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 .
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.
Claims 1-5, 8-12, and 14-21 are rejected under 35 U.S.C. 103 as being unpatentable over Klerks (WO 2016/202359) in view of Timberlake (EP 0,496,109 A2), Prasse (US 2010/0087576 A1) and Lacroix (US 2011/0259464 A1). Laferte (WO 2019/115952 A1, hereinafter referring to US 2020/0317962 A1 as the English version) is cited as an evidentiary reference. Wacker (GENIOSIL STP-E10 Datasheet) is cited as an evidentiary reference.
Regarding claim 1, Klerks teaches a high strength and moisture-resistant adhesive (Abstract), comprising a silane-modified polyether component (p. 3, lines 5-6).
Klerks further teaches the incorporation of adhesion promoters (p. 4, lines 20-21) including acryloxy functionalized alkoxy silanes including inter alia 3-methacryloxypropyltrimethoxysilane, 3-methacryloxypropylmethyldimethoxysilane, 3-methacryloxypropylmethyldiethoxysilane, and 3-methacryloxypropyltriethoxysilane (p. 6, lines 18-21) which read on the claimed “(iii) silicon compound containing a conjugated C=C group having the general formula (VIII)” because their structures are identical to the claimed “general formula (VIII)” when A2 is CH2=C(CH3)C(=O)OCH2CH2CH2-, R35 are each either a methyl or ethyl group, and k is 0 or 1.
As described above, Klerks teaches the incorporation of one or more adhesion promoters (p. 4, lines 20-21), which reads on the claimed “(c)”, “an adhesion promoter containing an alkoxysilyl group” because Klerks teaches specific adhesion promoters including 3-aminopropyltriethoxysilane (p. 4, lines 28-29), N-2-(aminoethyl)-3-aminopropyltriethoxysilane (p. 4, lines 29-30), both of which include alkoxysilyl groups.
The adhesion promoter taught by Klerks reads on both the claimed component “(b)(iii)” and the claimed “adhesion promoter (c)” because Klerks teaches the incorporation of more than one adhesion promoter (p. 12, line 7), and because Klerks teaches adhesion promoters which satisfy the limitations of each of the claimed components.
Klerks further teaches the incorporation of a catalyst (p. 2, line 3), which reads on the claimed “curing catalyst”
As described above, Klerks teaches the incorporation of a modified polyether. However, Klerks differs from claim 1 because it is silent with regard to the specific incorporation of the claimed alkoxysilyl-containing polymer.
In the same field of endeavor, Timberlake teaches a process for producing alkoxysilane-terminated polyethers (Abstract) suitable for use as adhesive materials (p. 2, lines 5-6). Timberlake teaches that the inventive process involves coupling allyl-started monols with an isocyanate and thereafter hydrosilylating the polyether with an alkoxysilane (p. 3, lines 34-36). Timberlake specifies that the first step described above results in a high molecular weight allyl-terminated polyether that has only one set of urethane linkages in the backbone, useful for obtaining a product which has no free isocyanate groups (and thus, the end-user is not exposed to free isocyanates, p. 4, lines 8-10).
The instant Specification specifically states that the alkoxysilyl-containing polymer within the purportedly-inventive polymer may be formed from the reaction of an allyl-containing poly(oxyalkylene) polymer with a hydridoalkoxysilane (see instant Specification at [0040], method (iv)). The instant Specification further states that useful hydrolysable hydridosilanes include trimethoxysilane, methyldimethoxysilane, triethoxysilane, and methyldiethoxysilane (see instant Specification at [0078]), which overlaps with that of Timberlake (p. 4, lines 31-33).
