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 Interpretation
For clarity of the record, and the purpose of examination, it is noted that the term “phosphoric acid-based polymer” is broadly interpreted as being inclusive of any and all phosphoric acid derivatives (eg. phosphoric acid esters) since the original specification does not provide a specific definition for the term other than what would be conventional and understood by an ordinary skilled artisan.
Claim Objections
Claim 20 is objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.0l(m).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 18 is rejected under 35 U.S.C. 103 as being unpatentable over JP2011074340A in view of Sicken (US 5,728,746) when taken with Tebbe et al. (US 2018/0291156 Al). (Citations below for JP '340 are from the English translation provided by applicant on 4/26/2024.)
Claim 18 JP '340 teaches: a curable composition (abstract,); an anhydride-modified polymer where the polymer is a polybutadiene or polyisoprene (pg. 2); a filler (pg. 2); and a dispersant (pg. 3).
JP '340 does not teach a polymeric compound according to instant Formula 1. Sicken teaches a polymeric compound according to instant Formula 1 by formula I, when formula V has R'l is H and using the preferred epoxides, ethylene oxide and propylene oxide, of formula IV (see formulas I, V, and IV, and 3:1-10). It is noted that Sicken specifically teaches that one can "varying the nature and ratios of amounts" of starting materials, therefore the instant claimed ratio of p/q (eg. 1:1) is sufficiently taught by Sickens. At the time of filing, a person having ordinary skill in the art would have been obvious to have used the above-described polymeric compound of Sickens in the composition of JP '340 as a plasticizer, and the motivation to do so is because Tebbe et al. provides evidence that such poly(alkylene phosphates) are know to be used for such purposes (para. 2). It is further submitted that JP '340 teaches that various additives, including plasticizers, may be included in their composition (pg. 3).
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties, i.e. a pressing force of 60 gf or lessL would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant's position that this would not be the case: (1) evidence would need to be provided to support the applicant's position; and (2) it would be the Office's position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Allowable Subject Matter
Claims 1-17 and 19 are allowed.
The following is a statement of reasons for the indication of allowable subject matter: Applicant’s arguments filed 17-SEP-2025 are persuasive.
Response to Arguments
Applicant’s arguments, filed 17-SEP-2025, with respect to the structure of instant Formula 1 have been fully considered and are persuasive.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARK EASHOO whose telephone number is (571)272-1197. The examiner can normally be reached M-F, 7am - 4pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Patricia Mallari, can be reached at 571-272-1200. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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MARK EASHOO, Ph.D.
Supervisory Patent Examiner Art Unit 1767
/MARK EASHOO/
Supervisory Patent Examiner, Art Unit 1767