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 .
DETAILED ACTION
Note new examiner due to a reassignment.
Applicant's election with traverse of Group I in the reply filed on August 6, 2025 is acknowledged. The traversal is on the ground(s) that Group II would require a difunctional compound of Group I which would not be a serious burden on the Examiner. This is found persuasive and thus the restriction requirement of June 30, 2025 is withdrawn. All claims 1-14 are examined.
Claim Rejections - 35 USC § 102 and 35 USC § 103
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.
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 5-8 are rejected under 35 U.S.C. 102(a)91) as being anticipated by JP 11228686 A (Aug. 24, 1999).
JP teaches a polyether derivative obtained by reacting a dihalogenated (e.g. methylene-dichloride (see [0013] and [0031]) and 6-30C monohydric phenol residue or 6-30C aromatic ring-containing monohydric residue with n being 1-100 in abstract and [0008-0010] and the monohydric residue with n being 80-100 would fall within scope of the recited 80-100 alkoxylated groups of the claim 1 and 100 alkoxylated groups of the claim 5. See In re Mills, 477 F2d 649, 176 USPQ 196 (CCPA 1972), In re Lamberti, 545 F.2d 747, 750 (CCPA 1976); Reference must be considered for all that it discloses and must not be limited to preferred embodiments or working examples. MPEP 2123.
The formula (1) taught in the [0009] would require 1 molar equivalent of the methylene-dichloride and 2 molar equivalent of an alkoxylated monohydric residue inherently meeting method claim 7. The 6-30C monohydric phenol residue or 6-30C aromatic ring-containing monohydric residue would meet the recited polyalkoxylaed carbon atoms of (b4) and (b5) of claim 1.
Thus, the instant invention lacks novelty.
Claims 9-14 are rejected under 35 U.S.C. 103 as being unpatentable over JP 11228686 (Aug. 24, 1999).as applied to claims 1, 2 and 5-8 above, and further in view of Rayborn (US 6,111,146).
Regarding n (i.e., number of alkoxylated groups) being higher than 100 of claims 1 and 7 and an aqueous composition of claims 9-14 over JP:
JP teaches that utilization polyether derivative for various fields such as an ink, a coating material comprising pigments and fillers as well as antioxidant is known in [0004-0005]. JP teaches other additives such as an antistatic agent for an adhesive in [0021]. JP teaches that utilization polyether derivative for improvement of a viscosity in known in the [0004]. Thus, the recited additives of claims 10-12 and viscosity control of claim 13-14 would have been obvious except an aqueous composition.
JP further teaches a distyene-ized phenol in [0027] which would make the recited (b5) of claim 1 and 7 obvious.
The instant invention further recites a number of alkoxylate group higher than 100 (n) taught by JP and the aqueous composition thereof.
Utilization of a number of alkoxylate group higher 100 for obtaining a polyether derivative as well as the aqueous composition thereof is known in the art.
Rayborn teaches non-ionic surfactants in abstract and that water-soluble polyethers are known as thickeners useful for aqueous coatings comprising pigments and clays (i.e., mineral fillers) in lines 11-25 of col. 1. Rayborn teaches an ethoxylated nonylphenol comprising 17 polyalkoxylaed carbon atoms and 200 alkoxylaed groups .in example 7. Rayborn teaches y of formula with y being 1-500 in lines 16-55 of col. 5.
Thus, it would have been obvious to one skilled in the art before the effective filing date of invention further to utilize the monohydric residue with n being 200 or 100-500 and the aqueous coatings comprising taught by Rayborn in JP since a higher value of n (i.e., higher molecular weight) would be expected to increase a viscosity and since the polyether derivative of JP is known to be water soluble as taught by Rayborn and since utilization of the aqueous composition over a composition comprising a harmful organic solvent is known practice in the art absent showing otherwise.
Selection of a known material based on its suitability for its intended use is prima facie obvious, see Sinclair & Carroll Co. v. Interchemical Corp., 325 US 327, 65 USPQ 297 (1945). MPEP 2144.07.
The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. KSR Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). MPEP 2141.
Claims 3 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over JP 11228686 (Aug. 24, 1999) as applied to claims above, and further in view of Sau (US 5,574,127).
Regarding claims 3 and 4 over methylene-dichloride of JP, Sau teaches dibromomethane and dichloromethane in lines 9-12 of col. 6.
Thus, it would have been obvious to one skilled in the art before the effective filing date of invention further to utilize the dibromomethane taught by Sau in JP since a dihalogenated compound in [0013] would encompass the dibromomethane as well as diiodomethane absent showing otherwise.
Selection of a known material based on its suitability for its intended use is prima facie obvious, see Sinclair & Carroll Co. v. Interchemical Corp., 325 US 327, 65 USPQ 297 (1945). MPEP 2144.07.
The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. KSR Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). MPEP 2141.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TAE H YOON whose telephone number is (571)272-1128. The examiner can normally be reached Mon-Fri.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones can be reached at (571)270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/TAE H YOON/Primary Examiner, Art Unit 1762
Prosecution Insights