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 .
Status of Claims
The examiner acknowledges the amendments to claims 1, 2, 4, 7-9, and 16 as well as the addition of claims 21 and 22 and the cancelation of claims 15 and 20. The examiner further notes from the last office action that claims 11 and 17 were previously canceled and are not currently under consideration and that should the applicant wish to have these claims examined, they must be entered as new claims. A claim canceled by amendment (deleted in its entirety) may be reinstated only by a subsequent amendment presenting the claim as a new claim with a new claim number. See MPEP 608.01(s).
Claims 1-2, 4-5, 7-10, 12, 16, 18, and 21-22 are pending.
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.
Claim(s) 1-2, 4-5, 7-10, 12, 16, 18, and 21-22 are rejected under 35 U.S.C. 103 as being unpatentable over Patil (WO 2020176456, herein using US version 20220145065).
Regarding Claims 1-2,
Patil teaches a polyetherimide copolymer (Abstract) that can be comprised of a bisanhydride of the following formula
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where T can be represented by a formula -O-Z-O- (Paragraph 38) where Z is of the following structure:
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in which p and q can equal 0 (Paragraph 38) and where X can be a bridging group of 1 to 18 carbons where the connection to the aryl groups through the same or different carbons (Paragraph 38). In this case, a 5 carbon chain would represent the group of the instant claim which falls within the chain length allowed by Patil. This dianhydride is further reacted with diamines such as 4,4’-oxydianiline (Paragraph 44) meeting the requirement of F1 and amine terminated polysiloxanes of the following structure (Paragraph 46):
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in which R’ can be a variety of organic compounds including alkyl groups such as methyl groups (Paragraph 45) and where R4 can be an alkyl chain of 2 to 20 carbons (Paragraph 46), E can be an integer between 5 and 100 (Paragraph 46), and further discloses that the composition may include mixtures of diamines (Paragraph 46) which meets the requirements of F3. The ranges of R4 and E overlap with the ranges of the instant claims. One of ordinary skill in the art, aware that the length of the polysiloxane chain would alter the flexibility of the resulting polymer would adjust both the length of the alkyl linking chains as well as the number of repeat segments in order to obtain the desired level of flexibility in the resulting polymer. It would therefore have been obvious prior to the effective filing date of the instant application to have to have selected the overlapping portion of the ranges because selection of the overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP 2144.05.I. While Patil is silent on whether R4 is linear or branched, because the linking groups of the instant claim contain more than 2 and fewer than 20 carbons, it would have been obvious prior to the effective filing date of the instant application to have used any linking group, linear or branched, that met this requirement.
Regarding the number of repeat units as stated in claim 2, Patil teaches that the polymer should have a molecular weight of between 5,000 and 45,000 Da (Paragraph 61). This range, based upon the molecular weight of the repeat units, would overlap with the range of the instant claim. As longer polymer chains are known to have increased viscosity, one of ordinary skill in the art would adjust the molecular weight, and it would necessarily follow, the number of repeat units in the polymer, to obtain a material with an appropriate viscosity for the application. As such, it would have been obvious prior to the effective filing date of the instant application to have selected a number of repeat units that would satisfy the product requirements. Additionally, it would have been obvious to have selected the overlapping portion of the range because selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP 2144.05.I.
Finally, regarding the amount of siloxane containing diamine, Patil teaches that the diamine component can be comprised of 10 to 90% by mole of the siloxane-containing diamine (Paragraph 46). Based upon the value of E disclosed by Patil as well as the allowable other components, this value would overlap with the range of the instant claim. One of ordinary skill in the art would alter the ratio between the hard and soft diamines, and would select an appropriate ratio between the two to obtain a material with the desired properties (Paragraph 48). As such, it would have been obvious prior to the effective filing date of the instant application to have selected the overlapping portion of the ranges because the selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP 2144.05.I.
Regarding Claims 4 and 5,
Patil teaches the components as required which are described above in regard to claims 1 and 2 and that the copolymer can be a block or random copolymer (Paragraph 47). Patil also teaches that the polysiloxane diamine may be between 10 and 90% by mole of the organic diamine (Paragraph 46), which when combined with the molecular weight requirements described above in regard to claims 1-2 overlaps with the range required based upon the values of K and L. One of ordinary skill in the art, recognizing that siloxanes when introduced into copolymers increase the flexibility of the overall polymer, would naturally adjust the amount incorporated into the copolymer to obtain the desired level of flexibility for the desired application. It would therefore have been obvious to have selected an incorporation level that would meet this requirement. Additionally, it would have been obvious to have selected the overlapping portion of the ranges because selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP 2144.05.I.
In regard to the degree of polymerization, this value is an alternate method of describing the number of monomeric units in each block. The value disclosed falls within the range of claim 4 and would have been obvious for the reasons described.
