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 .
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 3/27/26 has been entered.
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.
Claims 1, 4-8 and 10-17 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.
Claim 1 recites “segment S2 comprises” in line 12. The transitional term “comprising”, which is syn-onymous with “including,” “containing,” or “charac-terized by,” is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. See, e.g., >Mars Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376, 71 USPQ2d 1837, 1843 (Fed. Cir. 2004) [see MPEP 2111.03]. Claim 1 also recites “segment S2…consists of” in lines 6-7. The transitional phrase “consisting of” excludes any element, step, or ingredient not specified in the claim. In re Gray, 53 F.2d 520, 11 USPQ 255 (CCPA 1931); Ex parte Davis, 80 USPQ 448, 450 (Bd. App. 1948) (“consisting of” defined as “closing the claim to the inclusion of materials other than those recited except for impurities ordinarily associated therewith.”) [see MPEP 2111.03]. It is unclear if segment S2 is open-ended or closed to the inclusion of other materials, therefore claim 1 is indefinite. For the purpose of examination, claim 1, lines 12-13 will be interpreted as “wherein the at least one polyether segment S2 is at least 75% by weight of repeating units of the formula -[CH(CH3)-CH2-O]-,”.
Claim 4 depends from canceled claim 3, therefore claim 4 is indefinite. For the purpose of examination, claim 4 will be interpreted as depending from claim 1.
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.
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.
Claim(s) 1, 4-8, 12 and 14-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wollenweber et al. (US 5,725,815), when taken with Möller et al. (WO 94/16044) [English machine translation for citation] and Kirkpatrick et al. (US 2,950,310).
Regarding claims 1, 7-8 and 17: Wollenweber et al. (US ‘815) discloses block copolymers containing alkylene oxide units [abstract], wherein Example A3 [6:15-60; Table 1, Ex. A3] reacts polypropylene glycol (average molecular weight 2000 (PPG-2000)), polyethylene glycol (average molecular weight 600 (PEG-600), and succinic anhydride to afford a block copolymer having ester linkages and hydroxyl (OH) end groups (OH:COOH 1.2; [6:57-58]) [6:15-60; Table 1, Ex. A3]. Wollenweber et al. (US ‘815) discloses PEGs having average molecular weights of 200 to 35,000 [3:49-56; 5:6-15]. Wollenweber et al. (US ‘815) discloses the block copolymers are liquid to highly viscous products [5:16-18].
Wollenweber et al. (US ‘815) does not disclose the PEG of Ex. A3 having a Mn of 6,000-25,000 g/mol [instant claim 1]; the PEG of Ex. A3 having a Mn of 7,000-10,000 g/mol [instant claim 17]. However, 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].
Additionally, while the PEG of Ex. A3 does not have a Mn of 6,000-25,000 g/mol, one having skill in the art would have found it obvious to have employed a PEG having a Mn of 6,000-25,000 g/mol, as Wollenweber et al. (US ‘815) discloses PEGs having average molecular weights of 200 to 35,000 [3:49-56; 5:6-15]. See also In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980) [MPEP 2144.05].
Wollenweber et al. (US ‘815) does not specifically disclose the block copolymers having a Mn of 8,000-50,000 g/mol. However, 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].
Möller et al. (WO ‘044) provides evidence for PPG-PEG block copolymers having ester and/or urethane groups as liquids [¶12-14; ¶20]. Möller et al. (WO ‘044) discloses the liquid block copolymers prepared from PPGs having a molecular weight of 1,000-8,000 and PEGs having a molecular weight of 200-20,000 [abstract; ¶10].
Kirkpatrick et al. (US ‘310) provides evidence for a PEG-PPG copolymers being liquid at a molecular weight of 3,000-20,000 [2:33-40].
Regarding claim 4: Wollenweber et al. (US ‘815) discloses Example B1 [6:63-7:25; Table 2, Ex. B1] reacts polypropylene glycol (average molecular weight 2000 (PPG-2000)), polyethylene glycol (average molecular weight 600 (PEG-600), and tetramethyl xylylene diisocyanate (TMXDI) until no more free NCO was detected to afford a block copolymer having urethane linkages and hydroxyl (OH) end groups (OH:NCO 1.17; [6:57-58]) [6:63-7:25; Table 2, Ex. B1]. Wollenweber et al. (US ‘815) discloses PEGs having average molecular weights of 200 to 35,000 [3:49-56; 5:6-15].
Wollenweber et al. (US ‘815) does not disclose the PEG of Ex. B1 having a Mn of 6,000-25,000 g/mol. However, 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].
