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 .
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.
Claims 1,2,13,39,41 and 51 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.
The basis of claim 1 and 39’s “ppm” is not given. Based on the entire composition? Base on a + b + c?
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.
Claims 1,2 and 13 rejected under 35 U.S.C. 103 as being unpatentable over WO2019/129539.
The reference exemplifies (#1 of table 1) a combination of 40 parts Polymer (B-1), 50 parts Polymer (B-2), 10 parts DEMM, 21 ppm MSA (ie applicant’s “c”), 8ppm H2SO4, (ie applicant’s “c”), 12ppm TFA (ie applicant’s “c”) and dimethlaminophenol.
Polymer (B-2) is a polyester from DEMM (applicant’s diester) and pentanediol (ie applicant’s diol) (page 35 line 13-18). It also contains 10ppm phosphoric acid (page 35 line 19).
Polymer (B-1) also contains phosphoric acid (page 35 line 9).
Phosphoric acid qualifies as applicant’s oxo acid of phosphorous “b”.
It can be said that the cited example contains applicant’s polyester “a”, three strong acids “c” and phosphoric acid “b”.
Given (B-1) + (B-2) make up 90% of the entire composition, the amount of phosphoric acid would be 9ppm (based on the entire composition). If calculated based on applicant’s a + b + c, the value would be:
50 x 10/1,000,000 + 40 x 10/1,000,000
-------------------------------------------------------- = 18ppm
50
Either way, the cited example has less than applicant’s 20ppm minimum.
However, the reference (page 12 line 22) teaches the total amount of all strong acids (eg phosphoric acid, MSA, H2SO4, TFA) can be as high as 500ppm. For the cited example, the total is ~50ppm.
It would have been obvious to increase the amount of phosphoric acid to at least 20ppm as this value stays within the maximum of all strong acids taught by the reference. More phosphoric acid would been expected to increase shelf life (page 12 line 8-11).
In regards to applicant’s dependent claims:
DEMM is applicant’s preferred diester of claim 2.
The reference depicts Polymer (B-2) as not having any of the alkene groups reacted – meeting applicant’s claim 13.
Claims 1,2 and 13 rejected under 35 U.S.C. 103 as being unpatentable over WO2019/129539.
The reference exemplifies (#2 of table 1) a combination of 20 parts Polymer (B-1), 25 parts Polymer (B-2), 5 parts DEMM, 50 parts DHMM, 30.5 ppm MSA (ie applicant’s “c”), 5.5ppm H2SO4, (ie applicant’s “c”), 9.5ppm TFA (ie applicant’s “c”) and dimethlaminophenol.
Polymer (B-2) is a polyester from DEMM (applicant’s diester) and pentanediol (ie applicant’s diol) (page 35 line 13-18). It also contains 10ppm phosphoric acid (page 35 line 19).
Polymer (B-1) also contains phosphoric acid (page 35 line 9).
Phosphoric acid qualifies as applicant’s oxo acid of phosphorous “b”.
It can be said that the cited example contains applicant’s polyester “a”, three strong acids “c” and phosphoric acid “b”.
Given (B-1) + (B-2) make up 45% of the entire composition, the amount of phosphoric acid would be 4.5ppm (based on the entire composition). If calculated based on applicant’s a + b + c, the value would be:
20 x 10/1,000,000 + 25 x 10/1,000,000
-------------------------------------------------------- = 18ppm
25
Either way, the cited example has less than applicant’s 20ppm minimum.
However, the reference (page 12 line 22) teaches the total amount of all strong acids (eg phosphoric acid, MSA, H2SO4, TFA) can be as high as 500ppm. For the cited example, the total is ~50ppm.
It would have been obvious to increase the amount of phosphoric acid to at least 20ppm as this value stays within the maximum of all strong acids taught by the reference. More phosphoric acid would been expected to increase shelf life (page 12 line 8-11).
In regards to applicant’s dependent claims:
DEMM is applicant’s preferred diester of claim 2.
The reference depicts Polymer (B-2) as not having any of the alkene groups reacted – meeting applicant’s claim 13.
Claim 51 rejected under 35 U.S.C. 103 as being unpatentable over WO2019/129539 in view of Palsule 9617377.
WO2019/129539 applies as explained above.
