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 .
Election/Restrictions
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claim(s) 1 and 31-35, drawn to a linear polymer, wherein the at least one urethane moiety comprises an oxygen atom that is a substituent of the dianhydrohexitole moiety and is formed from a hydroxyl group of the dianhydrohexitole moiety.
Group II, claim(s) 36-44, drawn to a polymer selected from the group consisting of (a) two or more different homopolymers, (b) two or more different copolymers, and (c) two or more different homopolymers and copolymers.
Group III, claim(s) 45-49, drawn to a copolymer comprising at least a first subunit and a second subunit, wherein said at least one dianhydrohexitole moiety of the first subunit is different to said at least one dianhydrohexitole moiety of the second subunit.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Groups I-III lack unity of invention because even though the inventions of these groups require the technical feature of a polymer comprising at least one subunit, wherein the at least one subunit comprises (i) at least one dianhydrohexitole moiety, (ii) at least one urethane moiety, and (iii) a thiol moiety having two or more sulphur atoms, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Cappelle et al. (EP 2821436 A1, cited in IDS, made of record on 05/12/2023). Cappelle teaches a resin composition obtained by mixing and stirring the following components: EBECRYL® 8465, EBECRYL® 375, IBOA, isosorbide diacrylate, Additol S 120, and Additol CPK, wherein the EBECRYL® 8465 is urethane acrylate oligomer, the EBECRYL® 375 is polythiol compound, the IBOA is isobornyl acrylate, the Additol S 120 is stabilizer, and the Additol CPK is initiator ([0171], Table 1, Ex 1), wherein the resin composition is cured [0173], which reads on a polymer comprising at least one subunit, wherein the at least one subunit comprises (i) at least one dianhydrohexitole moiety, (ii) at least one urethane moiety, and (iii) a thiol moiety having two or more sulphur atoms as claimed.
During a telephone conversation with David M. Tener on 12/04/2025 a provisional election was made with traverse to prosecute the invention of Group I, claims 1 and 31-35. Affirmation of this election must be made by applicant in replying to this Office action. Claims 36-49 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
Claim Rejections - 35 USC § 102
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 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.
Claims 1, 31, 32, and 35 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Stewart et al. (US 10,696,778 B1).
Regarding claims 1, 31, and 32, Stewart teaches a polyurethane copolymer comprising a repeating unit of Formula
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wherein ISO in each repeating unit is independently selected from isosorbide or a stereoisomer thereof, and X in each repeating unit is an independently selected difunctional linker, wherein X in at least one repeating unit is a difunctional isocyanate linker (1:60-2:7; 5:47-62), wherein additionally, the difunctional linker used to make the isosorbide adduct may include a dithiol (11:61-63), which reads on a linear polymer comprising at least one subunit, wherein the at least one subunit comprises (i) at least one dianhydrohexitole moiety, (ii) at least one urethane moiety, and (iii) a thiol moiety having two sulphur atoms, wherein the at least one urethane moiety comprises an oxygen atom that is a substituent of the dianhydrohexitole moiety and is formed from a hydroxyl group of the dianhydrohexitole moiety as claimed, wherein the at least one subunit comprises a single thiol moiety, wherein the single thiol moiety, comprises two sulphur atoms as claimed, and the linear polymer of claim 1, comprising at least a first urethane moiety and a second urethane moiety wherein the oxygen atom of each urethane moiety is a substituent of the dianhydrohexitole moiety and is formed from the hydroxyl group of the dianhydrohexitole moiety as claimed.
Regarding claim 35, the Office recognizes that all of the claimed physical properties are not positively taught by Stewart, namely that the linear polymer comprises a tensile strength of at least 55 MPa. However, Stewart teaches all of the claimed ingredients, amounts, process steps, and process conditions of the linear polymer of claims 1, 31, and 32 as explained above. Furthermore, the specification of the instant application recites that the thermoplastic polymers according to the present disclosure possess excellent thermoplastic properties including outstanding toughness, resulting from its semi-crystallinity and low glass transition temperature that surpasses many leading plastics such as nylon 6 and high-density polyethylene (HDPE) (p. 10, l. 21-24), that hence, in another embodiment, polymer comprises a tensile strength of at least 55 MPa (p. 10, l. 24-25), that these copolymers were obtained by varying the relative quantity of monomers (e.g., isoidide monomers, isomannide monomers, etc.) in the feed and copolymerizing them with a dithiol (e.g., 1,8-octanedithiol, etc.) to create a copolymer (p. 11, l. 11-13), that these resulting copolymers were shown to behave like tough plastic by having increased tensile strength (p. 11, l. 13-14), that this indicates that the isoidide moiety could also influence the bulk polymer properties without significantly altering the crystallinity or tensile properties (p. 17, l. 30-31), and that it was possible to tune mechanical properties independent of degradation as well since both IIPU and co-llsolMso showed similar degradation profiles but tremendously different tensile behavior (p. 17, l. 32-34). Therefore, the claimed physical properties would naturally arise from Stewart’s linear polymer. When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent (MPEP 2112.01(I)). If the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (MPEP 2112.01(II)). If it is the applicant’s position that this would not be the case: (1) evidence would need to be presented 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, amounts, process steps, and process conditions.
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.
Claim 34 is rejected under 35 U.S.C. 103 as being unpatentable over Stewart et al. (US 10,696,778 B1).
