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 .
Detailed Action
This office action is in response to applicant' s communication filed on 3/26/24. Claims 1-16 are pending in this application. Claims 1-11 and 14-15 remain withdrawn from consideration being drawn to the non-elected invention. Due to applicant’s amendments to the claims filed 2/19/26, the claim objections filed 11/19/25 are withdrawn.
As a result, claims 12-13 and 16 are being examined in this Office Action.
Claim Rejections – 35 USC 102/103
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 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 the AIA 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed 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 of this title, 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.
Claims 12-13 and 16 are rejected under AIA 35 U.S.C. 102(a)(1) and/or 102(a)(2) as being anticipated by or, in the alternative, under 35 U.S.C. 103(a) as being obvious over Burckhardt et al. (US 20170198081, July 13, 2017).
Burckhardt et al. teaches a liquid applied membrane composition for roofing applications that contain a mixture aldimines (which reads on applicant’s blocked amines). The formation of their aldimines of the formula (I) are through a condensation reaction of a primary amine of formula (II) and an aldehyde of formula (III). See the reaction scheme below (abstract; paragraphs 84, 105, 111 and 107):
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Burckhardt et al. exemplifies the following aldimines of the formula (I) (see structures below) (paragraph 13, 101, 110 and claim 17).
The aldimine of formula (I) below is the result from the reaction of the aldehyde of formula (III), 2,2-dimethyl-3-acetoxypropanal, and the diamine of formula (II), hexane-1,6- diamine. The resulting aldimine product is below (aldimine of the formula (I) in which G = hexyl, R1 = R2 = R3 = methyl):
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The aldimine of formula (I) below is the result from the reaction of the aldehyde of formula (III), 2,2-dimethyl-3-acetoxypropanal, and the diamine of formula (II), 1-amino-3-aminomethyl-3,5,5-trimethylcyclohexane. The resulting aldimine product is below (aldimine of the formula (I) in which G = 3,5,5-trimethylcyclohexylmethyl, R1 = R2 = R3 = methyl):
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The structure of the aldehyde, 2,2-dimethyl-3-acetoxypropanal (aldehyde of formula (III) in which R1=R2=R3=methyl) is below:
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Burckhardt et al. teaches their aldimines of formula (I) are preferably present as a mixture with at least one further blocked amine, that can be “an aldimine other than the ones of the formula (I)”. Burckhardt et al. teaches there are advantages of using a combination of aldimines (blocked amines). The membrane composition benefits for using a combination of aldimines include good storage stability, fast curing properties, low odor emissions, high strength and good overcoatability. Burckhardt et al. teaches that the membrane composition can preferably contain a ratio of at least 70 equivalent % of the aldimines of the formula (I), with the other 30 equivalent % being a different blocked amine, not being an aldimine of formula (I). These other blocked amines (aldimines “other than the ones of the formula (I)”) are formed from the condensation reaction of amines of formula (II) with “aromatic aldehydes, preferably benzaldehyde or substituted benzaldehydes, or with 2,3-unsaturated aldehydes such as cinnamic aldehyde, or with 2,2-disubstituted aliphatic or cycloaliphatic aldehydes such as pivaladehyde, or with esters from 3-hydroxy-2,2-dimethylpropanal”. Burckhardt et al. does not require purification of the reaction product before reaction to produce the aldimine composition. Or in other words, Burckhardt et al. teaches a ratio of 70 equivalent % of the aldimines of formula (I) (that come from the condensation of the aldehyde of formula (III), with the rest of the aldimines (30 equivalent %) that instead come from the condensation of esters or aldehydes not of formula (III). (paragraphs 100, 105-106, 111-112, 114)
Though the examiner has included Burckhardt et al.’s teachings for the production of the aldimine (blocked amine) mixture for the sake of completeness, the patentability of applicant’s claims is not based on the particular reaction steps. In other words, with regard to applicant’s claim language regarding the actual synthesis of the mixture of blocked amines, the examiner interprets these as product-by-process limitations. Again, the actual patentability of the claims is based on the blocked amine mixture product and not on the process of making the blocked amine mixture. The examiner reminds the applicant that they elected Group III, the blocked amine composition, in their response filed 5/17/24, and not the process of making the blocked amine mixture.