Timberlake further specifies the use of coupled polyethers having molecular weights in the range of 3,000 and 20,000 g/mol (p. 3, lines 39-41), and isocyanate coupling agents specifically including MDI (p. 4, line 15). An MDI-coupled allyl-started polyether of propylene oxide having a molecular weight ranging from 3,000 to 20,000 g/mol would comprise between about 45 and 338 total propylene oxide repeat units (total molecular weights, minus two allyl alcohol monomers and one MDI monomer, divided by the molecular weight of propylene oxide at 58.08 g/mol). Divided into two, the coupled polyether of Timberlake comprises two polyether segments with about 23 to about 169 repeat units, corresponding to the claimed “d” within the claimed “general formula (II).” This range of about 23 to about 169 falls within the claimed range of “20 to 400,” establishing a prima facie case of obviousness. The resulting silylated polymer reads on the claimed “alkoxysilyl-containing polymer” because it is identical to the claimed formulae wherein “A” is -O-, “R1” is methyl or ethyl, “R2” is methyl or ethyl, “R3” is a propyl group, “b” is zero, and “R5 is identical to the claimed “general formula (II)” wherein “R6-7” are all propyl groups, “c” is 2, “m” is 1, and “R0” is an arylene group of 13 carbons (MDI).
It is prima facie obvious to substitute equivalents known in the art as suitable for the same purpose (see MPEP 2144.06). Therefore, it would have been obvious to one having ordinary skill in the art at the time of filing to incorporate the silane-modified isocyanate-coupled polyether of Timberlake in place of the modified polyether of Klerks, as Timberlake recognizes it as a suitable modified polyether suitable for the formation of a silyl adhesive composition.
Klerks further teaches the incorporation of light stabilizers (p. 8, lines 8-10), and teaches the particular use of oxanilides (p. 8, line 1), but differs from claim 1 because it is silent with regard to the incorporation of any particular oxanilide which overlaps the claimed structures.
In the same field of endeavor, Prasse teaches moisture-curable organosilicon compositions (Abstract) which are useful as adhesives ([0102]), which contains, among others, oxaldianilides ([0086] which are oxanilides), and teaches the preferable use of N,N'-diphenylethylenediamide ([0061]), among others, which reads on the claimed list. It is prima facie obvious to substitute known equivalents recognized in the art as suitable for the same purpose. See MPEP 2144.06. Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to incorporate N,N'-diphenylethylenediamide as the oxanilide within the formulation of Klerks as Prasse recognizes it as a suitable oxaldianiline for use within moisture-curable organosilicon adhesives.
Klerks teaches the incorporation of a hindered amine light stabilizer (p. 8, line 9), but differs from claim 1 because it is silent with regard to the incorporation of any particular light stabilizer which overlaps with the claimed structures.
In the same field of endeavor, Lacroix teaches a crosslinkable silane-containing polyolefin composition (Abstract) which is formulated with a hindered amine light stabilizer ([0090]), and teaches that, among others, 3-(2,2,6,6-tetramethyl-piperidin-4-yloxy)-propionic acid is a suitable hindered amine light stabilizer ([0102]), which reads on the claimed list. It is prima facie obvious to substitute known equivalents recognized in the art as suitable for the same purpose. See MPEP 2144.06. Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to incorporate 3-(2,2,6,6-tetramethyl-piperidin-4-yloxy)-propionic acid as the hindered amine light stabilizer within the formulation of Klerks, as Lacroix recognizes it as a hindered amine light stabilizer useful for polymer formulations.
Regarding claims 2 and 3, Klerks further teaches the that the aforementioned adhesion promoters may include inter alia 3-aminopropyltriethoxysilane (p. 4, lines 28-29) which reads on the claimed list of “adhesion promoter” ingredients and reads on the claimed “formula (XVI) because its structure is identical to the claimed “formula (XVI)” when n is zero, R37 are all methyl groups, R36 is a straight chain alkylene group of 3 carbons, and A3 is H2N-, and o is 1.
Regarding claim 4, Klerks teaches that the catalyst contains dibasic amines (p. 8, lines 24-25). Amines must, by definition, be primary, secondary, or tertiary. Therefore, the disclosure of dibasic amines by Klerks necessarily falls within the scope of the claimed “primary, secondary, or tertiary amines.”
Regarding claim 5, Klerks teaches that the catalyst contains titanate catalysts (p. 8, lines 24-25), but differs from claim 5 because it is silent with regard to the particular use of the claimed compounds. However, Prasse teaches a series of moisture-curing-promoting condensation catalysts which are titanium compounds ([0075]) including, among others, titanium (IV) bis(ethylacetoaceto)diisobutoxide, titanium (IV) bis(ethylacetoaceto) dimethoxide, titanium (IV) bis(ethylacetoaceto)diethoxide, and di-n-butyltin oxide ([0075]), all of which read on the claimed list. It is prima facie obvious to substitute equivalents known in the art as suitable for the same purpose (see MPEP 2144.06). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to use the catalysts taught by Prasse within the formulation of Klerks as Prasse teaches them as suitable for catalyzing moisture-curing.
