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 .
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.
Claim(s) 1 and 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ikeda (EP 0616010, newly cited) and further in view of Kang (US 5,080,835, of record).
Ikeda is directed to a composition comprising a thermoplastic resin B, such as vinyl polymers and diene polymers, modified with boron-containing functional groups (Abstract and Page 6, Lines 11+ ). More particularly, the functional groups are selected from boronic acid groups and borinic acid groups (Page 3, Lines 11+). Thus, Ikeda suggests the use of thermoplastic resins modified with boronic acid groups and thermoplastic resins modified with borinic acid groups. While Ikeda fails to expressly teach a mixture of such thermoplastic resins, it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition which is to be used for the very same purpose (In Re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980). It is further noted that Ikeda does in fact appear to suggest the use of multiple base polymers (Page 11, Lines 40+). As such, one of ordinary skill in the art would have found it obvious to include first and second modified thermoplastic resins in the composition of Ikeda.
When using a mixture of modified polymers, one of ordinary skill in the art would have found it obvious to use any number of loadings for respective polymers. It is emphasized that when using a mixture in general, a wide range of loadings is commonly disclosed for respective components. For example, Ikeda essentially discloses any possible combination of loadings in a composition formed with polymer A and polymer B (Page 11, Lines 9+). This disclosure provides a general guidance when multiple polymers are used in a mixture. Absent a conclusive showing of unexpected results, one having ordinary skill in the art would have found it obvious to form a composition of Ikeda in accordance to the claimed invention. Looking at Table 2, none of the comparative examples include modified polymers at loadings outside the claimed range and having groups demonstrating a Taft steric parameter less than -0.30. It is emphasized that Ikeda expressly discloses the use of groups having a parameter less than -0.30 and it appears that any realized benefits are simply a function of using said groups (as opposed to specific loadings).
With further respect to claim 1, equations I, II, and IV of Ikeda correspond with equations II, III, and IV of the claimed invention and equations V, VI, and VIII correspond with equations VI, VIII, and X of the claimed invention.
Additionally, Ikeda specifically teaches the use of isopropyl, butyl, and cyclohexyl for groups X, Y, R1, R2, and/or R3 (Page 4, Lines 30-50) and such groups are seen to constitute inventive groups having Taft parameters in accordance to the claimed invention (see Paragraph 101 in Applicant’s published specification).
In terms of the manner in which the modified polymers are formed, the claimed steps are consistent with those associated with forming modified polymers via living polymerization. Kang, for example, recognizes the use of a metal compound (as a catalyst) to carry out anionic polymerization of styrene or butadiene, for example, to form living polymers and the subsequent introduction of functional groups to form a modified polymer (Column 8, Lines 15+). One of ordinary skill in the art would have found it obvious to carry out the first and second steps of the claimed invention in the method of Ikeda. It is emphasized that the claimed method is well recognized as a conventional method of forming modified polymers and Applicant has not provided a conclusive showing of unexpected results (lack of comparative examples including a non-inventive method). Table 2 simply includes comparative examples that are devoid of functional groups and including methyl or ethyl groups.
Lastly, regarding claim 1, the fact that a reaction involving a boric acid compound having a Taft’s steric parameter Es of more than -0.30 resulted in a low functional group introduction ratio and poor reactivity (Table 2) does not constitute a conclusive showing of unexpected results since Ikeda is specifically directed to a composition involving a wide variety of boric acid compounds having a Taft’s steric parameter Es of less than -0.30- any realized benefits would similarly be expected to be present in the composition of Ikeda. Again, Ikeda specifically teaches a modified polymer in which a group bonded to an oxygen atom has a Taft steric parameter less than -0.30 (multiple groups disclosed by Ikeda have a parameter in accordance to the claimed invention).
With respect to claim 2, Ikeda recognizes the use of several complexes that constitute a mixture of a polar compound and a boric acid compound, including a borane-tetrahydrofuran complex and a borane-triethylamine complex (Page 6, Lines 51+). These mixtures are consistent with those detailed by Applicant (Paragraph 112 in published specification). It is additionally noted that the polar compound and the boric acid compound are necessarily mixed to form the aforementioned complexes.
Response to Arguments
4. Applicant’s arguments with respect to claim(s) 1 and 2 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
5. Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
6. Any inquiry concerning this communication or earlier communications from the examiner should be directed to JUSTIN R FISCHER whose telephone number is (571)272-1215. The examiner can normally be reached M-F 5:30-2:00.
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Justin Fischer
/JUSTIN R FISCHER/Primary Examiner, Art Unit 1749 July 14, 2026
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