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 .
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.
Information Disclosure Statement
The information disclosure statement filed 2/23/2023 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed.
Regarding the cited reference to Chen et al, published in Journal of the American Chemical Society vol. 143(1): Applicant provided a copy of the supporting information; however, a copy of the cited journal article was not provided as required.
The information disclosure statement has been placed in the application file, but the information referred to therein has not been considered with respect to this reference.
Claim Objections
Applicant is advised that should claim 33 be found allowable, claim 35 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Claim 33 depends from claim 32, and states that variable W1 is -O- or -NH-. Similarly, claim 35 depends from claim 32 and states that variable W2 is -O- or -NH-. As written, claims 33 and 35 recite the same structure viewed from different angles.
The invention of claim 32 is a crosslinked polymer wherein a first and second oxidized polyisobutene of claim 27 are covalently bonded to one another via a linkage having the structure shown below.
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Substituting the limitations of claim 33 into this structure therefore corresponds to a structure wherein the top variable in the linking group is -O- or -NH-, and the middle and bottom variables can be any of the species recited for variables L100 and W2 in claim 32. Flipping the structure depicted in claim 32 results in the following.
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Substituting the limitations of claim 35 into this structure therefore corresponds to a structure wherein the top variable in the linking group is -O- or -NH-, and the middle and bottom variables can be any of the species recited for variables L100 and W1 in claim 32. Note, however, that the definitions for variables W1 and W2 recited in claim 32 are identical. The only difference between the structures of claims 33 and 35 therefore is that the image has been flipped-the actual chemical structure is the same. The claims therefore recite the same invention.
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.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 1, 4, 5, 7, 10, 11, 13, 17, 18, 20, 21, 24, 25, 27, 30, 32, 33, 35, 37, and 40 are 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.
Regarding claims 1, 4, 5, 7, 10, and 11: Independent claim 1 recites a method of making an oxidized polyisobutene, wherein said oxidized polyisobutene comprises first oxidized subunits and non-oxidized subunits in a ratio of 1:10,000 to 1:5. As currently written, the claim does not specify the basis for this ratio (i.e., weight ratio, molar ratio, etc.). The scope of the claim is therefore unclear.
Claim 1 recites the limitation "non-oxidized subunit" in line 8. There is insufficient antecedent basis for this limitation in the claim. Note that the claim recites an oxidized polyisobutene and a polyisobutene, both of which are stated to comprise a non-oxidized subunit. As currently written, it is unclear whether the limitation “the non-oxidized subunit has the formula” is intended to refer back to the non-oxidized subunit of only one of the recited polymers (and if so, which one) or if it is intended to further limit both.
Claims 4, 5, 7, 10, and 11 depend from claim 1 and do not correct these deficiencies. The claims are therefore indefinite per the same rationale as claim 1.
Regarding claims 13, 17, 18, 20, 21, 24, and 25: Independent claim 13 recites the phrase “[A]n oxidized polyisobutene in a vessel comprising …”; the scope of this limitation is indefinite as it is unclear whether the “comprising” phrase is intended to describe the oxidized polyisobutene or the vessel. It is therefore unclear whether the claim is intended to require that the vessel comprises an oxidized polyisobutene and one or more of the recited additional compounds, or if the claimed invention is intended to require the oxidized polyisobutene to comprise the listed compounds. If the latter is intended, it is suggested that applicant amend the claim to replace the word “comprising” in line 1 with the phrase “, wherein the oxidized polyisobutene comprises”.
Claim 13 recites the limitation of an oxidized polyisobutene, wherein said oxidized polyisobutene comprises first oxidized subunits and non-oxidized subunits in a ratio of 1:10,000 to 1:5. As currently written, the claim does not specify the basis for this ratio (i.e., weight ratio, molar ratio, etc.). The scope of the claim is therefore unclear.
Claim 1 recites the limitation "non-oxidized subunit" in line 8. There is insufficient antecedent basis for this limitation in the claim. Note that the claim recites an oxidized polyisobutene, a polyisobutene, and a hydroxylated polyisobutene all of which are stated to comprise a non-oxidized subunit. As currently written, it is unclear whether the limitation “the non-oxidized subunit has the formula” is intended to refer back to the non-oxidized subunit of only one of the recited polymers (and if so, which one) or if it is intended to further limit all of them.
Claims 17, 18, 20, 21, 24, and 25 depend from claim 1 and do not correct this deficiency. The claims are therefore indefinite per the same rationale as claim 13.
Regarding claims 27, 30, 32, 33, 35, 37, and 40 : Independent claim 27 recites an oxidized polyisobutene, wherein said oxidized polyisobutene comprises first oxidized subunits and non-oxidized subunits in a ratio of 1:10,000 to 1:5. As currently written, the claim does not specify the basis for this ratio (i.e., weight ratio, molar ratio, etc.). The scope of the claim is therefore unclear.
Claims 30, 32, 33, 35, 37, and 40 depend from claim 27 and do not correct this deficiency. The claims are therefore indefinite per the same rationale as claim 27.
Claim 37 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 37 depends from claim 32, and states that R101 and R103 may be a substituted or unsubstituted heteroalkylene group. Note that parent claim 32 does not recite substituted or unsubstituted heteroalkylene as species included in the definition of variables R101 and R103. Claim 37 therefore does not include the limitation that variables R101 and R103 are required to be chosen from the list of species recited in parent claim 32. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claim(s) 13, 17, 18, 20, and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Davis et al, US2461966.
