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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Status of Claims
The examiner acknowledges the amendment to claim 9 as well as the cancellation of claims 20 and 22. Claims 15, 8-15, 17-19, and 21 are pending with claims 1-5, 8, 12-15, and 21 withdrawn. Claims 9-11 and 17-19 will be examined.
Claim Objections
The applicant has amended claim 9. As a result, the objection to claim 9 has been withdrawn.
Claim Rejections - 35 USC § 112
The applicant has amended claim 9. As a result, the 112(b) rejection of claim 9 has been withdrawn.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 9-11 and 17-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Knudson (Journal of Polymer Science Part A: Polymer Chemistry (2013) volume 51, pages 2472-2482, Reference A15 from IDS dated 10/5/2022).
Regarding Claims 9-11,
Knudson teaches a polymer containing a host group made in the following manner:
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wherein the polymer contains two host cyclodextrin groups and where n=1 or 6-37 (Scheme 1, CD-Disiloxane and CD-PDMS examples, Page 2474) and where the linker group is a three carbon chain connected to a nitrogen which is substituted with an acetyl group, meeting the requirements of the instant claims and also teaches a polymer containing an adamantyl guest molecule:
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where n=1 or 6-37 (Figure 1, Ad-disiloxane and Ad-PDMS examples, page 2473) with both examples containing two adamantyl guest groups and where the linker group consists of a two carbon chain connected to an amide group that is connected to an adamantyl group, meeting the requirements of the instant claims.
Regarding Claims 17-18,
Knudsen teaches in the examples where all R groups are methyl (Figure 1 and Scheme 1), meeting the requirements of the instant claims. Because the host group and guest group are found on separate polymers, the host group (cyclodextrin) containing polymer contains no guest groups and thus k=0.
Regarding Claim 19,
Knudsen teaches that all the substituents are methyl groups as addressed above in regard to claims 17-18. As R6 is attached to a monomer unit where the number of units is allowed to equal 0, this represents an optional component and as such, Knudsen teaches this polymer where i=0, meeting the requirements of the instant 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 and 17-19 are rejected under 35 U.S.C. 103 as being unpatentable over Ochs (US 20060009592).
Regarding Claims 9-11,
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.
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 heteroatoms (Paragraphs 10-11) with examples of R including n-propyl (Paragraph 26). Ochs also teaches that nitrogens 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.
Regarding the overall structure as it relates to claims 10 and 11, as both the host and guest can be contained in the same polymer (or omitted), these polymers would meet the requirements of the instant claims.
Regarding Claim 17,
Ochs teaches that the alkyl groups can be methyl groups (Paragraph 26) and demonstrates in the examples (1-31) the use of only methyl groups for this group.
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.
Response to Arguments
Applicant's arguments filed 4/27/2026 have been fully considered but they are not persuasive for the following reasons.
On page 11, the applicant argues that the examples of Ochs do not teach the required structures. The examiner is bound by the totality of the teachings of the prior art, which is not limited only to the examples. As such, because Ochs teaches that the linking group may be of a type that meets the requirements of the applicant’s claims, as stated in the rejection, it is not necessary that the examples provided demonstrate this feature.
Also on page 11, the applicant argues that Ochs does not intend for groups on the polymer containing the cyclodextrin to be used to surround alkyl groups on the polymer and instead is directed towards containing fragrance chemicals. While the examiner agrees that Ochs intends for the cyclodextrin to contain an exogenous molecule, this does not preclude the cyclodextrin from interacting with any other group. Similarly, while Ochs does not intend for the alkyl group to interact with the cyclodextrin, this again does not preclude such an interaction. The interactions from these two groups is a feature of cyclodextrins interacting and enveloping molecules that are typically more hydrophobic (Ochs Paragraph 3), which would occur regardless of the intent of the artisan.
On page 12, the applicant argues that there would be no motivation to have modified the R group to meet the applicant’s requirements. However, the examiner points out that because the structures required by the applicant fall within the teachings of Ochs, this would represent sufficient motivation.
Also on page 12, the applicant argues that there is not motivation to alter the linking group for the cyclodextrin. As noted with the R group, Ochs teaches that the linking group connecting the cyclodextrin to the polymer can be a divalent alkyl group, which meets the applicant’s requirements. Further, Ochs also teaches the use of amino-functionalized cyclodextrins as a means for incorporation (Paragraph 139). As this puts the nitrogen as part of the cyclodextrin, the combination of these two teachings allows for the structure required by the instant claims.
Finally, on page 13 the applicant argues that the teachings relied upon by the examiner are for the R group generally and that the ordinarily skilled artisan would not have arrived at the compound of the instant claims. The examiner points out that the R groups may be different for each monomer as taught by Ochs (Paragraph 11) and because Ochs teaches R groups that can contain carboxyl functionality and their derivatives (Paragraph 27) as noted in the above rejection, Ochs teaches that combinations that encompass those of the instant claims.
In the alternative, based upon the applicant’s amendments, a 102(a)(1) rejection has been added based upon the teachings of Knudsen, which was previously supplied by the applicant.
Conclusion
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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