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 .
DETAILED ACTION
Response to Amendment
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The previous restriction and 103 rejections have been maintained and repeated.
Claim Rejections - 35 USC § 103
Claim(s) 15 is (are) rejected under 35 U.S.C. 103(a) as being unpatentable over Uryu et al. (J. of Polym. Sci., Vol. 17, 673-678, listed on IDS and ISR) in view of Nishikubo et al. (JP 2005255973).
As to claim 15, Uryu (pg.673) discloses a process of producing a xylofuranose (a monosaccharide) based polyether via ring opening polymerization on oxetane groups using a cationic catalyst, such as boron fluoride ethyl ether complex (Ex.5-6):
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, wherein the conversion rate is 14% or 49% (Table 1).
Uryu is silent on the claimed anionic/binding agent catalyst.
Solving the same problem of producing a polyether (claims, examples) via monomers having plural hydroxyl groups (like Uryu’s xylofuranose) and via ring opening polymerization (15-18, 21) of oxetane groups on monomers using a cationic catalyst, such as boron fluoride ethyl ether complex (Ex.5, the same cationic catalyst of Uryu), Nishikubo discloses using anionic catalyst (15-18), such as t-BuOK/crown ether (18-C-6), for ring opening polymerization would increase the conversion 48%-63% (Ex.5, Table 4, boron fluoride/ethyl ether ) to (Ex.2, Table 2, t-BuOK/crown ether (18-C-6)) 83-98%. Crown ether is a binder agent according to instant pgpub [0024], and t-BuOK is an anionic catalyst according to instant examples.
Therefore, as to claim 15, it would have been obvious to one of ordinary skill in the art to have modified the process disclosed by Uryu and replaced the cationic catalyst of boron fluoride ethyl ether with the anionic catalyst of in view of Nishikubo, because the resultant process would yield improved conversion rate.
Response to Arguments
The argument for allowance of amended claims has been fully considered but not persuasive.
Regarding applicant’s augment A, evidence showing there was no reasonable expectation of success may support a conclusion of nonobviousness. In re Rinehart, 531 F.2d 1048,189 USPQ 143 (CCPA 1976). Nishikubo‘s mere disclosure of monomers having plural hydroxyl group does not constitute a teaching away from any of these alternatives, because such disclosure does not criticize, discredit, or otherwise discourage the claimed invention. Nishikubo does not exclude using Uryu’s oxetane. Nishikubo and Uryu’s pertain to producing a polyether via similar oxetane monomers and similar ring opening polymerization (polymerization mechanism) using cationic or anionic catalyst. Nishikubo discloses using anionic catalyst (15-18), such as t-BuOK/crown ether (18-C-6), for ring opening polymerization would increase the conversion 48%-63% (Ex.5, Table 4, boron fluoride/ethyl ether ) to (Ex.2, Table 2, t-BuOK/crown ether (18-C-6)) 83-98%. Crown ether is a binder agent according to instant pgpub [0024], and t-BuOK is an anionic catalyst according to instant examples. In light of this, one of ordinary skill in the art would obviously recognize to optimize a process that meet the claimed one by modifying the molar/weight ratios/concentrations of catalyst, oxetane monomers, crown ether, etc. as a routine laboratory or manufacturing procedure with reasonable expectation of success.
Regarding applicant’s augment B and C, one cannot show non-obviousness by attacking references individually where the rejections are based on combinations of references. See MPEP-2145 Solving the same problem of producing a polyether (claims, examples) via monomers having plural hydroxyl groups (like Uryu’s xylofuranose) and via ring opening polymerization (15-18, 21) of oxetane groups on monomers using a cationic catalyst, such as boron fluoride ethyl ether complex (Ex.5, the same cationic catalyst of Uryu), Nishikubo discloses using anionic catalyst (15-18), such as t-BuOK/crown ether (18-C-6), for ring opening polymerization would increase the conversion (motivation) 48%-63% (Ex.5, Table 4, boron fluoride/ethyl ether ) to (Ex.2, Table 2, t-BuOK/crown ether (18-C-6)) 83-98%. Crown ether is a binder agent according to instant pgpub [0024], and t-BuOK is an anionic catalyst according to instant examples. Nishikubo alleviates the deficiency of Uryu. Nishikubo also teaches using Uryu’s cationic catalyst, and Nishikubo teaches anionic catalyst outperforms Uryu’s cationic catalyst. Moreover, Uryu does not exclude using Nishikubo’s anionic catalyst; Nishikubo does not exclude using Uryu’s oxetane. Thus, Nishikubo does not teach away from Uryu. In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Regarding applicant’s augment D, Nishikubo and Uryu’s pertain to producing a polyether via similar oxetane monomers and similar ring opening polymerization (polymerization mechanism) using cationic or anionic catalyst. Nishikubo also teaches using Uryu’s cationic catalyst, and Nishikubo teaches anionic catalyst outperforms Uryu’s cationic catalyst. Although the oxetane monomers are structurally different, the ring opening polymerization mechanism is similar, and Nishikubo teaches anionic catalyst outperforms the same Uryu’s cationic catalyst. Thus one of ordinary skill in the art would obviously recognize to optimize a process that meet the claimed one by modifying the molar/weight ratios/concentrations of catalyst, oxetane monomers, crown ether, etc. as a routine laboratory or manufacturing procedure with reasonable expectation of success. Nishibubo’s results in Table 4 and 2 appears irrelevant, because these examples do not use Uryu’s oxetane monomers. The results do not show a teaching away from Uryu.
Therefore, as to claim 15, it would have been obvious to one of ordinary skill in the art to have modified the process disclosed by Uryu and replaced the cationic catalyst of boron fluoride ethyl ether with the anionic catalyst of in view of Nishikubo, because the resultant process would yield improved conversion rate.
Therefore, the previous restriction and 103 rejections have been maintained and repeated.
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 extension fee 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 date of this final action.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHANE FANG whose telephone number is (571)270-7378. The examiner can normally be reached on Mon-Thurs. 8am-6pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached on 571.572.1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SHANE FANG/Primary Examiner, Art Unit 1766
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