DETAILED ACTION
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 .
Applicant’s election without traverse of claims 1-14 in the reply filed on September 16, 2025 is acknowledged.
Claims 15-22 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on November 17, 2025.
Claim Rejections - 35 USC § 112
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 1-14 is 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.
The structure [A], structure [B], and structure [C] of claim 1 and structure [D] of claim 1, structure [D] of claim 2, and claim 4, denote wavy lines which causes confusion. Do the wavy lines indicate the main chain of the polymer? The examiner invites the applicant to clarify.
Claim 3 recites “wherein the one or more repeating units of structure [C] are located between at least one of… iii) two units of structure [D]”. However, claim 1 recites “wherein one or more repeating units of structure [C] are located between at least one of… iii) on unit of structure [A] and one unit of structure [B]”, which causes confusion. Which definition does limitation iii) fall under? The examiner invites the applicant to clarify.
Claims 5-14 are rejected for being dependent on claim 1.
Claim Analysis
Summary of Claim 1:
A (meth)acrylate-functionalized polymer comprising at least one unit of structure [A], at least one unit of structure [B], and at least one unit of structure [C], wherein:
Structure [A] is:
PNG
media_image1.png
302
615
media_image1.png
Greyscale
wherein R1 and R3 are the same or different and are H or alkyl, R2 and R4 are different and are either an organic moiety bearing at least one (meth)acrylate functional group or H;
structure [B] is:
PNG
media_image2.png
302
614
media_image2.png
Greyscale
wherein R7 and R9 are the same or different and are H or alkyl, R8 and R10 are different and are independently selected from:
—(R11O)nR12, wherein R11 is a divalent alkylene moiety, R12 is H or a C1-C26 alkyl, and n is an integer of 1 or more;
R19 wherein R19 is a C2-C34 branched or straight chained alkyl;
—R2O—(C═O)OH wherein R20 is a C2-C26 branched or straight chained alkylene; or
H; and
PNG
media_image3.png
229
558
media_image3.png
Greyscale
wherein R13, R14, R15, and R16 are the same or different and are independently selected from the group consisting of H and organic moieties,
subject to the proviso that structure [C] is different from structure [A] and structure [B]; and
wherein one or more repeating units of structure [C] are located between at least one of i) two units of structure [A], ii) two units of structure [B], or iii) one unit of structure [A] and one unit of structure [B].
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.
Claims 1-4, 6-9, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (CN 102807643).
The examiner will refer to the English translation of Wang et al. provided in this Office Action.
PNG
media_image4.png
239
512
media_image4.png
Greyscale
Regarding claim 1, Wang et al disclose in Table 2 a styrene-maleic copolymer (SMA) having the following structure (Table 2 polymer 1):
PNG
media_image5.png
229
148
media_image5.png
Greyscale
Wherein the monomer
reads on A,
PNG
media_image6.png
195
153
media_image6.png
Greyscale
wherein the monomer:
Reads on B,
And wherein the monomer:
PNG
media_image7.png
102
113
media_image7.png
Greyscale
Reads on C.
Wang et al. do not particularly teach one or more repeating units of structure [C] are located between at least one of i) two units of structure [A], ii) two units of structure [B], or iii) one unit of structure [A] and one unit of structure [B].
However, once the monomers are connected together to form the copolymer, [C] will be located between [A] and [B] as shown in below:
PNG
media_image4.png
239
512
media_image4.png
Greyscale
PNG
media_image4.png
239
512
media_image4.png
Greyscale
Thereby meeting the claim limitation.
PNG
media_image8.png
94
123
media_image8.png
Greyscale
Regarding claim 2, Wang et al. teach a polymer 1 comprising the monomer
Thereby reading on structure [D] and meeting the claim limitations wherein R17 and R18 are H.
Regarding claim 3, Wang et al. do not particularly teach one or more repeating units of structure [C] are located between at least one of i) two units of structure [A], ii) two units of structure [B], iii) two units of structure (D), iv) one unit of structure [A] and one unit of structure [B], v) one unit of structure [A] and one unit of structure [D], or vi) one unit of structure [B] and one unit of structure [D].
However, once the monomers are connected together to form the copolymer, [C] will be located between [A] and [B] as shown above, thereby meeting the claim limitation.
Regrading claim 4 and 6, Wang et al. teach the monomer A shown below:
PNG
media_image5.png
229
148
media_image5.png
Greyscale
Thereby meeting the claim limitation wherein R4 is the claimed structure, R5 is an divalent alkylene, and R6 is H of instant claim 4 and 6.
