-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 .
Applicant's response dated January 26, 2026 is acknowledged.
Priority
This application is a 371 of PCT/JP2021/0l 7868 filed on 05/11/2021, and claims foreign
priority in Japanese application JP2020-089623 filed on 05/22/2020.
Claim Status
Claims 1-5 are pending. Claims 3-5 are withdrawn. Claim 1 was amended. Claims 1 and 2 are examined.
Withdrawn Claim Rejections - 35 USC§ 112
Rejections of claims 1 and 2 are withdrawn because rejections were obviated with claim amendments.
Withdrawn Claim Rejections – 35 USC § 103
Rejections of claims 1 and 2 over Steffen (US 2004/0209973 Al Published October 21, 2004) are withdrawn because claim 1 was amended by narrowing the scope of the variable B, which is no longer obvious over Steffen.
Withdrawn Double Patenting Rejections
Rejections of claims 1 and 2 are withdrawn because applicant filed a terminal disclaimer on January 26, 2026, which was approved on February 22, 2026.
Terminal Disclaimer
The terminal disclaimer filed on January 26, 2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of any patent granted on application 17/923,146 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Maintained Claim Rejection - 35 USC§ 103
Modified as Necessitated by Amendment
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 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 and 2 are rejected under 35 U.S.C. 103 as being unpatentable over Hata (U.S.
Patent No. 10,851,194 B2, Filed on February 7, 2019, Foreign Application Priority Data
February 9, 2018).
The claims encompass an emulsifier comprised of a diblock copolymer.
The teachings of Hata are related to a methacrylic silicone graft copolymer (Abstract). In
one embodiment, the copolymer comprises repeating units of formula I and II, and a structure of
formula III at one terminal and a structure of formula IV at the other terminal
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(column 3 lines 15-63).
The variable A is a group having a linear organopolysiloxane structure represented by the
following formula (1) or a group having a dendritic organopolysiloxane structure represented by
the following formula (2-1) or (2 -2):
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(from column 2 line 31 to column 3 line 15).
All monomers used in the reaction are mixed in advance and added dropwise so as to
obtain a random copolymer. Meanwhile, the monomers used in the reaction are alternately
added in the reaction solution so as to obtain a block copolymer. For example, the monomer
represented by the general formula (4) is first added dropwise to be reacted and, then, the
monomer represented by the general formula (5) is added dropwise to the reaction mixture after
confirming the completion of the reaction of the monomer (4) to thereby 55 obtain an AB block
copolymer (column 14 lines 46-55). The number average molecular weight (Mn) of the present
(meth) acrylic silicone graft (co)polymer is 1,000 to 10 1,000,000 g/mol, preferably 3,000 to
100,000 g/mol, further preferably 5,000 to 50,000 g/mol (column 15 lines 9-12).
It would have been prima facie obvious to a person of ordinary skill in the art before the
effective filing date of the claimed invention to have formed a di block copolymer comprising a
block of repeating units of formula (I) and a block of repeating units of formula (II), a terminal
group of formula (III) on one terminal and a compound of formula (IV) on the other terminal,
with a reasonable expectation of success because Hata teaches a polymer having repeating units
of formula I and II, and one end groups of formula III and the other end groups of formula IV,
where the copolymer includes block copolymers having an AB structure.
The claimed unit of formula I is obvious over Hata' s unit of formula I because RI in both
encompasses a hydrogen atom and a methyl group. The claimed variable A of formula (1)
overlaps with Hata's general formula (1) because both require Z to be a divalent organic group,
R2 is a saturated hydrocarbon group having 1-10 carbon atoms or phenyl, R3 is is a saturated
hydrocarbon group having 1-10 carbon atoms, and mis 0-100. The claimed range for nl is
obvious because it overlaps with Hata' s range of 1 or larger.
The claimed unit of formula II is obvious over Hata's formula II because R1 in both is a
hydrogen atom or a methyl group. Hata defines the variable B as a hydroxyl group, an amino
group, or a substituted or unsubstituted, monovalent hydrocarbon group which has 1 to 20 carbon
atoms and may have at least one selected from -O-, -S- and - NR-, wherein R is a hydrogen atom
or a monovalent hydrocarbon group having 1 to 20 carbon atoms, provided that the oxygen atom,
the sulfur atom and the nitrogen atom are not adjacent to each other, which renders the claimed moiety of formula (8’) -O-CH2-CH2-N(R7)2 where R7 is alkyl having 1-4 carbon atoms obvious over Hata’s variable B when the variable is a monovalent hydrocarbon having 1-20 carbon atoms, -O-, and -NR- where R is monovalent hydrocarbon having 1-20 carbon atoms.