Regarding claim 34, Stewart teaches the linear polymer of claim 1 as explained above. Stewart teaches a polyurethane copolymer comprising a repeating unit of Formula
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wherein ISO in each repeating unit is independently selected from isosorbide or a stereoisomer thereof, and X in each repeating unit is an independently selected difunctional linker, wherein X in at least one repeating unit is a difunctional isocyanate linker (1:60-2:7; 5:47-62), wherein additionally, the difunctional linker used to make the isosorbide adduct may include a dithiol (11:61-63), where in some embodiments, the difunctional linker is an unbranched linear compound (7:7-8), where in some embodiments, the difunctional linker contains 4 or fewer carbon atoms between functional groups (7:8-10), where in certain embodiments, the separation between difunctional linkers is not greater than 5 carbon atoms (7:10-12), which optionally reads on wherein the thiol moiety is selected from 1,4-butanedithiol as claimed.
Stewart does not teach a specific embodiment wherein the thiol moiety is selected from the group consisting of 1,8-octanedithiol, 1,4-butanedithiol, 1,6-hexanedithiol, 1,10-decanedithiol, and 1,12-dodecanedithiol. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to select a dithiol that is an unbranched linear compound that contains 4 carbon atoms that is 1,4-butanedithiol as Stewart’s dithiol in Stewart’s difunctional linker in Stewart’s polyurethane copolymer. The proposed modification would read on wherein the thiol moiety is selected from 1,4-butanedithiol as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for providing a species of dithiol that is suitable as Stewart’s dithiol in Stewart’s difunctional linker in Stewart’s polyurethane copolymer or because it would have been obvious to try with a reasonable expectation of success because Stewart teaches a polyurethane copolymer comprising a repeating unit of Formula
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wherein ISO in each repeating unit is independently selected from isosorbide or a stereoisomer thereof, and X in each repeating unit is an independently selected difunctional linker, wherein X in at least one repeating unit is a difunctional isocyanate linker (1:60-2:7; 5:47-62), wherein additionally, the difunctional linker used to make the isosorbide adduct may include a dithiol (11:61-63), where in some embodiments, the difunctional linker is an unbranched linear compound (7:7-8), where in some embodiments, the difunctional linker contains 4 or fewer carbon atoms between functional groups (7:8-10), where in certain embodiments, the separation between difunctional linkers is not greater than 5 carbon atoms (7:10-12), which reads on 1,4-butanedithiol because it is a dithiol that is an unbranched linear compound that contains 4 carbon atoms. Examples of rationales that may support a conclusion of obviousness include "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success (MPEP 2143(I)(E)).
Allowable Subject Matter
Claim 33 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 33, Stewart teaches the linear polymer of claim 1 as explained above.
Stewart does not teach that the at least one subunit is selected from the group consisting of
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,
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,
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, and derivatives thereof and wherein δ is from 4 to 12. Although Stewart teaches a polyurethane copolymer comprising a repeating unit of Formula
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wherein ISO in each repeating unit is independently selected from isosorbide or a stereoisomer thereof, and X in each repeating unit is an independently selected difunctional linker, wherein X in at least one repeating unit is a difunctional isocyanate linker (1:60-2:7; 5:47-62), wherein the stereoisomer of isosorbide is selected from the group consisting of isomannide and isoidide (2:12-14), wherein the ISO repeating unit shown in Formula I may be isosorbide or any stereoisomer thereof including isoidide and isomannide (6:10-12), wherein additionally, the difunctional linker used to make the isosorbide adduct may include a dithiol (11:61-63), where in some embodiments, the difunctional linker is an unbranched linear compound (7:7-8), where in some embodiments, the difunctional linker contains 4 or fewer carbon atoms between functional groups (7:8-10), where in certain embodiments, the separation between difunctional linkers is not greater than 5 carbon atoms (7:10-12), which optionally reads on the
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,
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, and
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moieties of the claimed (I), (II), and (III), Stewart’s teachings do not teach or suggest the claimed (I), (II), and (III).
Although Dworak et al. (US 2018/0022848 A1) teaches a (meth)acrylate functionalized isosorbide corresponding to the structure MA-U-A-U-MA wherein A comprises an isosorbide unit, U comprises a urethane linkage, and MA comprises a member selected from the group consisting of a (meth)acrylate-containing group, an acrylate-containing group, and combinations thereof (Dworak claim 1), wherein the (meth)acrylate-containing group comprises a reactant residue selected from 2-isocyanatoethyl acrylate (Dworak claim 2), which reads on the
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moiety of the claimed (I), Dworak does not teach or suggest the claimed at least one subunit selected from the group consisting of (I), (II), and (III). Also, one of ordinary skill in the art would not have been motivated to use Dworak’s teachings to modify Stewart’s teachings. This is because Dworak’s 2-isocyanatoethyl acrylate is a monofunctional isocyanate linker, and Stewart teaches that a difunctional isocyanate linker is X in at least one repeating unit (1:60-2:7; 5:47-62) in the Formula
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of a repeating unit of the polyurethane copolymer (1:60-2:7; 5:47-62). One of ordinary skill in the art would not have been motivated to use a monofunctional linker in a polymer that requires a difunctional linker.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID KARST whose telephone number is (571)270-7732. The examiner can normally be reached Monday-Friday 8:00 AM-5:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID T KARST/ Primary Examiner, Art Unit 1767