DETAILED ACTION
Claims 1, 2, 4-6, 14 and 17-18 are pending as amended on 28 January 2026, claims 8, 10, 13 26, 28 , 30-31, 34-36 and 39-40 are withdrawn from consideration.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Applicant’s amendments to the claims and the remarks/arguments have been entered and fully considered.
Response to Amendment and Arguments
Applicant’s arguments have been fully considered but are not persuasive.
Applicant argues that a person of ordinary skill in the art would have no motivation to use triethylamine as taught by Gutowski in the reaction of Eldridge because Eldridge specifically teaches the use of heat as a method to promote or accelerate the reaction with the amine compound and the polymeric beads. The examiner disagrees. The examiner acknowledges that Eldridge teaches heat can be used to promote or accelerate the reaction of amine with epoxy group ([0049] and [0065]), however this does not prevent one of ordinary skill to apply alternative accelerator of the reaction, in the instant case, the triethylamine of Gutowski since it would have been obvious for one of ordinary skill in the art to apply a known technique to a known device (method, or product) to yield predictable results. In the instant case, a known catalyst for the reaction of amine with epoxy group. See MPEP 2143 (D).
Applicant argues that Eldridge in view of Gutowski does not arrive the claimed product because Eldridge does not teach the formation of polymeric beads from the reaction with an epoxide-containing methacrylic polymer or copolymer, a nitrogen nucleophile and a hindered amine. The examiner disagrees. As set forth above, Eldridge teaches a polymerized glycidyl methacrylate and ethylene diamine ([0065] and [0072]), Gutowski teaches triethylamine can be used as an accelerator or catalyst for the reaction between epoxy and amine ([0120] and [0121]), thus Eldridge and Gutowski combined to teach the claimed three reaction components. It is further noted that the claim is viewed as product-by-process claims and hence the methods they are created by are not pertinent, unless applicant can show a different product is produced. Even 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 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 product was made by a different process." See MPEP 2113.
Applicant argues that diethylenetriamine is not structurally comparable to the elected species tris(aminoethyl)amine. The examiner disagrees. As shown in the Applicant’s Remarks (p9), both diethylenetriamine and tris(aminoethyl)amine contain multiple primary amine groups separated by a –(CH2CH2-N(H)-CH2CH2)- motif, one of ordinary skill in the art would have reasonable basis to expect that the primary amine groups of tris(aminoethyl)amine would function in similar manner to the primary amine groups of diethylenetriamine as nucleophiles that react with the epoxy group of the polymerized glycidyl methacrylate under similar conditions. This is further evidenced in Gutowski. Gutowski teaches that polyamino groups that can react with polyglycidy(meth)acrylate include tris-(2-aminoethyl)amine([0077], [0091] and [0120]).
As such the rejection over Eldridge and Gutowski stand and reiterated below.
Claim Rejections - 35 USC § 103
Claims 1, 2, 4-6, 9, 14 and 17-18 stand rejected under 35 U.S.C. 103 as being unpatentable over Eldridge in view of Gutowski.
Regarding claims 1, 2 and 4-5, Eldridge teaches a macroporous spherical polymeric beads of a complexing resin comprises a reaction product of polymerized glycidyl methacrylate with polyamines such as ethylene diamine ([0016], [0024], [0036], [0038], [0049], [0060],[0065] and [0072]), which meets the claimed compound bearing a nitrogen nucleophile and polyamines.
Eldridge further teaches that the reaction with the amine compound can be promoted or accelerated ([0049]).
Eldridge does not teach the presence of the claimed hindered amine base.
Gutowski teaches that appropriate accelerators or catalysts for the reaction between epoxy and amine are Lewis acid or bases such as triethylamine ([0120] and [0121]).
At the time the invention was made it would have been obvious for a person of ordinary skill in the art to include the triethylamine of Gutowski in the reaction mixture of Eldridge. The rationale to do so would have been the motivation provided by the teachings of Gutowski that to do so would predictably accelerate the reaction between polyamines and the epoxide group of the glycidyl methacrylate which is desirable by Eldridge ([0049]), and further since it would have been obvious for one of ordinary skill in the art to apply a known technique to a known device (method, or product) to yield predictable results. In the instant case, a known catalyst for the reaction of amine with epoxy group. See MPEP 2143 (D).
Eldridge further teaches the polymeric beads have a size range of 10µm to 5000µm([0024] and [0033]), which overlaps with the claimed size.
One of ordinary skill in the art at the time the invention was made would have found it obvious for the polymer beads to be at the instantly claimed range since it has been held that in the case where the claimed ranges “overlap or lie inside range disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 f. 2d 257,191 USPQ 90(CCPA 1976). See MPEP 2144.05.I.
Generally, differences in ranges will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such ranges is critical. See MPEP 2144.05, In re Boesch, 617 F2d 272, 205 USPQ 215 (CCPA 1980); In re Aller, 220 F2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) and In re Hoeschele, 406 F2d 1403, 160 USPQ 809 (CCPA 1969).
Regarding the recitation “ the reaction product has a larger volume than does the predetermined shape from which the reaction product was produced” of claim 1, Eldridge and Gutowski teach the same product of similar size made by substantially similar process thus meets the claim. Further, the claim is viewed as product-by-process claims and hence the methods they are created by are not pertinent, unless applicant can show a different product is produced. Even 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 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 product was made by a different process." See MPEP 2113.
In addition to teaching ethylenediamine species of claim 5 ([0038]), Elkridge further teaches the polyamine compound includes diethylenetriamine ([0038]), which is structurally similar to the elected species tris(aminoethyl)amine, i.e., both containing multiple primary amine groups separated by a –(CH2CH2-N(H)-CH2CH2)- motif , one of ordinary skill in the art would have reasonable basis to expect that the primary amine groups of tris(aminoethyl)amine would function in similar manner to the primary amine groups of diethylenetriamine as nucleophiles that react with the epoxy group of the polymerized glycidyl methacrylate under similar conditions since it has been held that "Structural relationships may provide the requisite motivation or suggestion to modify known compounds to obtain new compounds. For example, a prior art compound may suggest its homologs because homologs often have similar properties and therefore chemists of ordinary skill would ordinarily contemplate making them to try to obtain compounds with improved properties." See, e.g., Dillon, 919 F.2d at 693, 696, 16 USPQ2d at 1901,1904. See also Devel, 51 F.3d at 1558, 34 USPQ2d at 1214. MPEP 2144.08[R-6] A. This is further evidenced in Gutowski. Gutowski teaches that polyamino groups that can react with polyglycidy(meth)acrylate include tris-(2-aminoethyl)amine([0077], [0091] and [0120]).
Regarding claims 6, 14 and 17-18, Eldridge teaches the amine group of the polyamine compound reacts with the epoxy group of the polymerized glycidyl methacrylate and forms a covalent bond by opening the epoxide group([0038] and [0065]), wherein an amine group is introduced to the polymer bead which is capable of complexing a transition meal cation ([0012],[0015], [0036] and [0038]-[0039]), and the complexing resin is treated with NaOH before complexing with an analyte ([0073] and [0074]).
Regarding claims 9, Eldridge teaches epoxide containing polymer from glycidyl methacrylate is crosslinked ([0018] and [0064]-[0065]).
Conclusion
THIS ACTION IS MADE FINAL. 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 AIQUN LI whose telephone number is (571)270-7736. The examiner can normally be reached Monday-Friday 9:00 am -4:00 pm.
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/AIQUN LI/Ph.D., Primary Examiner, Art Unit 1766