Regarding claim 8, Klerks as modified by Prasse teaches the incorporation of N,N'-diphenylethylenediamide, which reads on the claimed list.
Regarding claim 9, Klerks as modified by Lacroix teaches the incorporation of 3-(2,2,6,6-tetramethyl-piperidin-4-yloxy)-propionic acid, which reads on the claimed list.
Regarding claim 10, Klerks teaches the incorporation of, among others, phenyltriethoxysilane (p. 14, line 6), which reads on the claimed list.
Regarding claim 11, Klerks teaches the incorporation of, among others, phenyltrimethoxysilane (p. 14, line 6).
Regarding claim 12, Klerks teaches the incorporation of, among others, 3-methacryloxypropyltrimethoxysilane (p. 6, lines 18-19).
Regarding claim 14, Prasse teaches that the oxaldianilides are included in amounts ranging from 0.5 to 10 parts per 100 parts of the main resin component ([0062]), which encompasses the claimed range of “about 0.5 to about 3 parts by weight,” establishing a prima facie case of obviousness.
Regarding claim 15, Lacroix teaches the incorporation of 0.01 to 2 weight percent of the sterically hindered amine light stabilizer alongside 90 to 99.95 weight percent of the main hydrolysable silyl group-containing polymer ([0031] and [0034]). Using weight percentage as a proxy for mass, the amount of hindered amine light stabilizer taught by Lacroix ranges from about 0.01 to about 2.22 parts per 100 parts of the hydrolysable silyl group-containing polymer, which encompasses the claimed range of “about 0.2 to about 1.5 parts,” establishing a prima facie case of obviousness.
Regarding claim 16, Klerks teaches the incorporation of between 0.3 and 15 wt% of the adhesion promoters (p. 7, lines 11-14),which reads on the claimed component “(b)(iii),” as described above, alongside a range of 25 to 75 wt% of the modified polyether (p. 3, lines 13-15). Using weight percentage as a proxy for mass, the amount of adhesion promoter taught by Klerks ranges from about 0.4 to 60 parts per 100 parts of the modified polyether, which encompasses the claimed range of “about 1.0 to about 5 parts,” establishing a prima facie case of obviousness.
Regarding claim 17, Klerks teaches the incorporation of between 0.3 and 15 wt% of the adhesion promoters (p. 7, lines 11-14),which reads on the claimed “adhesion promoter (c)” as described above, alongside a range of 25 to 75 wt% of the modified polyether (p. 3, lines 13-15). Using weight percentage as a proxy for mass, the amount of adhesion promoter taught by Klerks ranges from about 0.4 to 60 parts per 100 parts of the modified polyether, which encompasses the claimed range of “about 0.5 to about 5 parts,” establishing a prima facie case of obviousness.
The adhesion promoter taught by Klerks reads on both the claimed component “(b)(iii)” and the claimed “adhesion promoter (c)” because Klerks teaches the incorporation of more than one adhesion promoter (p. 12, line 7), and because Klerks teaches adhesion promoters which satisfy the limitations of each of the claimed components.
Regarding claim 18, , Klerks teaches the incorporation of between 0.05 and 5 wt% of the catalyst (p. 12, line 22),which reads on the claimed “curing catalyst (d)” as described above, alongside a range of 25 to 75 wt% of the modified polyether (p. 3, lines 13-15). Using weight percentage as a proxy for mass, the amount of catalyst taught by Klerks ranges from about 0.07 to about 20 parts per 100 parts of the modified polyether, which encompasses the claimed range of “about 0.1 to about 3 parts,” establishing a prima facie case of obviousness.