WO2019/129539 suggests inhibitors may be included (page 5 line 17), but does not list free radical inhibitors.
Palsule teaches similar compositions based on polyesters of DEMM. Palsule (col 30 line 34-41; col 30 line 44) teaches free radical stabilizing inhibitors are desirable. This stabilizer/inhibitor presumably prevents the unsaturation of the DEMM from reacting prematurely.
Free radical stabilizing inhibitors would have been an obvious inclusion to WO2019/129539’s composition for their known benefit.
Claim 39 and 41 rejected under 35 U.S.C. 103 as being unpatentable over WO2019/129539.
The reference exemplifies (#1 of table 1) a combination of 40 parts Polymer (B-1), 50 parts Polymer (B-2), 10 parts DEMM, 21 ppm MSA (ie applicant’s “c”), 8ppm H2SO4, (ie applicant’s “c”), 12ppm TFA (ie applicant’s “c”) and dimethlaminophenol.
Polymer (B-2) is a polyester from DEMM (applicant’s diester) and pentanediol (ie applicant’s diol) (page 35 line 13-18). It also contains 10ppm phosphoric acid (page 35 line 19).
Polymer (B-1) also contains phosphoric acid (page 35 line 9).
Phosphoric acid qualifies as applicant’s oxo acid of phosphorous “b”.
It can be said that the cited example contains applicant’s polyester “a”, three strong acids “c” and phosphoric acid “b”.
Given (B-1) + (B-2) make up 90% of the entire composition, the amount of phosphoric acid would be 9ppm (based on the entire composition). If calculated based on applicant’s a + b + c, the value would be:
50 x 10/1,000,000 + 40 x 10/1,000,000
-------------------------------------------------------- = 18ppm
50
Either way, the cited example has less than applicant’s 20ppm minimum.
However, the reference (page 12 line 22) teaches the total amount of all strong acids (eg phosphoric acid, MSA, H2SO4, TFA) can be as high as 500ppm. For the cited example, the total is ~50ppm.
It would have been obvious to increase the amount of phosphoric acid to at least 20ppm as this value stays within the maximum of all strong acids taught by the reference. More phosphoric acid would been expected to increase shelf life (page 12 line 8-11).
While the exemplified composition contains applicant’s diol and diester (in polymerized form), three strong acids and phosphoric acid, the acid(s) and phosphoric acid were not added to the monomers prior to polymerizing.
However, the reference teaches (page 12 line 17) that these acids can be added to the polymer or monomer to extend shelf life.
It would have been obvious to add the phosphoric acid and one or more strong acids to the DEMM and diol prior to polymerization as this is directly suggested by the reference.
In regards to applicant’s dependent claim:
DEMM is applicant’s preferred diester of claim 41.
Applicant's arguments filed 4/6/26 have been fully considered but they are not persuasive.
Applicant argues that WO2019/129539 does not suggest the 20ppm minimum of the phosphorous oxo-acid ensures stability without hindering the subsequent curing reaction.
This is not convincing. WO2019/129539 (page 12 line 8-12,16) clearly teaches the acidic stabilizer (eg phosphoric acid) extends shelf life. This corresponds to applicant’s “stability”. The reference (page 12 line 22) clearly teaches amounts 0.1-500ppm. Claiming an amount of greater than 20ppm is prima facie obvious – if not anticipatory. The reference does not state higher amounts will hinder the future curing.
Even if one of ordinary skill suspected high amounts of phosphoric acid might interfere with later curing, this leads one to vary the amount until an acceptable balance between stabilizing and curing interference is found.
Applicant’s argument that there is no motivation to add phosphoric acid to the MSA, H2SO4 and TFA ignores the cited examples actually making such a combination.
Applicant’s argument that one of ordinary skill would not add phosphoric acid to the DEMM, diol, Novazym catalyst mixture ignores the reference’s (page 12 line 17) clear teaching to add the acids to the monomers to extend shelf life.
The declaration of 4/6/26 shows that as the stabilizing phosphoric acid level falls, the amount of polymer increases. This is exactly how a stabilizer is expected to perform – more stabilizer leads to less reaction.
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 DAVID J BUTTNER whose telephone number is (571)272-1084. The examiner can normally be reached M-F 9-3pm.
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/DAVID J BUTTNER/Primary Examiner, Art Unit 1765 4/22/26
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