DETAILED ACTION
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 1/9/26 has been entered.
Claim Rejections - 35 USC § 112
Claim 22 is 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. This claim allows for an OH to NCO ratio as low as 1:.5 which will certainly result in residual -OH groups. Claim 1 requires that the polymer backbone is free of hydroxy groups. Claim 22 allows for a significant amount of hydroxy groups and thus cannot be considered further limiting. See also paragraph 1 of the prior office action. This also addressed this point, albeit from a different perspective.
Claim Rejections - 35 USC § 102 and 103
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.
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 to 10 and 19 to 21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Furukawa et al.
This rejection is maintained from the previous office action.
Furukawa et al. teach curable composition that contains a prepolymer as shown
by formula (I). The groups with the subscript “p” correspond to the general formula (I) while the groups with the subscript “q” correspond to the general formula (II). Note that Z (corresponding to the polymer backbone) is the residue of an oligomer (A) (column 2, line 13).
The oligomer (A) can be a polyether urethane prepared by reacting a polyether polyol with a diisocyanate. See column 3, lines 35 to 58, with specific emphasis on line 52 which teaches the polyether polyol. While this excerpt does not specifically teach polyoxyethylene and/or polyoxypropylene, col. 4, line 20 to 25 teaches polyethylene glycol and polypropylene glycol polymers as exemplary polyethers and column 3, line 52, teaches ethylene glycol such that the skilled artisan would immediately envisage a polymer backbone as claimed..
The isocyanate polyurethane as taught in column 3, line 50 (which is reacted with the hydroxyl acrylate) can be one of two polymers.
One possible product is a polyether polyol that has been terminated with an isocyanate group from the diisocyanate. This corresponds to the claimed backbone having a polyether (polyethylene glycol or polypropylene glycol) and a terminal -NCO group such that when reacted with the hydroxyl containing acrylate or methacrylate (column 3, line 36 and 37) the resulting corresponding (I) group will contain a urethane group. This anticipates the polymer in claim 1.
The other possible product is a backbone of polyether formed from the polyether polyol and having groups on either end that are the reaction product of more than one, or an excess, of diisocyanate and polyether polyol. This reaction product will have a polyether backbone, with the remaining polymeric units corresponding to the claimed A1 group. Note that this is broadly defined as a divalent bonding group having a urethane or urea group. While the reaction product in Furukawa et al. is polymeric, this is not excluded from the claims and, in fact, is suggested by claim 4 which allows for plural functional groups within the A1 backbone.
Thus, given either possible outcome for the reaction product of a polyether polyol and a diisocyanate, as found in column 3, lines 53 and 54, once it is polymerized with the hydroxyl containing acrylate it will correspond to a polyether having the formula (I).
The acrylate terminated polyether prepolymer is subsequently reacted with the silane (III) in column 5 to form a prepolymer having acryloyl groups and trimethoxysilyl groups, thus meeting groups (I) and (II). In this manner claim 1 is anticipated.
Of particular importance, as this relates amended claim 1 in which the backbone is free of hydroxyl groups, please note the following.
Column 1 shows the polymer of formula (I). This is prepared by a method as found in column 3 and specifically allows for polymers having only 2 -OH groups as the polymer backbone initial reactant. See for instance ethylene glycol, FP 99-199 and PF 99-258, all of which have only 2 -OH groups. These backbones are subsequently react-ed with diisocyanates and then the silane terminating group. In the final polymer p+q has to be at least 2 (column 2, line 18). As such, when using one of the specifically disclosed diols as the base for the polymeric backbone, all of the possible -OH groups MUST be reacted in order to meet the p+q requirement.
Thus, in addition to the other reasons that support the rejection rationale that no -OH groups are present, this rationale emphasizes the fact that Furukawa et al. envision a polymer having no -OH groups.
Note the following as well, which was noted in the previous office action. The polymeric structure shown in Furukawa et al. does not have hydroxy groups attached to the polymer backbone such that the Examiner has no reason to believe that there are any present. Clearly there are none intended to be present and if any were to be present they would be present in a negligible amount that did not warrant being shown in the final polymer. Or, alternatively, if such a small amount were present, they would not be present on every polymer, but in a residual manner, such that there would be at least some, if not a majority, that contain no hydroxyl groups.
For claim 2, prior to the reaction with the silane, the prepolymer has two terminal groups of formula (I). After the reaction at least some will have one of each group since both “p” and “q” in formula (I) are 1 (column 2, line 18).
For claim 3, note the prepolymer having two terminal groups of formula (I) as noted above. This meets the requirement (1).
For claims 4 to 9, 19 and 20 note the structure described supra, particularly in which the poly ether is terminated with a single diisocyanate. The claimed A groups correspond to each reacted -NCO group.
Also for claim 9, note that numerous silanes disclosed by Furukawa et al. are trialkoxysilanes the meeting these X, Y and Z requirements. See the bottom of column 8 through column 9 and note that “n” can be 1 to 3.
For claim 10, see column 10, lines 35 to 37.
For claim 21 see column 3, line 22. This R12 group corresponds to IDPI.
Claims 17, 18 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Furukawa et al.
The Examiner recognizes that the teachings in Furukawa et al. do not address
the polydispersity of the polyether. Please note, though, that it is extremely well known that a low polydispersity value is known to provide numerous benefits to the physical properties of polyether polymer compositions. The decrease in variation of molecular weight contributes to a decrease in the variations in properties. Such polymers are known to have improved viscoelastic properties and are increasingly common. They are prepared by using DMC catalysts and, again, are well known in the art.
One having ordinary skill in the art would have found the selection of a low poly-dispersity polyoxyethylene and/or polyoxypropylene to have been obvious in the pre-polymer of Furukawa et al. in an effort to take advantage of the known benefits and properties thereof.
For claim 22, the Examiner recognizes that Furukawa et al. do not specifically teach such a ratio. The polymeric structure shown, though, represents the ideal reaction product of a 1:1 ratio such that the skilled artisan would have found a ratio of 1:1 to have been obvious, such that amounts slightly larger and less would have been obvious and such a range falls within the breadth of claim 22.
Response to Arguments
Applicants’ arguments are centered on the alleged presence of -OH groups in the polymer of Furukawa et al. As addressed above, the Examiner has no reason to believe that all of the polymers in Furukawa et al. that are comparable to the claimed polymer (I) have -OH groups. As such these arguments are not persuasive.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARGARET MOORE whose telephone number is (571)272-1090. The examiner can normally be reached on Monday to Friday, 10 am to 5 pm. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Kelly, can be reached at 571-270-1831.
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Mgm
2/7/26
/MARGARET G MOORE/Primary Examiner, Art Unit 1765
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