Additionally, while the PEG of Ex. B1 does not have a Mn of 6,000-25,000 g/mol, one having skill in the art would have found it obvious to have employed a PEG having a Mn of 6,000-25,000 g/mol, as Wollenweber et al. (US ‘815) discloses PEGs having average molecular weights of 200 to 35,000 [3:49-56; 5:6-15]. See also In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980) [MPEP 2144.05].
Regarding claim 5: Wollenweber et al. (US ‘815) discloses 1 to 99 wt% PEG, with more than 55 wt% PEG for high temperature applications [4:42-5:5].
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].
Regarding claim 6: Wollenweber et al. (US ‘815) discloses 1 to 99 wt% PPG, preferably more than 50 wt% PPG [4:42-5:5].
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].
Regarding claims 12 and 14: Wollenweber et al. (US ‘815) discloses adding 0.6 wt% polymer A3 to a composition containing 60 wt% water and 40 wt% styrene/butadiene copolymer [7:28-60; Table 3A].
Regarding claim 15: Wollenweber et al. (US ‘815) discloses the basic claimed composition [as set forth above with respect to claim 12].
The claimed effects and physical properties, i.e. the rotational viscosity of the liquid composition at 40 °C, differs at most 45%, from the rotational viscosity of the liquid composition at 4 oC at the same shear rate, wherein the shear rate includes at least one of 0.4 1/s, 82.5 1/s, and 909 1/s, would implicitly be achieved, as “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) [see MPEP 2112.01].
Regarding claim 16: Wollenweber et al. (US ‘815) discloses adding 0.6 wt% polymer A3 to a composition containing 60 wt% water and 40 wt% styrene/butadiene copolymer [7:28-60; Table 3A].
The claimed effects and physical properties, i.e. adjusting the temperature dependence of the viscosity of the composition, would implicitly be achieved, as “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) [see MPEP 2112.01].
Claim(s) 12-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wollenweber et al. (US 5,725,815) as applied to claim 1 above, when taken with Bartelloni (EP 0 109 900) [English machine translation for citation].
Regarding claims 12-13: Wollenweber et al. (US ‘815) discloses the basic claimed composition [as set forth above with respect to claim 1]; wherein Wollenweber et al. (US ‘815) discloses adding 50 microliters of polymer A3 to a coating composition containing 9.5 parts by weight {pbw} of a latex (DOW 685; carboxylated styrene/butadiene in water at 47% concentration) and 3.5 pbw starch {thickener} [9:48-61].
Bartelloni (EP ‘900) provides evidence that DOW 685 is carboxylated styrene/butadiene in water at 47% concentration [Ex. 11].
Claim(s) 10-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wollenweber et al. (US 5,725,815) as applied to claim 1 above, and further in view of Möller et al. (WO 94/16044) [English machine translation for citation], when taken with Kirkpatrick et al. (US 2,950,310).
Regarding claims 10-11: Wollenweber et al. (US ‘815) discloses the basic claimed composition [as set forth above with respect to claim 1]; wherein Wollenweber et al. (US ‘815) discloses copolymers of PEG and PPG [3:28-33] for use in the synthesis of the foam control agent [1:1-9].
Wollenweber et al. (US ‘815) does not specifically disclose a PEG-PPG-PEG copolymer. However, Möller et al. (WO 044) discloses glycol ether block copolymers for foam regulators [abstract], wherein a glycol ether block copolymer can be PEG-PPG-PEG having ~ 92 wt% PPG and ~ 8 wt% PEG [¶ 14]. Wollenweber et al. (US ‘815) and Möller et al. (WO 044) are analogous art because they are concerned with a similar technical difficulty, namely the preparation of glycol ether block copolymers for foam control. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined PEG-PPG-PEG having ~ 92 wt% PPG and ~ 8 wt% PEG, as taught by Möller et al. (WO 044) in the invention of Wollenweber et al. (US ‘815), and would have been motivated to do so since Möller et al. (WO 044) suggests PEG-PPG-PEG having ~ 92 wt% PPG and ~ 8 wt% PEG for the production of the glycol ether block copolymer [¶ 14].
Kirkpatrick et al. (US ‘310) provides evidence for a PEG-PPG-PEG having ~ 92 wt% PPG and ~ 8 wt% PEG [Ex. V; 5:7-22].
Response to Arguments
Applicant's arguments filed 3/27/26 have been fully considered but they are not persuasive. The rejection of claims based upon Wollenweber et al. (US 5,725,815) is maintained.
