of caprolactone to form a polycaprolactone polymer chain further indicating that the presence of ester groups can not be a determining factor in the difference between a chain growth structure appearance and a step growth structure appearance particularly given the lack of definition of this appearance. The dimethacrylate polymer would normally be associated with a chain growth polymerization process. This would point to the fact that a person of ordinary skill in the art might well first think that the polymer structure is made by either step growth or chain growth polymerization and which they would recognize first could simply be a matter of which they are more familiar with. This is particularly the case because one of ordinary skill in the art would recognize that multivinyl monomers such as di (meth)acrylates can be used as monomers in chain growth polymerization to give branching polymers and would be expected to be able to recognize the structure which results from these monomers and polymerization and would not be expected to be incapable of recognizing the structure that results. Applicant seems to point to very short vinyl segments of the polymer as being key to the claimed appearance but this limitation is not claimed and it is not clear at what point a vinyl polymer segment is too long to have the claimed “appearance of a step growth polymer”. The polymers of Findlay and Janssen include monomer units made from the same di (meth)acrylate monomers indicated by applicants specification to give rise the structural appearance of a step growth polymer backbone. Applicants indication that hypothetical step growth processes can not be considered is particularly not persuasive as applicants own figures and examples would have to be made by similarly hypothetical step growth processes which would require structures that mirror the reaction of multiple vinyl groups from the exemplary (meth)acrylate group in different amounts (from the reaction of 2 groups, 3 groups, ect) and so would require a combination of multiple different ester containing groups, as well as structures that can include unreacted vinyl groups and the group that results from the chain transfer agent. Applicants arguments seem to rest on multiple unstated and unclaimed limitations, such as short vinyl chains, particular types of step growth polymerization being recognized while others are not, some monomers which can be used in the hypothetical step growth polymerization being recognized while others are not, and how one of ordinary skill in the art would recognize if a polymer backbone has the appearance of step growth polymerization or not. As stated above the limitation of “the structural appearance of a step-growth polymer backbone” is given the broadest reasonable interpretation of having a structure which is capable of being formed by a step growth polymerization process either alone or in combination with another process and is not restricted to “typical” or easily recognized step growth backbones. The claim language provided does not indicate any narrowing of the step growth polymer backbone and so would refer to all possible step growth polymerizations not just specific common step growth polymerizations. The affidavit filed on 04/24/2025 states that the polymers of the invention have backbones which have the structural appearance of step growth polymer and structural units which have the appearance of step growth monomer residues. The affidavit points to various difference between step growth polymers and chain growth polymers such as the presence of functional groups in the backbone however these all refer to the actual methods of making the polymer and not the appearance of such, and it appears that these indications are not 100% definite, because as stated earlier caprolactone can be formed into the polyester poly caprolactone by a radical ring opening polymerization which would be a chain growth polymerization method and additionally polypeptide synthesis can be performed by chain growth polymerization and results in polyamide structures which would indicate that not all polymers that have functional groups in the backbone are step growth polymers. Given this and the fact that no exemplary comparative evidence is presented in the declaration the declaration is not found to be persuasive. The information provided is not sufficient to give a definition of the appearance of a step growth monomer residues when the claimed method is a chain growth method and not a step growth method, or to indicate that the polymers indicated in the affidavit cover the full breadth of the claimed subject matter and are commensurate with scope of the claims. This is particularly the case as the claims as currently drafted do not indicate that the vinyl monomer chains have any length limitation and the most specific claim language regarding the amount of multivinyl monomer vs monovinyl monomer indicates that monovinyl monomer can be present in an amount up to just less than 50 mol%, indicating that vinyl chains can definitely be present in the claimed structure. Janssen in particular as is stated in the rejection provided above indicates that up to 80 mol% of the monomers used in the branched polymer can be multivinyl monomers such as multi(meth)acrylates, and applicant has not provided any indication of how this polymer structure having a majority amount of multivinyl monomer units does not provide the claimed appearance other than a statement that a polymer chemist would not recognize it. Applicant does not offer an alternative interpretation of structural appearance of a step growth polymer backbone but seems to mostly indicate that a person of skill in the art would recognize it when they see it but would be unable to describe it in exact terms. This is not sufficient to make the claimed language definite and is not sufficient to indicate a difference between the currently drafted claims and the prior art of record because the prior art would include multi (meth)acrylate monomers which applicants specification indicates gives rise to the polyester structure and as such the branched polymers of the prior art would have the claimed appearance. Additionally the branched polymers as claimed and as show in figure 11 do not have a single backbone but provide a branching structure where what is considered to be a backbone is selected. The prior art of record uses the branching dimethacrylate monomers and so would have a backbone that can include the indicated structure formed from the dimethacrylate such as ethylene glycol dimethacrylate, and so would form the same structure as applicants which is also indicated to be formed by monomers such as ethylene glycol dimethacrylate, and so would teach the same structural appearance as is claimed. As such the rejections provided above are maintained.
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JOSEPH S. DEL SOLE
Supervisory Patent Examiner
Art Unit 1700
/JOSEPH S DEL SOLE/Supervisory Patent Examiner, Art Unit 1763
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