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 .
Claims 12 and new claim 52 (requiring Michael addition and therefore an alcohol additive for this reaction) still do not read on the elected species and remains nonelected. All future claim listings must include proper claim status identifiers.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1 and 2 rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by WO2019/129539.
The reference exemplifies (#2 of table 1) a combination of 20 parts Polymer (B-1), 25 parts Polymer (B-2), 50 parts DHMM, 5 parts DEMM, 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 “d”.
It can be said that the cited example contains applicant’s polyester “a”, three strong acids “c” and phosphoric acid “d”.
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 12.
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.
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 (#2 of table 1) a combination of 20 parts Polymer (B-1), 25 parts Polymer (B-2), 50 parts DHMM, 5 parts DEMM, 30.5 ppm MSA (ie applicant’s strong acid), 5.5ppm H2SO4, (ie applicant’s strong acid), 9.5ppm TFA (ie applicant’s strong acid) 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) – applicant’s oxo acid of phosphorous.
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 claims:
DEMM is applicant’s preferred diester of claim 41.
Claims 1,2,13 and 51 rejected under 35 U.S.C. 103 as being unpatentable over Palsule 9718989.
Palsule exemplifies (#3) a polyester of diethyl methylene malonate (ie applicant’s diester) and pentanediol. Palsule then adds MEHQ (ie applicant’s free radical inhibitor) and MSA (methanesulfonic acid – ie applicant’s “c”).
This example lacks an oxo acid of phosphorous such as phosphoric acid.
However, Palsule (col 30 line 50,52) suggests phosphoric acid and MSA can be used as the anionic polymerization stabilizer and that “one or more anionic stabilizers” may be used (col 30 line 42).
This suggests adding phosphoric acid to the cited example which meets applicant’s claim 1.
In regards to applicant’s dependent claims:
Diethyl methylene malonate is applicant’s preferred diester of claim 2.
The cited example does not report the amount of unreacted diester as in applicant’s claim 13. However, Pasule (col 29 line 64) states the diester should be “substantially completely reacted”. Palsule (col 9 line 27-32) defines “substantially all” to mean >95% or >99.5%.
It would have been obvious to carry out the transesterification such that no starting diester monomer remains. Note that the cited example (col 37 line 27) does teach 0-10 of the diester methylene malonate after producing the polyester.
The MEHQ meets applicant’s condition “iii” of claim 51.
Palsule then (example 10) combines the polyester with an acrylic polyol with the intention of carrying out a Michael addition reaction (ie the unsaturation of the diethyl methylene malonate with the -OH of the acrylic polyol). This meets applicant’s claim 51 “i” condition and would meet nonelected claim 52.
Applicant's arguments filed 12/17/25 have been fully considered but they are not persuasive.
Applicant argues that Palsule 9718989 does not suggest oxo acids of phosphorous.
This is not convincing. Phosphoric acid is clearly named by Palsule. Phosphoric acid is one of applicant’s oxo acids of phosphorous (paragraph 32 of applicant’s spec).
Palsule’s methanesulfonic acid is one of applicant’s preferred strong acids (paragraph 35 of applicant’s spec).
Arguments that Palsule does not suggest combinations of his anionic stabilizers (eg phosphoric acid, methanesulfonic acid) ignores Palsule’s “one or more anionic stabilizers” language (col 30 line 42).
Applicant's amendment to each independent claim to now require “iv” AND the strong acid effectively changes the election of species from “oxo acids of P” to “oxo acids of P + strong acid c”. This 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 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 1/3/26