Alternatively, Hata’s variable B renders the claimed moiety of formula (9’) obvious because it is hydrocarbon group having 3-30 carbon atoms and 1-10 moieties -O- where the -O-moieties are not adjacent. The number of carbon atoms in the hydrocarbon overlaps 1-20 and at least one -O- as taught by Hata. Additionally, in column 37 lines 15-33, Hata exemplifies polymer (18) in which the unit that repeats q number of times corresponds to formula II where B is -O-CH2CH2O-CH2CH3, which is a species of claimed formula 9’ when n3 is 1, and R3 is a hydrocarbon having 2 carbon atoms.
The range of variable n2 is obvious because it overlaps with the range of 1 or greater.
The claimed unit of formula III is obvious over Hata' s formula III because Hata defines
R7 as an alkyl group having 1-4 carbon atoms (column 2 lines 28-29), which corresponds to
instantly claimed variable R6; Hata defines R9 as a hydrogen atom or an alkyl group having 1-4
carbon atoms (column 2 lines 29-31), which corresponds to instantly claimed variable R7.
The claimed unit of formula IV is obvious over Hata' s formula IV because Hata defines
R10 as a hydrogen atom or a methyl group (column 2 lines 31-31), which corresponds to
instantly claimed R1. Hata defines X as unit A in formula I or unit B in formula II.
The molecular weight range in claim 2 is obvious because it overlap's with Hata's
molecular weight range. The specification was reviewed and there is no evidence that the
claimed range is critical.
The intended use of the instantly claimed copolymer is an emulsifier. Hata's copolymers
meet all of the structural limitations of the instantly claimed copolymers and it would have been
reasonable to expect Hata's copolymers to have the same properties as instantly claimed
copolymers when tested under the same conditions including having emulsifier properties.
Maintained Double Patenting Rejections
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1 and 2 are rejected on the ground of nonstatutory double patenting as being
unpatentable over claims 1-8 of U.S. Patent No. 10,851,194 B2. Although the claims at issue are
not identical, they are not patentably distinct from each other because it would have been prima
facie obvious to a person skilled in the art before the effective filing date of the claimed
invention to have formed the copolymer in patented claims as a block copolymer, with a
reasonable expectation of success because there is limited number of ways to polymerize two
monomers from which repeating units I and II are derived, and all would have been equally
obvious. The patented methods and products do not limit the copolymer by monomer
arrangement within the polymer molecule, such as diblock, multi-block, random, or gradient.
The skilled artisan would have recognized that these are the known ways to arrange the two
monomers within the polymer, and any one would have been equally obvious including
polymerizing the two monomers in a manner that produces a di block copolymer as instantly
claimed. The patented claims do not describe the copolymer as an emulsifier, however the
patented copolymer meets the structural requirements of the instantly claimed copolymer and it
would have been reasonable to expect the patented copolymer have emulsifier properties.
Response to Arguments
Applicant’s arguments submitted in the remarks dated January 26, 2026, were fully considered but are not persuasive for the following reasons.
The rejection over Hata is maintained and modified to address the definition of B as amended. Hata teaches block copolymers and the skilled artisan would have understood that a block copolymer made from two different monomers would be a diblock copolymer, thus Hata teaches diblock copolymers. Hata is not limited by exemplified embodiments, therefore Hata’s broadest teachings encompass claimed formula II. Data in the specification was reviewed, however Hata’s diblock copolymer meets all of the structural limitations of the instantly claimed diblock copolymer and it would have been reasonable to expect Hata’s copolymer to have the same beneficial properties as claimed copolymer, including having emulsifier properties. Hata is not required to teach that the diblock copolymer is an emulsifier to meet the limitation because the chemical structure of the polymer is met and it would have been reasonable to expect Hata’s copolymer have emulsifier properties.
Double patenting rejections over Hata are maintained because Hata’s definition of B encompasses instantly claimed chemical structures 8’ and 9’, which renders the structures obvious.
Conclusion
No claims are allowed.
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.
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/ALMA PIPIC/
Primary Examiner, Art Unit 1617