Additionally, “[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 productions. 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 art was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) Also see MPEP 2113.
Thus since Burckhardt et al.’s membrane composition of aldimines corresponds to applicant’s composition of blocked amines, these claims are fully met.
Response to Arguments
Applicant’s arguments have been considered but are not persuasive for the following reasons:
The examiner acknowledges applicant’s argument that Burckhardt et al. does not teach the specific esters and acetals or the side product aldehydes, esters and acetals for the reaction product.
The examiner does not agree with the applicant. The reaction product structures included in the claims are not the claimed blocked amine composition. The included reaction product structures are just the reactants for the process that synthesize the mixture of blocked amines. Patentability of applicant’s claims is not based on the particular reaction steps or reactants but on the claimed blocked amine composition. The examination of the claims is based on the compounds in the blocked amine composition and not on the particular reaction steps. Since applicant has not limited the blocked amine composition to particular structures or compounds, the examiner contends that Burckhardt et al.’s aldimine mixture reads on applicant’s mixture of blocked amines.
The applicant seems to argue that the patentability of their claims include the assumption that particular products are formed from the reaction of the compounds included in the claims. This assumption is not a patentable distinction, nor is it a chemically sound argument. The elected claims were drawn to a composition and not to a method for making the composition. The examiner cannot base patentability on the assumption that particular products are formed from applicant’s reactants. The compounds in the claimed blocked amine composition should be clearly defined and included. The products from any chemical reaction cannot be assumed unless they are clearly defined. Furthermore, not only cannot the examiner assume what the products are from a mixture of compounds, but it is possible for there to be no product formation or chemical transformation at all. Any chemist knows what it is like to have a synthesis fail to produce an intended product mixture. The examiner cannot assume the reaction goes to 100% completion or that a particular product mixture is formed from a reactant mixture, both from a chemical and patentability standpoint.
The examiner acknowledges applicant’s argument that Burckhardt et al.’s reaction pathway is different than applicant’s reaction pathway and that the claimed blocked amine composition has distinctive structural characteristics.
The examiner does not agree with the applicant. Again, 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 art was made by a different process.
Furthermore, applicant’s arguments are not commensurate in scope with the claims. The applicant does not identify the structures in the claimed blocked amine product composition. The applicant merely includes the particular reactants used to form applicant’s claimed blocked amine product composition, but does not clearly claim the compounds in the resulting blocked amine product composition. Applicant’s elected claims are drawn to a composition and not to a method of making the composition. The examiner maintains that Burckhardt et al.’s aldimine composition reads on applicant’s claimed blocked amine composition, absent evidence to the contrary.
The examiner acknowledges applicant’s argument for unexpected results regarding their mixture of blocked amines over the prior art.
The examiner does not agree with the applicant. It is unclear how applicant’s blocked amine mixture has unexpected results, since the claims do not clearly include the structures or compounds in the blocked amine mixture. The examiner cannot discern the patentability of applicant’s blocked amine mixture with regard to unexpected results, when the components of the claimed blocked amine mixture are not identified in the claims. Furthermore, applicant has not provided a side-by-side comparison of their composition with the prior art’s composition, which includes the components in the compositions, so that the examiner can make a determination of unexpected results.
Conclusion
No claim is allowed.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jennifer Cho Sawyer whose telephone number is (571) 270 1690. The examiner can normally be reached on Monday-Friday 9 AM - 6 PM PST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Renee Claytor can be reached on (571) 272-8394. The fax phone number for the organization where this application or proceeding is assigned is 571-274-1690.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
Jennifer Cho Sawyer
Patent Examiner
Art Unit: 1691
/RENEE CLAYTOR/Supervisory Patent Examiner, Art Unit 1691
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