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 § 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 4 rejected under 35 U.S.C. 103 as being unpatentable over Reichle 4667013 in view of King 3470078 and the Zainuddin article in the Journal of Radioanalytical and Nuclear Chemistry.
Reichle exemplifies (#2) polymerizing ethylene oxide using isopropanol as a chain transfer agent (col 17 line 2). Isopropanol was added at 0.0421 mol per 1,000g of polymer produced.
Assuming near complete conversion of alkylene oxide to poly(alkylene oxide):
0.0484mol isopropanol 60.1g isopropanol/mol isopropanol 2.9g isopropanol
------------------------------------- X ------------------------------------ = -------------------------
1,000g alkylene oxide 1 1,000g alkylene oxide
= 2,900ppm isopropanol relative to alkylene oxide
The resulting poly(ethylene oxide) has a 2% solution viscosity of 1140cps (col 17 line 18) which is 1140 mPa▪s. At 1%, the solution viscosity would necessarily be less. This example’s Mw is 1,350,000 (col 17 line 16).
The reaction temperature is 280C to 290C (col 17 line 5) which is slightly below applicant’s 350C to 500C. However, Reichle (col 12 line 4) more generally suggests 200 – 450C.
It would have been obvious to conduct Reichle’s polymerization anywhere within this range.
This meets applicant’s step 1. Reichle (col 11 line 24-27) invites the reader to conduct further treatment when lower molecular weights are desired. Reichle (col 2 line 30-37) recognizes that the prior art has used irradiation to lower molecular weight of poly(alkylene oxide).
Irradiation of high molecular weight poly(ethylene oxide) is known to reduce pituitousness (col 1 line 59 of King), improve ∆viscosity upon standing or shear (col 1 line 55 of King) and lower the viscosity (col 8 line 8 of King) which of course lowers the molecular weight. The Zainuddin article (table 1) also shows irradiation lowers the molecular weight and widens the Mw/Mn of high molecular weight poly(ethylene oxide).
It would have been obvious to sufficiently irradiate Reichle’s exemplified high molecular weight poly(alkylene oxide) to lower its molecular weight to any value desired in order to improve pituitousness and/or arrive at any desired molecular weight.
King (fig 2) and Zainuddin (table 1) both call for radiation dosages of 0-2 megarads (ie 0-20kGy) and 0-20kGy respectively which correspond to applicant’s dosages of 0.2-30kGy (paragraph 35 of spec).
Such dosages reduce the Mw up to 50% (table 1 of Zainuddin). Reduction of Reichle’s cited example’s Mw of 1,350,000 by 0-50% places the Mw within applicant’s range.
Such an irradiated version of Reichle’s example presumably would have a Mw/Mn greater than 6. This is surmised from applicant’s table 1 which shows irradiated high molecular weight poly(ethylene oxide) exhibits polydispersities of greater than 6 as long as the original poly(ethylene oxide) was made with large amounts of chain transfer agent.
Applicant's arguments filed 12/8/25 have been fully considered but they are not persuasive.
Applicant argues that Riechle does not teach applicant’s 35-500C reaction temperature.
This ignores that Reichle (col 12 line 4) suggests 200 – 450C.
Applicant argues that the references do not suggest polyalkylene oxide with a polydispersity of 6 or more and that the examiner relies on impermissible hindsight to account for this feature of the claims.
This is not convincing. The examiner’s position is that the polydispersity is inherent in the combination of references. This inherency is reasoned from data provided by applicant. This is the rationale called for in MPEP 2112 (IV)).
The motivation for combining the references is not reliant upon anything provided by applicant. The motivation to irradiate Reichle’s polyethylene oxide is to reduce pituitousness (col 1 line 59 of King), improve ∆viscosity upon standing or shear (col 1 line 55 of King) and lower the viscosity (col 8 line 8 of King) which of course lowers the molecular weight. There is no hindsight involved (relying on applicant’s specification) to combine the references.
The Zainuddin article (table 1) actually demonstrates that this amount of radiation increases the polydispersity of the starting polyethylene oxide. The starting polyethylene oxide of Reichle has some unreported inherent polydispersity value greater than 1. Given the cited example of Reichle produces polyethylene oxide in the same manner as applicant – ie same high amounts of isopropanol chain transfer agent, same ethylene oxide monomer, same zinc catalyst, one must assume a similar polydispersity value as applicant for the starting polyethylene oxide.
It is apparent from applicant’s table 1 that high molecular weight poly(ethylene oxide) irradiated with 0.6-8kGy results in polydispersities above 7 as long as the as high amounts of chain transfer agent were used in making the starting poly(ethylene oxide). Reichle’s poly(ethylene oxide) was made with high amounts of chain transfer agent. It appears unavoidable that irradiating Reichle’s poly(ethylene oxide) results in a poly(ethylene oxide) with a high polydispersity.
Applicant provides no contrary reasoning. Simply arguing the cited art does not report polydispersity values above 6 after irradiation cannot be convincing of nonobviousness.
As stated in Sanaturus v. Par Pharmaceutical 694 F.3d 1344 (Fed Cir 2012):
To hold otherwise would allow any formulation – no matter how
obvious – to become patentable merely by testing and claiming
an inherent property.
It is even possible that Reichle’s polyethylene oxide prior to irradiation has the required polydispersity >6. If so, the irradiation undoubtedly increases the polydispersity even higher.
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 1/9/26