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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/3/2025 has been entered.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Status of Claims
Claims 1-5, 8-15, and 17-22 are pending with claims 1-5, 8, 12-15, and 21 withdrawn. Claims 9-11, 17-20, and 22 will be examined.
Claim Objections
Claim 9 is objected to because of the following informalities: Claim 9 states that "R. The conjunction or is typically used prior to the final item in a list. Appropriate correction is required.
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.
Claim 9 is 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 9 recites the limitation "a ho" and then “wherein, at least one of the polymer compound having the host group and the polymer compound having the guest group, or the polymer compound having the host group and the guest group”. There is insufficient antecedent basis for this limitation in the claim.
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 9-11, 17-20, and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Ochs (US 20060009592).
Regarding Claims 9 and 22,
Ochs teaches a siloxane polymer in which the substituents on the silicon can be substituted or unsubstituted hydrocarbyl radicals that may or may not contain oxygen or nitrogen atoms (Paragraph 11), examples of which include alkyl groups such as methyl, ethyl, etc. as well as alkenyl and aryl (Paragraph 26), in which the substituents listed represent the groups R1 through R6 as well as X2. Ochs also teaches the use of groups connecting the Ry group (X1 of the instant claim) as substituted or unsubstituted hydrocarbyl radicals which may be interrupted by oxygen, mercapto, amine, carbonyl and carboxyl groups (Paragraph 10). Additionally, Ochs teaches that the values of each of the monomers may be an integer of 0 or greater, with the number corresponding to the guest containing monomer being between 0 and 10 with the same values for the monomer containing the host, meeting the requirements as well as the ranges of the instant claim. Ochs also teaches that the RY group is a cyclodextrin (Paragraphs 9-10) in which the cyclodextrin may be any previously known cyclodextrin or cyclodextrin derivative (Paragraph 34) with the general structure:
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where w can equal 5, 6, or 7, which corresponds to alpha, beta and gamma cyclodextrins respectively (Paragraph 34). Additionally, Ochs teaches that the R group (equivalent to RZ of the instant claim) can be alkyl groups that are unsubstituted and can include n-propyl, hexyl, octyl, nonyl, and dodecyl groups amongst others (Paragraph 26). While Ochs does not disclose a structure in the examples that meets these requirements, because Ochs discloses all of the elements separately it would have been obvious prior to the effective filing date of the instant application to have combined them to reach the structure of the instant claims.
Finally, regarding the material being in a film shape or membrane shape, Ochs teaches that the composition is useful for any purpose in which a siloxane elastomer would be used (Paragraph 274) and more particularly that it is useful for finishing textiles such as fibers and leather (Paragraph 275) and that this finishing involves spraying onto or dipping the article into solutions of the composition (Paragraph 278). Combined, these teachings read upon a coating, which would meet the requirements of being film shaped.
Regarding Claims 10 and 11,
Ochs teaches the following structures which meet the requirements of the instant claims wherein both the host and guest group are attached to siloxane polymers of the general formula from claim 9 (Examples 7, 8, and 12):
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While the guest groups in the above structures differ from those of the instant claims, Ochs allows for the guest groups to be of the required type as discussed above in regard to claim 9.
Regarding Claim 17,
Ochs teaches several structures in which the host group is a cyclodextrin and in which the equivalents to R1-R5 are methyl groups, including the following (Examples 7 and 10):
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Regarding Claims 18 and 19,
Ochs teaches a variety of monomers, wherein each monomer has the following form:
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In this notation, A contains a cyclodextrin, R is an alkyl group, X is a hydroxyl or alkoxy group, and H is a hydrogen. All substituents are allowed to equal zero and the R groups are allowed to be the same or different (Paragraphs 10-17). Both methyl and pentyl groups are listed as examples of R (Paragraph 26). As such, it is possible to combine a siloxane unit with a cyclodextrin containing substituent (A equal to 1) along with a R equal to methyl, with a siloxane unit bearing two methyl groups (R1 and R5 in the notation of the instant claims), and a siloxane unit with one methyl (R2) and one pentyl (R6). A compound of this type would meet the requirements of both instant claims.
Regarding Claim 20,
Ochs teaches the group R2 (equivalent to the X1 component) which attaches the host group (cyclodextrin) to the polymer backbone, wherein the R2 group is a hydrocarbyl radical that can be interrupted by nitrogen atoms (Paragraphs 10-11) with examples of R including n-propyl (Paragraph 26). Ochs also teaches that the nitrogen may be substituted or unsubstituted (Paragraph 37). However, while Ochs teaches that the nitrogen can be substituted, Ochs does not specifically teach that the substituent is an acetyl group. However Ochs does demonstrate the acetyl groups can be used to cap the hydroxyl groups of the cyclodextrin (Paragraph 36), demonstrating that such a group can be used in the overall structure. One of ordinary skill in the art would recognize that the acetyl group is being used to remove the reactive hydroxyl functionality from the cyclodextrin and that acetyl groups are commonly used in the art on nitrogen atoms to remove the reactive N-H bond. Through this knowledge, the ordinarily skilled artisan would no doubt also recognize that because the acetyl group can be used elsewhere in the polymer to remove reactive functionality that it could also be used on a nitrogen for the same purpose with a reasonable likelihood of success. Thus, it would have been obvious to have used an acetyl group as the substituent on the nitrogen as required by the instant claim.
With regard to the X2 linking group, Ochs teaches that carboxyl-functional radicals, including their derivatives, which would include esters and amides, are allowed to be R substituents (Paragraph 27). Ochs also teaches that these R substituents preferably have 1 to 11 carbons (Paragraph 28), a range that is encompassed by the range of the instant claim.
With regard to the values of j (monomers containing the host group) and k (monomers containing the guest group), Ochs teaches that such monomers may be incorporated in a range between 0 and 10 (Paragraph 44), meeting the requirements of the instant claim.
Response to Arguments
Applicant's arguments filed 11/3/2025 have been fully considered but they are not persuasive for the following reasons. On pages 10 and 11, the applicant states that Ochs does not teach or suggest that the material is film shaped. However, as noted in the rejection above, Ochs teaches the composition for use in coating textiles particularly, which based upon a dip or spray coating method would result in a coating onto the textile, which reads upon a film and therefore meets the requirements of the instant claim.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Mitra (WO 2020139404) teaches siloxane polymers which may contain long chain alkyl groups and which use cyclodextrins for use in encapsulating components.
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/A.J.B./Examiner, Art Unit 1765
/HEIDI R KELLEY/Supervisory Patent Examiner, Art Unit 1765