DETAILED ACTION
New claims 14 and 17 are directed to inventions that are independent or distinct from the invention originally claimed for the following reasons: These claims are drawn to a hollow fiber or a membrane while the original claim under consideration is drawn to a copolymer. As this case was filed under 35 U.S.C. 371, the claims lack unity of invent-tion since the originally examined claims do not make a contribution over the prior art.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 14 and 17 are withdrawn from considera-tion as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Claim Rejections - 35 USC § 102 and 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 9 and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by KR 2017/115697 (cited in applicants’ IDS dated 10/21/24) as interpreted by the English language translation.
This reference teaches a polysulfone polymer prepared by reacting diallyl
bisphenol A and a difluoro diphenyl sulfone. This corresponds to the claimed “unit based on a diallyl bisphenol A”. See the description of Figure 1, as found on page 11. This is then reacted with a dimethylamino methacrylate, which provides the nitrogen atom for the ammonium functionality. See the description of Figures 2 and 3, as found on page 11. The dimethylamino group is functionalized to form a zwitterionic group and a quaternary ammonium group. This corresponds to the copolymer of claim 9.
See the specific quaternary ammonium groups as found on the bottom of page 5, the reactants on page 10 and also the teachings on the bottom of page 10 which further address the anticipatory polymer.
For claim 13, note that this is used to form a membrane (see abstract).
Claims 9 to 13 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Sugaya et al. 6,780,893.
Sugaya et al. teach an anion exchange membrane. See generally the formula
shown and described on column 4, line 50, through column 5. More specifically see the formula (6) and (7) on column 5 which are poly(arylene ether sulfone) copolymers that differ from that found in claim 9 in that they do not contain units “based on” DABA and quaternary ammonium groups.
Note that the phrase “based on” DABA does not specifically require that these units be present, but that units based on them are. With this in mind, note that at least one W group (corresponding to the bisphenol A unit in formula (6) and (7)) must be sub- stituted and one selection is with an ammonium group, shown in column 5, lines 9 to 13. The group is attached via a (CH2) linkage which corresponds to a residual allyl group that has been functionalized with quaternary ammonium group.
To better demonstrate the obviousness of this claim, see Example 1 in which a polysulfone, shown as Formula 7, is chlorinated and followed by a reaction with diamino propane. This results in a quaternary ammonium group that is attached to the polymer backbone by the same linkage as a one that is prepared from (or based on) a diallyl bisphenol A. See also the corresponding method teachings in column 6, lines 39 to 42.
Example 1 differs from that claimed in that the polysulfone of Formula (7) does not contain bisphenol A units, but as shown in the bottom of column 4 through column 5, in the W unit, Ph-Ph and Ph-C(CH3)2-Ph can be used in the alternative in these co-polymers. As such that one having ordinary skill in the art would have found this difference to have been obvious. In this manner claims 9 and 13 are rendered obvious.
For claims 10 and 11, note that the polysulfone polymer does not contain only the ammonium containing group units. For instance the bottom of column 5 teaches at most 90 mol% while Example 1 reacts 60 mol% of the chloromethyl with the diamino propane reactant. This will then contain other units based on bisphenol A, meeting claim 10. Note that the amount found in Example 1, as well as the range “at most 90 mol%” represents polymers that fall within the range of claim 11, such that values within this claimed range are also rendered obvious.
Finally note that Example 1 will necessarily contain a chloride counter ion such that the requirement of claim 12 is found in Sugaya et al.
For new claim 16 note that the alkyl bonded X group can be hydroxyl (column 5, line 2) which will result in a hydroxyl counterion. While claim 16 is in product by process format, the resulting product (a quaternary ammonium group having hydroxide counter-ion) would appear to be inherently the same.
Response to Arguments
Applicant's arguments filed 3/2/26 have been fully considered but they are not persuasive.
In general, for both rejections above, applicants’ arguments indicate a copolymer
that is far more limited than actually claimed.
For the rejection over the KR reference, applicants state “there is no disclosure that quaternary ammonium groups reside at, or are structurally derived from, the allyl groups of DABA itself”. Applicants’ attention is directed to page 6 of the KR reference which states that the polysulfone has the double bond in the branched chain (i.e. an allyl group) and the double bond of the hydrophilic compounds reacts with the double bond. See also Figure 1 and page 11 which refers to Figure 1. Thus while methacrylate seg-ments are part of the attachment, this is not excluded by the claims – even in their amended form. The term “quaternary ammonium functionalities” is inclusive of such a segment. Applicants’ statement of quaternary ammonium functionalities tethered at the DABA allyl positions is met by the KR reference since they can be “tethered” by any means. There is no materially different copolymer structure.
As such the rejection over the KR reference is maintained.
For the rejection over Sugaya et al., the Examiner recognizes that the copolymer therein is not prepared from diallyl bisphenol A per se but the final structure of the copolymer rendered obvious by Sugaya et al. is the same. Applicants refer to the chloromethylated products of polysulfone but overlook the specific teaching of the top of column 5 wherein the alkyl group attached to the reactive X group can have from 1 to 5 carbon atoms. This embraces the resulting linkage, propylene, that is formed from the reaction of an allyl group. This polymer contains a quaternary ammonium functionality that is pendant from a backbone of a polysulfone copolymer that is structurally the same as one prepared from an allyl site, as found in the amended claim 9.
Applicants argue the difference between methylene and that formed from the allyl group, but this difference is obvious. Furthermore applicants have not provided any evidence that such a difference results in any unexpected results.
As such the rejection over Sugaya et al. is maintained.
Allowable Subject Matter
Claims 15 and 18 objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. These claims include a specific manner by which the ammonium functionality is pendant to the polymer backbone that is neither taught nor suggested by the prior art. There is nothing that teaches thiol-ene click reaction or the presence of a S containing linkage. There simply is nothing in the prior art supra, or the updated review of the prior art conducted by the Examiner, that would lead the skilled artisan to such a product. Structures such as that found at the end of the second to the last line in the English language KR reference do not meet claim 18 as the S containing group is not part of a sulfur containing linkage attached at an allyl site.
2021/0108067 is cited as being of general interest. This shows an ion exchange
resin having quaternary ammonium groups but do not teach or suggest the polymer backbone as claimed, nor a linkage containing an S atom.
Conclusion
Applicant's amendment necessitated the new ground of rejection presented in this Office action (the rejection of claim 16). 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.
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/MARGARET G MOORE/Primary Examiner, Art Unit 1765
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