Wollenweber et al. (US ‘815) was relied on for disclosing block copolymers containing alkylene oxide units [abstract], wherein Example A3 [6:15-60; Table 1, Ex. A3] reacts polypropylene glycol (average molecular weight 2000 (PPG-2000)), polyethylene glycol (average molecular weight 600 (PEG-600), and succinic anhydride to afford a block copolymer having ester linkages and hydroxyl (OH) end groups (OH:COOH 1.2; [6:57-58]) [6:15-60; Table 1, Ex. A3]. Wollenweber et al. (US ‘815) discloses PEGs having average molecular weights of 200 to 35,000 [3:49-56; 5:6-15]. Wollenweber et al. (US ‘815) discloses the blocks (C3H6O)a and (C2H4O)b have the numbers a and b derived from the molecular weights of the polypropylene glycol and polyethylene glycol [3:49-56].
The examiner interprets the molecular weights of the PEGs and PPGs as number average molecular weights (Mn), as Wollenweber et al. (US ‘815) discloses the blocks (C3H6O)a and (C2H4O)b have the numbers a and b derived from the molecular weights of the polypropylene glycol and polyethylene glycol [3:49-56].
PPG-2000 (polypropylene glycol; average molecular weight 2000) corresponds to instant segment S2 having a number average molecular weight of at most 10,000 g/mol and consisting of ether repeating units -[CH(CH3)CH2O]-.
Wollenweber et al. (US ‘815) discloses PEG-600 (polyethylene glycol; average molecular weight 600) in Ex. A3, and discloses PEGs having average molecular weights of 200 to 35,000 [3:49-56; 5:6-15]. PEGs of average molecular weights of 200 to 35,000 overlap with instant segment S1 having a number average molecular weight of 6,000 - 25,000 g/mol and consisting of ether repeating units -[CH2CH2O]-. While Wollenweber et al. (US ‘815) does not disclose the PEG of Ex. A3 having a Mn of 6,000-25,000 g/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]. See also In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980) [MPEP 2144.05]. The reference must be considered for all that it discloses and must not be limited to preferred embodiments [see MPEP 2123].
Applicants can rebut a prima facie case of obvious-ness based on overlapping ranges by showing the crit-icality of the claimed range. “The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other vari-able within the claims. . . . In such a situation, the applicant must show that the particular range is criti-cal, generally by showing that the claimed range achieves unexpected results relative to the prior art range.” In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP § 716.02 - § 716.02(g) for a discussion of criticality and unex-pected results. [see MPEP 2144.05].
To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960) [see MPEP 716.02(d)].
Objective evidence which must be factually sup-ported by an appropriate affidavit or declaration to be of probative value includes evidence of unexpected results, commercial success, solution of a long-felt need, inoperability of the prior art, invention before the date of the reference, and allegations that the author(s) of the prior art derived the disclosed subject matter from the applicant. See, for example, In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984). See also In re Lindner, 457 F.2d 506, 508, 173 USPQ 356, 358 (CCPA 1972); Ex parte George, 21 USPQ2d 1058 (Bd. Pat. App. & Inter. 1991) [see MPEP 716.01(c)].
Kirkpatrick et al. (US 2,950,310) was relied on for disclosing PEG-PPG copolymers being liquid at a molecular weight of 3,000-20,000 [2:33-40]; and for disclosing PEG-PPG-PEG having ~ 92 wt% PPG and ~ 8 wt% PEG [Ex. V; 5:7-22]. Kirkpatrick et al. (US ‘310) discloses x is equal to the sum of the number of times n has a value of two plus the number of times n has a value of 3 [2:150-60], which the examiner interprets the molecular weight of the PEG-PPG copolymers as a number average molecular weight.
Bartelloni (EP 0 109 900) was relied on for disclosing DOW 685 is carboxylated styrene/butadiene in water at 47% concentration [Ex. 11].
Möller et al. (WO 94/16044) was relied on for disclosing glycol ether block copolymers for foam regulators [abstract], wherein a glycol ether block copolymer can be PEG-PPG-PEG having ~ 92 wt% PPG and ~ 8 wt% PEG [¶ 14]. Möller et al. (WO ‘044) discloses PPG-PEG block copolymers having ester and/or urethane groups as liquids [¶12-14; ¶20]. Möller et al. (WO ‘044) discloses the liquid block copolymers prepared from PPGs having a molecular weight of 1,000-8,000 and PEGs having a molecular weight of 200-20,000 [abstract; ¶10].
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL F PEPITONE whose telephone number is (571)270-3299. The examiner can normally be reached on 7:00 AM - 3:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached on 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL F PEPITONE/Primary Examiner, Art Unit 1767
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