DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant’s election with traverse of Group 1, Claims 109-129, 137-140, species of polyether, integer a being 2, polycarbonate and t is at least 2 filed on 12/16/2025 is acknowledged. The traversal is on the ground that all groups are linked by the inventive feature of the polyol block copolymer of claim 109, the argument is not persuasive because the polyurethane does not comprise the polyol block copolymer, which is used as a reagent and loses it is characteristic in polyurethane.
Therefore, the restriction requirement based on the lack of unity analysis is still deemed proper and is made final. Accordingly, claims 112, 120-124, 127, 129-136 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention and species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 12/16/2025.
Claim Objections
Claim 109 objected to because of the following informalities: “a polycarbonate or polyethercarbonate block, A (~A'-Z'-Z-(Z'-A')n-), (poly)ester blocks, B, and (poly)ethercarbonate or (poly)ether blocks, C,” should be “a polycarbonate or polyethercarbonate block A (~A'-Z'-Z-(Z'-A')n-), (poly)ester blocks B, and (poly)ethercarbonate or (poly)ether blocks C,” to clarify A, B and C are not additional blocks. Appropriate correction is required.
Claim 116 objected to because of the following informalities: “the (poly)ol” should be “the (poly)ol block copolymer”. Appropriate correction is required.
It is suggested that applicant removes all parentheses around the term poly, without parentheses is a more common expression in the field.
Claim 126 objected to because of the following informalities: “polypropylene” should be “poly(propylene”. Appropriate correction is required.
Claim 138 objected to because of the following informalities: a proper Markush language is “selected from the group consisting of A, B and C”. Appropriate correction is required.
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 109-111, 113-119, 125-126, 128, 137-140 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 pre-AIA the applicant regards as the invention.
Claim 109 recites “A (~A'-Z'-Z-(Z'-A')n-),” the integer n- is not defined.
Claim 109 recites “A (-A'-Z'-Z-(Z'-A')n-),” which is (-A'-Z'-Z-(Z'-A') -(Z'-A')-(Z'-A')-) if n- is 3. Claim 1 further recites Z'-Z-(Z')n is a starter residue. The structure (-A'-Z'-Z-(Z'-A')n-) is incorrect because Z’ should not be distributed in different block and be separated by A’. The same issue applies to the structure C-B-A'-Z'-Z-(Z'-A'-B-C)n. For purposes of expediting prosecution, the claim is interpreted as n- and n is 0 or 1. If the structure refers to a star polymer, additional description should be provided to clarify the structure.
Claim 109 recites t= the number of terminal OH group residues on the block A, it is noted that polycarbonate or polyethercarbonate does not have hydroxyl group on the backbone, hydroxyl end groups may exist under certain experimental conditions which are not recited in the claim. Therefore, in practice the number of terminal OH group can be zero, which brings n being a negative number. Clarification is required.
Claim 110 recites “in the case of the polycarbonate chain if q is not 0, the ratio of p:q is at least 7:3, wherein in the case of the polyethercarbonate chain the ratio of p:q is at least 3:7”. Isn’t the polymer polyethercarbonate if q is not 0? If both are polyethercarbonate, then two p:q values make the claim indefinite.
For formula (I) in claim 110, p and q are not defined.
Claim 110 recites -A’- has the structure (I), wherein Re1, Re2, Re3 and Re4 depend on the epoxide residue, There is insufficient antecedent basis for this limitation in the claim because claim 109 does not recite A’ is related to epoxide.
For formula (II) in claim 110, Q is not defined.
For formula II in claim 110, RL1/3 and RL2/4 are not defined.
Claim 110 recites n2 is 1 or more and n3/n4 is 1 or more, w is 1 or more and v is 0 or more, it is noted that if any of those numbers is 1, then it is not considered as a polymer block. In practice a polymer block should be long enough to behave as its own segment. Clarification is required.
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 113 recites the broad recitation Z can be any group, and the claim also recites may be selected from 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 113 recites -RZ, Rz, Rz, are they the same? For purposes of expediting prosecution, it is interpreted as the same.
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 113 recites the broad recitation Rz may be …, and the claim also recites optionally Rz is …. 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 113 recites (e.g. each Rz is -OH), it is unclear whether the feature inside the parentheses is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
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 113 recites the broad recitation R’ may be …, and the claim also recites optionally R’ is …. 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.
Regarding claim 115 and claim 137, the phrase "such as" and “for example” renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 115 needs to be rephrased, the use of “and”, “or” and “and/or” makes it confusing.
Claim 115 recites (PEGs or PPGs), it is unclear whether the feature inside the parentheses is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 116 recites the polymer has Mn of 300-20,000 and block C has Mn of 100-20,000. Does it mean blocks A and B are optional for the block copolymer?
Regarding claim 117 and claim 138, the phrase "typically" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 138 recites (e.g. polybis(phenol)A), it is unclear whether the feature inside the parentheses is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 110 rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 110 recites n2 is 1 or more and n3/n4 is 1 or more, w is 1 or more and v is 0 or more, it is noted that if any of those numbers is 1, then it is not considered as block. In practice a block should be long enough to behave as its own segment. It does not further limit claim 109.
Claim Rejections - 35 USC § 103
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim 109-111, 113-119, 125-126, 128, 137-140 is/are rejected under 35 U.S.C. 103 as being unpatentable over Meuresch et al (US 2022/0056207, equivalent with WO2020127016).
Claim 109-111, 113-114, 117-119, 125-126, 128, 137-140: Meuresch teaches a polyol block copolymer (B)-(A″)-(A′)-(A″)-(B), (A”) is a polyester block derived from lactones such as propiolactone or B-butyrolactone, (B) is a polyether polyol block prepared from propylene oxide, (A’) is polycarbonate diol (abstract, 0011-0013, 0035, 0172, table 1, 0135, 0021-0022). (A’) is a polycarbonate having Mn of 150-4500, prepared by reaction of dimethyl carbonate [0021], which reads on both the starter and block A’, and the Z of the starter is a combination of those groups.
Meuresch does not expressly name a single embodiment having the claimed polymer. However, each of the components of the polymer is described in the reference. Therefore, it would have been obvious to a person of ordinary skill in the art at the time of the present invention to have made any of the polymers suggested by the reference, including the claimed polymer, thereby arriving at the presently claimed invention.
Claim 115: (A’) can be polycarbonate diol which can be obtained by reaction of alkylene oxides with CO2 in the presence of a further H-functional starter compound [0031]. The H-functional starter compound can be alcohol, diol, polyether polyols etc. [0017-0019, 0025-0027].
Claim 116: the block copolymer has a Mn of 70-15000 [0172], the polycarbonate having Mn of 150-4500 [0021]. The exemplary Mw of polyester block is 3000 and polyether block is 1000. BMC catalyst gives Mw/Mn in a range of 1.07-1.3. Therefore, the corresponding Mn is around 3000 and 1000 respectively.
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/WENWEN CAI/
Primary Examiner, Art Unit 1763