Regarding claim 19, Klerks as modified teaches all of the limitations of claim 1 as described above. Klerks differs from claim 19 because it is silent with regard to the claimed “non-yellowing value.” Nevertheless, Klerks as modified and applied above results in a moisture-curable adhesive composition which is structurally identical to the claimed “moisture-curable silylated polymer composition,” containing all of the same components. Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. The claimed “non-yellowing value” will therefore necessarily be present in Klerks as modified and as applied to claim 1, above.
Regarding claim 20, Klerks teaches that the composition is cured (p. 1, lines 5-6).
Regarding claim 21, Klerks teaches that the inventive composition is an adhesive (p.1, line 5), which reads on the claimed “sealant.”
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Klerks (WO 2016/202359) in view of Prasse (US 2010/0087576 A1) and Lacroix (US 2011/0259464 A1), and further in view of Ravichandran (US 2002/0115753 A1).
Regarding claim 6, Klerks as modified teaches all of the limitations of claim 1 as described above. Klerks teaches the incorporation of benzotriazole-based light stabilizers (p. 8, lines 8-10), but differs from claim 6 because it is silent with regard to the particular usage of compounds from the claimed list.
In the same field of endeavor, Ravichandran teaches the use of benzotriazole UV stabilizers which are useful additives for polymer compositions, especially organopolysiloxanes, which are stabilized by their presence ([0002]). Ravichandran teaches, among others, that 2-(2’-Hydroxyphenyl)-benzotriazole derivatives, including the 5’-(1,1,3,3-tetramethylbutyl)- derivative, are useful UV absorbers/light stabilizers ([0214]). The 5’-(1,1,3,3,-tetramethylbutyl)- derivative reads on “2-(2'-hydroxy-5'-(1,1,3,3-tetramethylbutyl)-phenyl)- benzotriazole” from the claimed list. It is prima facie obvious to substitute known equivalents recognized in the art as suitable for the same purpose. See MPEP 2144.06. Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to incorporate 2-(2'-hydroxy-5'-(1,1,3,3-tetramethylbutyl)-phenyl)- benzotriazole as the benzotriazole-based light stabilizer within Klerks, as Ravichandran recognizes it as a suitable benzotriazole UV stabilizer for polymer compositions.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Klerks (WO 2016/202359) in view of Prasse (US 2010/0087576 A1) and Lacroix (US 2011/0259464 A1), and further in view of BASF 213 (BASF Tinuvin 213 Technical Information Brochure).
Regarding claim 7, Klerks as modified teaches all of the limitations of claim 1 as described above. Klerks teaches the incorporation of benzotriazole-based light stabilizers (p. 8, lines 8-10), but differs from claim 7 because it is silent with regard to the particular usage of compounds from the claimed list.
Tinuvin 213 reads on poly(oxy-1,2-ethanediyl), α-(3-(3-(2H-benzotriazol-2-yl)-5-(1,1-dimethylethyl)-4-hydroxyphenyl)-1-oxopropyl)-ω- hydroxy and poly(oxy-1,2-ethanediyl), α-(3-(3-(2H-benzotriazol-2-yl)-5-(1,1- dimethylethyl)-4-hydroxyphenyl)-1-oxopropyl-ω-(3-(3-(2H-benzotriazol-2-yl-5-(1,1- dimethylethyl)-4-hydroxyphenyl)-1-oxopropoxy) from the claimed list because the instant specification states that these two molecules are sold under the trade name of Tinuvin 213 by BASF (see instant Specification at [0137]). Tinuvin 213 is a commercially-available product which is known in the art as a benzenetriazole-based light stabilizer (see BASF 213, page 1, which shows that Tinuvin 213 is a benzenetriazole-based UV light absorber suitable for a variety of polymers including adhesives). Furthermore, Klerks teaches that its inventive composition is useful as an adhesive (Abstract). It is prima facie obvious to substitute known equivalents recognized in the art as suitable for the same purpose. See MPEP 2144.06. Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to incorporate Tinuvin 213 as the benzenetriazole-based light stabilizer within the formulation of Klerks, as it is recognized as BASF 213 recognizes it as a suitable UV light stabilizer for adhesive polymers.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Klerks (WO 2016/202359) in view of Prasse (US 2010/0087576 A1) and Lacroix (US 2011/0259464 A1), and further in view of Laferte (WO 2019/115952 A1, hereinafter referring to US 2020/0317962 A1 as the English version).
