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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 02/13/2026 has been entered.
Claim Rejections - 35 USC § 103
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-4, 8, 11 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Hostettler et al. US 2,962,524.
Regarding claim 1-3 and 8, Hostettler teaches oxyalkylene-carboxyalkylene based polymers (title). Hostettler discloses that diamines which have reactive hydrogens capable of opening a lactone ring or an epoxide ring can be utilized for the preparation of substantially linear oxyalkylene-carboxyalkylene (col 2, lines 33-35 and 45).
Hostettler (col 3, line 75) provides oxyalkylene-carboxyalkylene polymer structure V, as shown below:
PNG
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137
390
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Greyscale
Where m is at least one, x =0.5 to 6.5, y = 1 to 50, z is at least 2, R’’ can be alkyl (CH2)n, with n =2 to 10, and Y can be -NH-, and where L is derived from a lactone and E is derived from an epoxide (see col 2, lines 40-43, col 3, lines 1-4; col 4, lines 15-20). Hostettler notes that the lactone can be a butyrolactone and the epoxide ethylene oxide (Claims 5 and 6).
Hostettler highlights that numerous modifications will readily become apparent to those skilled in the art upon reading the description (col 21, lines 18-20). A practitioner skilled in the art would arrive at an obvious embodiment of Hostettler where R’’ is an ethylene group corresponding to n=2; Y is -NH-, m is 1, x is 5, y= 1 and z =2, where L is C3 alkylene derived from a butyrolactone and E is C2 alkylene derived from ethylene oxide. Such a composition complies with the claimed alkoxylated polyamine where y=z=0, R is C2 alkylene radical, and where 100% of E2 and E4 correspond to structure IIa, where R1 is C2 alkylene, R2 is hydrogen, R3 is C3 alkylene, m=1, and n=5, and where E3 and E5 are hydrogen atoms.
Regarding claim 4, as discussed when addressing claim 1, obvious alkoxylated polyamine of Hostettler derived from ethylene diamine (with R’’ as ethylene group) with molecular weight of 60.1 g/mol, makes the claimed requirement obvious.
Regarding claim 11, Hostettler discloses that R’’ can be selected to be cycloaliphatic diamines such as 1,4-cyclohexanediamine (col 3, line 14-15). In obvious embodiment of Hostettler, as discussed when addressing claim 1, where R’’ is selected to be 1,4-cylcohexanediamine, meets the claimed requirements.
Regarding claim 19, Hostettler discloses that R’’ can be selected to be cycloaliphatic diamines such as 4,4'-methylenebiscyclohexylamine (col 3, line 14-15). In obvious embodiment of Hostettler, as discussed when addressing claim 1, where R’’ is selected to be 4,4'-methylenebiscyclohexylamine, meets the claimed requirements.
Claim(s) 12 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Hostettler as applied to claim 1 above, and in view of Ebert et al. US2016/0222160.
Regarding claims 12 and 20, Hostettler is silent on the quaternization of nitrogen atoms present in the alkoxylated polyamine structure, however highlights that numerous modifications will readily become apparent to those skilled in the art upon reading the description (col 21, lines 18-20). A practitioner skilled in the art would look to analogous art such as Ebert who also teaches alkoxylated polyamines (abstract and para [0011]) for making possible modifications to the oxyalkylene-carboxyalkylene based polymers. Ebert recommends 10 to 95% of quaternization of N atom by the use of alkyl halides or dialkyl sulfates (para [0071]), in order to achieve better compatibility and phase stability of the alkoxylated polyamine formulations (para [0072]).
It would have been obvious to one of ordinary skilled in the art before the effective filing date of the invention to have quaternized the nitrogen atom of Hostettler’s alkoxylated polyamine with the alkyl groups as taught by Ebert for the same application of creating formulations with improved phase stability.
Allowable Subject Matter
Claims 5-7 and 9-10 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.
While Hostettler teaches that oxyalkylene-carboxyalkylene polymer can be derived from polyamines such as diethylenetriamine or triethylenetetramine etc. (Col 3, line 33) such that y>0. Hosteller does not address the required amounts and E1 structure which corresponds to IIb, when y>0.
Thus, the limitations of claims 5-7 and 9-10 are distinguishing features over the prior art Hostettler.
Response to Arguments
Applicant's arguments filed 02/13/2026 have been fully considered. Please see the response below.
Rejection of claims 1-7 had been predicated on the combined teachings of Hilfiger and Cleary being encompassing of polymers correlated with those claimed for which "y"=0 but, upon reconsideration, it is recognized that a person of ordinary skill practicing the invention gleaned from the combined teachings of these disclosures would not have used a polyalkyleneimine devoid of linear repeat units since Clearly had actually stipulated that there be at least 4 (4-200) of each of the linear- and branched units. The rejection of claims 1-7 over Hilfiger, Cleary and Hostettler is withdrawn.
Since the reference Hilfiger is not utilized for the above rejection, applicant’s arguments against Hilfiger are moot and therefore not addressed.
In Remarks section III. Rejections under 35 U.S.C. §103., Applicant had highlighted that inventive Examples 13 should not be compared to Example 32 due to differences in the amounts of caprolactone and EO. Applicant had advocated that inventive Examples 1, 3 and 4 better represent the invention due to their improved biodegradability data and should be the focus of discussion moving forward. Instant Examples 13 and 32 are removed from further discussion.
Lastly, applicant notes in the last para of the remarks that improvements in biodegradation were not taught or suggested by Hostettler. In response it is noted that Hostettler render the claimed copolymer structure obvious, and the structure includes lactone, alkylene oxide moieties, amide and ester bonds. Due to close chemical makeup of Hostettler’s obvious diamine based oxyalkylene-carboxyalkylene polymer composition and that of instant inventive examples 1, 3 and 4, similar biodegradation behavior would be expected. Applicant is reminded that: "[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
The rejection of Claims 1-4, 8, 11 and 19 are maintained over Hostettler and that of claims 12 and 20 are maintained over Hostettler in view of Ebert.
Conclusion
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/S.M.D./
Examiner
Art Unit 1765
/MARC S ZIMMER/Primary Patent Examiner, Art Unit 1765