Regarding claim 7, Wang et al. teach R1, R3, R7, and R9 are each H as shown in the structures above, thereby meeting the claim limitation.
Regarding claim 8, Wang et al. teach R5 is a propylene, not an ethylene or oligooxyethylene as recited in the instant claim.
However, Wang et al. teach other monomer such as hydroxyethyl acrylate and hydroxylethyl methacrylate, which would form an ethylene group in R5 [0019]. Therefore, it would have been obvious to one of ordinary skill in the art to use a monomer to form R5 as an ethylene instead of the monomer used in polymer 1 because Wang et al. teach both are suitable monomers.
Regarding claim 9, Wang et al. teach R13 in structure [C] is phenyl and R14, R15, and R16 is H, thereby meeting the claim limitations.
Regarding claim 13, Wang et al. do not teach R19 is branched saturated alkyl as shown in the structure above.
However, Wang et al. teach other monomers can be used such as isooctanol, which would form a branched C8 saturated alkyl group in R19 [0018]. Therefore, it would have been obvious to one of ordinary skill in the art to use isooctanol instead of the monomer used in polymer 1 because Wang et al. teach both are suitable monomers.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (CN 102807643 as listed on IDS dated 1/20/2023) in view of Sharaby (US 4871801 as listed on IDS dated 1/20/2023).
The polymer of claim 1 is incorporated herein by reference.
Wang et al. do not teach R5 is a poly(ester) moiety comprising caprolactone residues.
Sharaby teaches in Example 29, SMA 3000A (styrene methacrylate copolymer) and TONE M-100 (vinyl chloride/acrylated caprolactone) are reacted together to form a product, thereby reading on the claim limitation (See Table VI). Sharaby offers the motivation that the styrene methacrylate copolymer reacted with the vinyl chloride/acrylated caprolactone results in improved physical properties [col 4, line 4-8]. Wang et al. is also concerned with improving the physical properties of SMA copolymers [0022]. Therefore, it would have been obvious to one of ordinary skill in the art to add the vinyl chloride/acrylated caprolactone of Sharaby with reasonable expectation that the physical properties of the SMA copolymer would improve.
Claims 10-12 are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (CN 102807643 as listed on IDS dated 1/20/2023) in view of Vasudevan et al. (US 20180010003 as listed on IDS dated 1/20/2023).
The polymer of claim 1 is incorporated herein by reference.
Regarding claims 10-12, Wang et al. do not teach structure [B] as recited in the instant claims.
PNG
media_image9.png
376
414
media_image9.png
Greyscale
Vasudevan et al. teach a styrene maleic copolymer reacted with BRIJ IC20-70 to form the copolymer shown below [0032]:
Thereby reading on R11 is a divalent ethylene moiety of instant claim 10, a C12-18 straight chain saturated alkyl and thereby lying within the claimed range of instant claim 11, and n is 4-20 and thereby lying within the claimed range of instant claim 12. Therefore, it would have been obvious to one of ordinary skill in the art to modify the SMA copolymer of Wang et al. with the monomer taught by Vasudevan et al. since it is well known in the industry.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (CN 102807643 as listed on IDS dated 1/20/2023) in view of Thanawalla et al. (US 4722947 as listed on IDS dated 1/20/2023).
The polymer of claim 1 is incorporated herein by reference.
Regarding claim 14, Wang et al. is silent on the number average molecular weight of the polymer.
PNG
media_image10.png
252
339
media_image10.png
Greyscale
Thanawalla et al. teach a copolymer having the formula shown below:
Thanawalla et al. teach the molecular weight of the copolymer is between 1,000 to 20,000 g/mol (equivalent to 1,000 to 20,000 Da) (claim 1), thereby lying within the claimed range. Thanawalla et al. teach if the intended ending use for the copolymer is a coating composition, a molecular weight within this range offers good solvency and low viscosity [col 7, line 33-62]. Wang et al. is also concerned with the SMA copolymer is used for a coating film [0022]. Therefore, it would have been obvious to one of ordinary skill in the art to use an copolymer having the molecular weight taught by Thanawalla et al. with the SMA copolymer of Wang et al. with reasonable expectation that the solvency and viscosity of the coating would improve.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREA WU whose telephone number is (571)272-0342. The examiner can normally be reached M F 8 - 5.
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, Joseph Del Sole can be reached at (571) 272-1130. 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.
/ANDREA WU/Examiner, Art Unit 1763
/CATHERINE S BRANCH/Primary Examiner, Art Unit 1763