Regarding claim 13, the claim is directed towards a genus of polymers, which include the polymer of the following structure:
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Examiner Re-created structure representing a valid structure falling under the purview of instant claim 13.
The structure presented above represents a species within the claimed genus wherein A is -O-, R1 is methyl, R2 is methyl, R3 is propylene, R4 is hydrogen, and R5 is the claimed structure wherein R6 is 1- or 2-methylethylene (propylene), m is 0 (and therefore R0 is unassigned), R7 and R8 are 1- or 2-methylethylene (propylene), b is 1, c is 2 (and therefore R8 and e are unassigned), and d is d (which is required to range between 20 and 400).
The structure presented above overlaps with the structure of GENIOSIL STP-E10 (presented above in the rejection of claim 1) because they both include a polypropylene oxide polyether main-chain portion which appears to have been endcapped with an isocyanate-containing silane. This analysis comports with the preferred preparation methods cited in the instant Specification, which states that the polymers may be formed by reacting a hydroxyl-containing poly(oxyalkylene) polymer with an isocyanate-containing silane bearing 2-3 alkoxy groups (c.f. instant Specification at [0040]). The two structures differ, however, in the identity of the isocyanate-containing silane endcapping agent which has been applied. In the case of GENIOSIL STP-E10, the endcapping agent is (isocyanatomethyl)dimethoxy(methyl)silane (also known as “CFS-S898”) whereas the re-created structure above contains 1-isocyanato-3-trimethoxysilyl propane as the endcapping agent.
Klerks teaches a composition which includes silane-modified polyethers comprising silane moieties coupled to polyether backbones (p. 3, lines 5-6), and teaches the preferable incorporation of GENIOSIL STP-E10, and further teaches the formation of moisture curable polyurethanes from isocyanates and polyols such as polyether polyols (p. 1, lines 19-21). Therefore, Klerks contemplates similar chemical reactivities (alcohol + isocyanate = urethane), and teaches a particularly preferred inventive polymer which may be formed from a substantially similar processes as the one contemplated by the instant specification. Klerks further teaches the incorporation of 3-(isocyanatopropyl)-trimethoxysilane as an adhesion promoter (p. 6, line 34), but differs from claim 13 because it is silent with regard to the particular incorporation of a polymer which meets all of the claimed limitations.
In the same field of endeavor, Laferte teaches a multicomponent adhesive composition comprising at least one silyl polymer comprising at least one hydrolysable alkoxysilane group (abstract) particularly including GENIOSIL STP-E10 as a suitable polymer ([0068]-[0069]). Laferte further teaches the incorporation of DESMOSEAL S XP 2636, produced by Bayer ([0073]), which has a substantially similar structure as the re-created structure presented above, differing perhaps in the number of polypropylene oxide repeat units, but nonetheless falling within the claimed range of “d.” Laferte also teaches that the inventive composition is moisture curable ([0410]), and therefore recognizes GENIOSIL STP-E10 and DESMOSEAL S XP 2636 as suitable equivalents for the purpose of forming adhesives based on silyl-modified polyethers.
It is prima facie obvious to substitute equivalents known in the art as suitable for the same purpose. See MPEP 2144.06. Therefore, it would have been obvious to one of ordinary skill in the art at the time of tiling to incorporate DESMOSEAL S XP 2636 as the silane-modified polyether within the formulation of Klerks as taught by Laferte, as Laferte recognizes it as a suitable silylated polyether for the formation of moisture-curable adhesives.
Response to Arguments
Applicant has previously amended the claims to remove the value of 0 from the claimed variable “m” in claim 13. Accordingly, the 35 U.S.C. 112(b) rejection of claim 13 has been withdrawn.
Applicant's remaining arguments have been fully considered but they are not persuasive.
Applicant argues that the Examiner has failed to explain why any of the cited prior art provides a reason for modifying the disclosure of Klerks with features of the secondary references. Applicant asserts that the rejection above (and previously) relies on close structural similarity. However, the concept of close structural similarity is not invoked in the rejection above. Instead, the Examiner has relied on the rationale that art-recognized equivalence for the same purpose renders a combination prima facie obvious (see MPEP 2144.06). Applicant appears to repeatedly assert that no reason for combining the references has been supplied; however, a person having ordinary skill in the art would have been motivated to combine the prior art references based on art-recognized equivalence as stated at page 6 of the last Office action.
