DETAILED ACTION
This office action is in response to the amendment and arguments filed by applicants on 5/11/26.
Claim Rejections - 35 USC § 112
Claims 17 and 18 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. Claim 1 has been amended to recite a polydispersity maximum of 1.2 such that these values are broader than that found in claim 1 and are not considered to be further limiting.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-10 and 17-23 are rejected under 35 U.S.C. 103 as being unpatentable over Furukawa et al. 4,801,658, in view of Kohl et al. 2012/0055105 or Luckert et al. 2013/0280530.
The general rationale behind this rejection is maintained from the previous office
action. Applicants have inserted a polydispersity requirement into claim 1 that renders the claim obvious rather than anticipated but, other than that, the rejection rationale is the same.
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.
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).
This polymer differs from that claimed in that Furukawa et al. do not teach a poly-dispersity as claimed.
As can be seen from paragraph 19 of Luckert et al. and paragraph 48 of Kohl et al., it is well known in the art to prepare polyethers having a narrow polydispersity by means of a DMC catalyst. The benefits and properties of such polyethers are disclosed. These preferably have a dispersity of less than 1.3. This embraces the claimed range of a maximum of 1.2 such that one having ordinary skill in the art would have found such a polydispersity value for the polyether to have been obvious at the time the invention was made. This also embraces the maximum values in claims 17 and 18.
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.
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.
For new claim 23, the Examiner notes that this limitation has been addressed in previous office actions and, for reasons of record, the Examiner does not find these arguments to be persuasive. Applicants’ arguments contain assumptions and appear to question the validity of the Fukurama et al. reference by suggestion that the formula that is shown ins not actually formed. The Examiner simply feels that applicants cannot provide any argument that is going to change this position. Below is a copy of previous rejection rationale.
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.
Response to Arguments
For claim 23, 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.
For the newly added polydispersity requirement, the Examiner recognizes that the previous office action relied on that which is well known to one having ordinary skill in the art. To this point applicants state that the Examiner is using hindsight to support that conclusion. The Examiner is surprised that applicants would make such a position since the prior art is replete with teachings regarding polydispersity, DMC catalysts and polydispersity. In fact one of the secondary references applied above has the same assignee/applicant as the instant application such that applicants should be well aware that this is not well known technology.
Finally, for claim 22, the Examiner maintains the position that the skilled artisan would have found a ratio to have been obvious. The phrase “ideal reaction” was meant to suggest a stoichiometric ratio that would assume 100% conversion.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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.
Mgm
5/30/26
/MARGARET G MOORE/Primary Examiner, Art Unit 1765
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