DETAILED ACTION
The present application is a national stage entry of PCT/JP2021/017982, filed 12 May 2021, and claims priority to JP2020-084171, filed 13 May 2020.
The preliminary amendment filed 11 November 2022 is acknowledged. Claims 1-7 are pending in the current application and are examined on the merits herein.
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(b)
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 1-7 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 recites the broad recitation “a number average molecular weight of 1,000 or more”, and the claim also recites “preferably a number average molecular weight of 1,500 to 6,000” and “more preferably a number average molecular weight of 2,000 to 5,000 at room temperature” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim Rejections - 35 USC § 103
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.
Claim(s) 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Inoue et al. (US Patent Application Publication No. 2020/0087418, cited in IDS submitted 11 November 2022; as English language equivalent of WO2018225704, cited in IDS submitted 11 November 2022) in view of Oomori et al. (US Patent Application Publication No. 2015/0094463, cited in PTO-892).
Inoue et al. teach a polyrotaxane comprising a pseudopolyrotaxane, which has a linear molecule and a cyclic molecule in which the linear molecule is included in a cavity (cavities) of the cyclic molecule(s) in a skewered manner, and capping groups, each of which locates at each end of the pseudopolyrotaxane in order to prevent dissociation of the cyclic molecule(s), (claim 1). Inoue et al. teach further comprising an isocyanate compound such as hexamethylene diisocyanate as a crosslinking agent (para [0087]).
The cyclic molecule is a compound of formula I:
PNG
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168
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, and R1 represents at least one group selected from the group consisting of -CH3, -CH2-CH3, -CH2-O-CH3, -CH2-O-CH2-CH3, -CH2-O-CH-(CH3)2, and a -phenyl group.
R2 represents at least one group selected from the group consisting of H, -CH3, -OCONH-(CH2)3-CH3, -OCONH-C18H-37, and -COCH3;
‘n’ represents an apparent degree of polymerization of a polyalkylene oxide chain or a derivative thereof added to the cyclic molecule, and the value of n ranges from 1.1 to 10.0.
The addition rate for the prepared polyrotaxane derivatives were n is 1.1 (ex 1), n is 1.1 (ex 2), n is 2.0 (ex 3), n is 5.7 (ex 4), n is 1.3 (ex 5), n is 1.2 (ex 6), n is 1.1 (ex 7), n is 1.4 (ex 8), n is 1.3 (ex 9). The product from example 1 is referred to as product A1 (para [0113]). According to table 1, it was soluble in PPG400 at room temperature, PPG700 at room temperature, and soluble in PPG1000 at elevated temperatures. Comparative example 1 (C1), which had an addition rate of 0.5, was not soluble in PPG400 or PPG700. Thus, the polyrotaxane derivatives having a addition rate of 1.1 has improved solubility in polyol PPG solvents at increasing molecular weight (para [0043]).
In example 11, Inoue et al. teach mixing 1,3-bis(isocyanatomethyl)cyclohexane was reacted with 7.1 g propylene glycol 700 to give a propylene glycol modified with isocyanate groups at both ends (polymer P). Polymer P (0.5 g) was then reacted with 2.0 g polyrotaxane having a propylene oxide graft side chain obtained in example 4. The solution was applied to a glass substrate, and cured to obtain a flexible and transparent elastomer sheet (i.e. a molded article). In example 10, Inoue et al. teach dissolving 2 wt.% or more of the modified polyrotaxane in polypropyleneoxy glycol having a number average molecular weight of 400, 700 and 1,000.
Oomori et al. is similarly concerned with the preparation of hydroxyalkylated polyrotaxanes (abstract). The degree of hydroxyalkylation can vary, such that 0.015 to 150 mol cyclic ether are used with respect to 1 mol of the hydroxyl group to give a modification rate (para [0100]). The modification rate is not limited and may be controlled, for example by controlling the type and amount of the cyclic ether of formula (1), the amount of reaction solvent, the amount of organic base, the reaction temperature and/or the reaction time to obtain hydroxyalkylated polyrotaxanes having the desired dispersibility in solvents (para [0166]). Table 1 lists the reaction conditions that were changed to give different modification rates.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the amount of hydroxyalkylated groups to the polyrotaxane.
From the combined teaching of the prior art, the ordinary artisan would have been motivated to optimize the amount of propyleneoxy repeating units relative to the cyclic molecule because Oomori et al. expressly teach optimizing the modification rate to obtain hydroxyalkylated polyrotaxanes having the desired dispersibility in solvents. According to Inoue et al., a hydroxyalkylated polyrotaxane soluble in PPG at varying molecular weight and room temperature is desired.
The ordinary artisan would have known that products having a degree of polymerization of 1.1 (the minimum required by Inoue et al.), was much more soluble in PPG having a molecular weight of 400 and 700 than similar products having a degree of polymerization of 0.5.
The ordinary artisan would have been motivated to vary the degree of polymerization from anywhere between 1.1 to 10. The ordinary artisan would have been motivated to optimize the modification rate of the propyleneoxy repeating units to obtain a product having solubility in PPG 1000 at room temperature, because PPG1000 is clearly a solvent Inoue et al. was interested in. The skilled artisan would have been motivated to increase the modification rate/degree of polymerization because Inoue et al. teach a range of 1.1 to 10, and Inoue et al. demonstrated increasing the rate/degree of polymerization from 0.5 to 1.1 significantly improved the solubility of the modified polyrotaxane. Thus, this is clearly a result-effective variable, recognized by the prior art.
See MPEP 2144.05(I), “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.” Also see MPEP 2144.05(II)(A) and (B).
The hydroxyl group value in present claim 2 is a latent property of the product obtained from reacting the polyrotaxane with a propylene oxide, wherein the modification rate or addition rate of the propyleneoxy repeating unit is obvious for the reasons discussed above.
Thus, the claimed invention as a whole is prima facie obvious over the combined teaching of the prior art.
Double Patenting
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 1-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of U.S. Patent No. 11,072,667. Although the claims at issue are not identical, they are not patentably distinct from each other because the method of the ‘667 Patent results in a product having a modification rate of propyleneoxy groups that overlaps with the present claims.
Thus, the present claims are prima facie obvious over the claims of the ‘667 Patent.
Conclusion
In view of the rejections to the pending claims set forth above, no claim is allowed.
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/BAHAR CRAIGO/
Primary Examiner
Art Unit 1699