DETAILED ACTION
Applicant’s amendment dated 24 March 2026 is hereby acknowledged. Claims 1-3, 6-15, and 17-19 as amended are pending, with claims 6-9 and 11-15 withdrawn. All outstanding objections and rejections made in the previous Office Action, and not repeated below, are hereby withdrawn.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior office action.
New grounds of rejection set forth below are necessitated by applicant’s amendment filed on 24 March 2026. For this reason, the present action is properly made final.
Claim Rejections - 35 USC § 112
Claims 1-3, 10, 17, and 19 are 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.
Claim 1 (from which claims 2, 3, 10, 17, and 19 depend) recites a PDI of 6.9 to 20. However, since PDI is Mw/Mn, the recited Mw and Mn of claim 1 as currently amended provide a polydispersity of up to 19.6. It is unclear how PDI in excess of 19.6 can be obtained with the recited Mw and Mn. This rejection does not apply to claim 18, because that claim further narrows the polydispersity.
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.
Claims 2 and 19 are 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 2 recites that all R1 are stearyl; however, R1 is already defined as stearyl in claim 1; the same issue applies to claim 19, under the construction that “stearyl” includes substituted stearyl. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
Claim(s) 1-3, 10, and 17-19 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2019/096593 A1 (“Amajjahe”).
This reference was made of record with applicant’s IDS dated 15 February 2023.
As to claims 1, 2, and 17-19, Amajjahe teaches a polymer comprising monomeric units of general formula (I) 2:24-3:15, were each of R3 and R4 (corresponding to recited moiety R2) are preferably hydrogen, and R1 and R2 (corresponding to recited R1 moiety) are alkyl radicals. Note that alkyl and alkenyl radicals are interpreted to include substituted alkyl or alkenyl radicals. Amajjahe teaches at least 90 wt % of the monomers of formula I are preferably 12 to 22 alkyl chains as R1, and exemplifies polymers having 100 % of the units of formula (I) being stearyl acrylate, which meets general formula (I) where R1 is stearyl and R2 is H. Amajjahe teaches the polymer contains a second monomer II which is a hydroxyl functional acrylate type monomers which do not include R1 being stearyl (2:25-3:5) as required by claims 1, 2, and 19. While not exemplified, Amajjahe teaches the weight of units of formula II to units of formula I (which includes stearyl acrylate) to formula II of preferably 1:30 to 1:1 (3:10-15), which suggests a range of 50 to 96 wt % of monomers of general formula I, which includes the recited wt %. As such, the use of the recited proportion of monomers of general formula (I) is obvious as a preferred range of Amajjahe.
Amajjahe teaches a preferred Mn of 5000 to 8500 (3:10-15), which is in the range of claim 1.
While not exemplified, Amajjahe teaches that the polymer has an alternatively preferred embodiment, a ratio of Mw to Mn (polydispersity of 8 to 100, preferably 12 to 50 (4:13-15), which overlaps the recited range of claims 1 and 18. It is therefore an obvious modification suggested by Amajjahe to provide the recited polymer having Mn and polydispersity, including those in the recited range. Furthermore, such polymers with the polydispersity in the range taught by Amajjahe suggest a range of Mw ranging from 40000 to 425000, which includes Mw in the recited range. As such, the polydispersity and Mw are an obvious modification from the ranges taught by Amajjahe
As to claim 3, Amajjahe teaches a melting point preferably within the recited range (4:1-3).
As to claim 10, Amajjahe teaches the use of initiator in forming the polymer (5:15-6:30). Amajjahe does not discuss providing 1 part of monomers with initiator, followed by 1 to 15 parts of monomer plus initiator; however, this is interpreted as a product by process limitation, for which patentability is determined by the end product. See MPEP 2113. Since Amajjahe teaches initiator-initiated polymerization of the recited monomers, and teaches the same characteristics, it is deemed to be equivalent to that formed by the recited method, where a portion of monomers and initiator is added at some point following start of polymerization.
Response to Arguments
Applicant's arguments filed 24 March 2026 have been fully considered but they are not persuasive. As discussed above, the recited polymer, while not exemplified by Amajjahe, is suggested therein, given its teaching of the use of stearyl acrylate, the recited polydispersity and Mw.
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KREGG T BROOKS whose telephone number is (313)446-4888. The examiner can normally be reached Monday to Friday 9 am to 5:30 pm.
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, Arrie Reuther can be reached at (571)270-7026. 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.
/KREGG T BROOKS/Primary Examiner, Art Unit 1764
Prosecution Insights