Patil also teaches that the siloxane blocks may have minimal hydrocarbon content in which the R groups on the silicon are methyl groups (Paragraph 45), meeting the requirement of the instant claim with the requirements for groups R9 and R10 addressed in regard to claim 1 above.
Regarding Claims 7 and 8,
The claims are directed to microfluidic and temperature sensing devices respectively, however both claims fail to set forth any distinct definition or specification of these devices other than to require the use of the material from claims 1 or 4. Because of this, the intended use cannot be regarded as a claim limitation. See MPEP 2111.02.II.
Regarding Claims 9-10 and 16,
Patil teaches the structures required as discussed above in regard to claims 1-2 and 4. Patil also teaches that the composition can be polymerized under reaction conditions that afford the product (Paragraph 52) and specifically notes that the reaction can be conducted under nitrogen atmosphere at elevated temperature with a Dean-Stark condenser, followed by precipitation into methanol and subsequent vacuum drying while heating (Paragraph 91, Example 1).
While Patil does not specify the use of solvent, the use of solvent is common in organic reactions. Specifically, due to its azeotrope with water, benzene can be used in reactions where water needs to be removed in order for the reaction to proceed. As the reaction being performed here is a polycondensation (Paragraph 52) and by specifying the use of a Dean-Stark apparatus (Paragraph 91), which is used to trap water from condensation reactions, it would have been obvious to have used any nonreactive solvent with a water azeotrope in the polymerization reaction.
With regard to the formation of a block copolymer, as Patil discloses the polycondensation reaction for a random copolymer, the only difference for forming the block copolymer would be to separately polymerize the organic amine-bis anhydride and the polysiloxane diamine-bis anhydride blocks. Patil discloses that the polymer may be a block copolymer (Paragraph 46), and it would logically follow, a sequence as described in the instant claim.
Regarding the amount of siloxane containing diamine, Patil teaches that the diamine component can be comprised of 10 to 90% by mole of the siloxane-containing diamine (Paragraph 46). Based upon the value of E disclosed by Patil as well as the allowable other components, this value would overlap with the range of the instant claim. One of ordinary skill in the art would alter the ratio between the hard and soft diamines, and would select an appropriate ratio between the two to obtain a material with the desired properties (Paragraph 48). As such, it would have been obvious prior to the effective filing date of the instant application to have selected the overlapping portion of the ranges because the selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP 2144.05.I.
Finally, regarding the siloxanes used, Patil teaches that the siloxanes may have between 2 and 31 repeat units (Paragraph 45), which when placed into an amine-terminated siloxane of the following formula:
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would result in a total number of silicon atoms equaling at least 3. The linking group requirements were discussed in regard to claim 1 above and it would have been obvious to have used any linking group, including branched versions under 20 carbons, as discussed in regard to claim 1.
Regarding Claims 12 and 18,
Patil teaches the use of ODA (Paragraph 44).
Regarding Claims 21 and 22,
Claims 21 and 22 are directed towards a microfluidic device and flexible temperature sensor that is comprised of the block copolymer from claim 4. However, these devices represent intended uses of the copolymer previously described as they do not impart any additional limitations upon the copolymer and the claim language does not require any modification of the copolymer in order to serve in these capacities. It would logically follow that any material meeting the requirements of claim 4 would thus be capable of functioning in these capacities and it would therefore have been obvious prior to the effective filing date of the instant application to have used the material for the listed purposes.
Response to Arguments
Applicant's arguments filed 7/20/2026 have been fully considered but they are not persuasive for the following reasons.
On pages 9 and 10, the applicant argues that Patil fails to teach the amended structure in which R1 and R2 are ethyl groups. The examiner disagrees and points to paragraph 38 of Patil, where the linking group between the two aromatic rings can be a 1 to 18 carbon chain in which the aryl rings are attached to the same or different carbon. This grouping includes the applicant’s required structure, which would contain 5 carbons with the aryl groups attached to the same carbon. This could be done for the reason of increasing the bulk of this group to disrupt packing in the solid state or to improve processability of the resulting polymer. Because Patil teaches that structures of this type are included, it would have been obvious to have selected this structure. While this structural requirement has been amended into several claims, as these claims depend upon claim 1, they are not further addressed here. The examiner also notes that additional references in art made of record disclose polymers that share the structure of the instant claims and allow for the same modification as required in the amended claims of the instant application. Ultimately, the applicant has failed to distinguish the compounds of the instant claims from those of the prior art and as a result, the rejection is maintained.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Patil (WO 2020176454, herein disclosing US version US 202300222246) and Kalyanaraman (US 20190177482 and US 20170362384) teach block and random copolymers that meet the requirements of the instant claims.
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 ADAM J BERRO whose telephone number is (703)756-1283. The examiner can normally be reached M-F 8:30-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Kelley can be reached at 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/A.J.B./Examiner, Art Unit 1765
/JOHN M COONEY/Primary Examiner, Art Unit 1765
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