Davis discloses the production of an oxidized polyisobutylene (i.e., oxidized polyisobutene) (for claims 13, 27) (title) having a molecular weight of 225000 or more (Column 3, lines 14-18), overlapping the claimed range (for claims 13, 27). Davis teaches that the oxygen is introduced is largely introduced in the form of carbonyl groups (Column 4: lines 4-8); note that this corresponds to the claimed first oxidized subunit (for claims 13, 27). The prior art oxidized polyisobutylene is made by combining polyisobutylene and an oxidizing agent in a reactor (i.e., a vessel) (for claim 13) ((Column 2: lines 3-12). The product of the prior art reaction will therefore comprise oxidized polyisobutene and oxidizing agent (for claims 13, 20). The prior art process does not require a reducing agent (for claim 20).
Regarding claims 17, 18: The instant claims depend from claim 13 and recite additional limitations regarding the metal catalyst. Note, however, that the claims do not contain any language requiring the metal catalyst to be present. The prior art therefore corresponds to the claimed invention wherein the one or more additional compound is the oxidizing agent.
Davis is silent regarding the production of an oxidized polyisobutene having a ratio of oxidized subunit to non-oxidized subunit in the range of 1:10,000 to 1:5 and molecular weight in the range of 250 to 20,000,000 DA.
Regarding the molecular weight: It has been held that in the case where the claimed ranges overlap or lie inside ranges disclosed in the prior art, a prima facie case of obviousness exists; see In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages; see In re Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 ((MPEP § 2144.05). The prior art range overlaps the claimed range. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to prepare an oxidized polyisobutene having the required molecular weight in view of the teachings of Davis (for claims 13, 27).
Regarding the claimed ratio: As noted above, Davis teaches that the prior art oxidation process results in the introduction of oxygen in the form of ketone groups, corresponding to the claimed first oxidized subunit. Further note that Davis teaches that the degree of oxidation was known to affect the solubility of the polymer in solvents (Column 2: lines 17-23). The degree of oxidation was therefore known in the art to be a result effective variable. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to one of ordinary skill in the art to vary the degree of oxidation-which in turn corresponds to the ratio of oxidized subunits to non-oxidized subunits-through routine experimentation in order to optimize the final polymer’s solubility (for claim 27).
Claims 1, 4, 5, and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Davis et al, US2461966, as applied to claim 20 above, and further in view Boaen et al, US2004/0249086.
As discussed earlier in this Action, Davis discloses the production of an oxidized polyisobutylene having a molecular weight of 225000 or more, overlapping the claimed range (for claim 1), by reacting polyisobutylene (for claim 1) with an oxidizing agent (for claim 1) (Column 2: lines 3-12).
Davis is silent regarding the use of a metal catalyst.
Boaen discloses a process of oxyfunctionalization of polyolefins (title), wherein said process comprises the step of contacting a polyolefin with a metal porphyrin catalyst (for claim 1) and an oxygen source (¶0003) such as a peroxide (¶0010), corresponding to the claimed oxidizing agent (for claims 1, 7). Said metal catalyst has the structure shown below (¶0007-0008).
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In the structure above, M may be iron (for claim 4), n and m may both be 0, and X is a halide. Note that the genus “halide” is sufficiently small that an ordinary artisan will at once envisage the use of chloride at variable X in the structure above (MPEP 2131.02(III)); the prior art catalyst therefore corresponds to the claimed iron-based catalyst (for claims 4, 5). Boaen teaches that the prior art process can be used to introduce oxygen functional groups such as ketones into a polyolefin without substantially affecting the polymer’s polydispersity (¶0014).
Davis and Boaen both disclose processes of introducing ketone functional groups into olefin polymers. Barring a showing of evidence demonstrating unexpected results, it would have been obvious to one of ordinary skill in the art to modify the process of Davis by performing the oxidation of the polyisobutene using the catalyst system of Boaen, in order to introduce the desired functional groups while maintaining the polymer’s polydispersity as taught by Boaen.
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Davis et al, US2461966, as applied to claim 13 above, and further in view Welch, US2674586.
As discussed earlier in this Action, Davis discloses the production of an oxidized polyisobutylene by reacting polyisobutylene with an oxidizing agent (Column 2: lines 3-12).
Davis is silent regarding the use of a peroxide or substituted pyridine N-oxide.
Welch discloses the production of oxidized isobutene polymers. As taught by Welch, oxygen-liberating compounds such as benzoyl peroxide were known in the art as oxidizing agents for such processes (Column 4, lines 7-11).
As noted above, the process of Davis is performed by contacting polyisobutylene with an oxidizing agent. As taught by Welch, compounds such as benzoyl peroxide were known in the art as oxidizing agents that could be used for the oxidation of isobutylene polymers. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to one of ordinary skill in the art to modify the process of Davis by substituting benzoyl peroxide for the oxidizing agent, with the reasonable expectation of obtaining an oxidized polyisobutylene as the final product (for claim 21).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEFFREY S LENIHAN whose telephone number is (571)270-5452. The examiner can normally be reached Mon.-Fri. 5:30-2:00PM.
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/JEFFREY S LENIHAN/Examiner, Art Unit 1765