Applicant refers to the improvement contemplated by the instant application, which includes enhanced anti-yellowing. However, as stated previously, the motivation or reason to combine the prior art references need not be the same as that of the Applicant’s. The reason to or motivation to modify the reference may often suggest what is claimed, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by the Applicant. See MPEP 2144(IV).
Applicant asserts that the Examiner has used impermissible hindsight in reconstructing the claimed invention from the prior art. In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Applicant’s next arguments pertain to the incorporation of secondary reference Timberlake in the prior art rejections. Applicant argues that Timberlake teaches a different polymer than the claimed polymer, but does so on the grounds that Timberlake synthesizes the polymer from a different process (i.e., Applicant states “in Timberlake, the polymer back bone is first built as an allyl-terminated coupled polyether, and the terminal alkoxysilane functionality is introduced only later….”) (emphasis added). However, the Examiner has explained in the rejection applied above (and previously) that the product of Timberlake reads on the claimed structure because it is identical thereto. All aspects of the claimed “alkoxysilyl-containing polymer” have been mapped to their respectively claimed variables and structures (see rejection of claim 1, above). The claims do not require that the claimed alkoxysilyl-containing polyether is formed by a particular process, and the applicant has not shown how or why the polyether of Timberlake does not meet the claimed structural characteristics.
Furthermore, the Applicant asserts that “it would be improper to equate any simple ‘silane terminated’ compound with the claimed compound;” however, the Examiner has not generically equated any two polymers – instead, the Examiner has shown how the particular teachings of Timberlake includes the claimed polyether and how it would have been obvious to one of ordinary skill in the art at the time of filing to incorporate the same into the teachings of the primary reference. As stated above, the teachings of Timberlake include a structure which specifically falls within the claimed range – therefore, the Examiner’s rejections do not constitute merely equating simple structures with those as claimed.
Applicant reiterates the assertion that Timberlake fails to teach the claimed compound containing claimed formulae (I)-(II); however, as described above, Timberlake teaches a product which has the same structure. Applicant asserts that Timberlake does not teach the claimed “R5 formula (II) segment,” however Timberlake does teach a product falling within the claimed structure (see rejection of claim 1, where the entirety of the claimed chemical structure is mapped from within Timberlake).
Applicant asserts that Timberlake does not contemplate the benefit of reduced yellowing when “m” equals 1, however as described above, this is not necessary for establishing prima facie obviousness.
Applicant asserts that Timberlake does not teach the claimed polymer. In response a portion of the rejection above, which specifically points out where Timberlake teaches each of the claimed variables, is reiterated for convenience:
“The resulting silylated polymer reads on the claimed “alkoxysilyl-containing polymer” because it is identical to the claimed formulae wherein “A” is -O-, “R1” is methyl or ethyl, “R2” is methyl or ethyl, “R3” is a propyl group, “b” is zero, and “R5 is identical to the claimed “general formula (II)” wherein “R6-7” are all propyl groups, “c” is 2, “m” is 1, and “R0” is an arylene group of 13 carbons (MDI).” (within the rejection of claim 1, above).
Applicant argues against the Examiner’s rebuttal of unexpected results, stating “Applicant’s evidence shows that the tested embodiments are aligned with the claimed stabilizer architecture and problem solved;” however, while the experimental data may align with the claimed composition, the results are not commensurate with the scope of the claims as described in previous office actions. Applicant further states “Nevertheless, if the Examiner maintains his commensurability objection, the examiner should accept at least a focused amendment that narrows towards the tested stabilizer species, tested polymer architecture, or tested amount ranges,” but does not supply an amendment that narrows the claim scope. The Examiner will evaluate a narrowed version of the claim according to examination procedure if received.
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 JOSHUA CALEB BLEDSOE whose telephone number is (703)756-5376. The examiner can normally be reached Monday-Friday 8:00 a.m. - 5:00 p.m. EST.
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/JOSHUA CALEB BLEDSOE/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
Prosecution Insights