CTNF 18/141,968 CTNF 82977 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. This Office action is in response to the amendment filed 4/8/2026. Claims 1-20 are currently pending in the application. Election/Restrictions 08-25 AIA Applicant's election with traverse of group II, drawn to claims 6-20 in the reply filed on 4/8/2026 is acknowledged. The traversal is on the ground(s) that In support of the restriction requirement, Office action states that distinctness is proven because the intermediate product is deemed to be useful as a gelling agent. The Office action does not, however, cite to the specification or other reference to support the assertion that the intermediate product is useful as a gelling agent. The term gelling agent is not used in the present specification. Office action states that groups I and II are classified in different classes. During prosecution of parent application no. 16/867,955 mention is made of both classes and also appear on the front page of U.S. Patent no. 11,673,858 that issued from the parent application This is not found persuasive because There is no requirement for application filed under 35 U.S.C. § 111 that a reference be provided to justify use of intermediate product (i.e., compound) of group I of present claims as gelling agent as opposed to being used to form a polymer (i.e., final product) of group II. Additionally, cited references in IDS in fact refer to the use of compound of group I as a gelling agent (see US 2008/0113573 A1). It is the Office’s position that different classifications having been searched in parent does not necessarily require a similar search in an application filed as a continuation. While compounds of group I may be searched in both classes, for polymer it requires searching only those classes that deal with polymers (such as C08F220/36 and not C07C275/14). Additionally, all classes that are relevant to the present application within the family are included in the front page of a US Patent issued (in the instant case in the parent application) . The requirement is still deemed proper and is therefore made FINAL. 08-05 AIA Claim s 1-5 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention , there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 4/8/2026 . Claim Rejections - 35 USC § 103 07-06 AIA 15-10-15 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. 07-20-aia AIA 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. 07-23-aia AIA The factual inquiries 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. 07-20-02-aia AIA This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention. 07-21-aia AIA Claim s 6, 9-13 and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Mondrzyk et al (Polymer International, vol. 64; pp661-667; Year: 2015) in view of Fujihara et al (Journal of Polymer Science, Part A: Polymer Chemistry, vol. 54, pages 2845-2854, Year: 2016) . Regarding claims 6 and 12, Mondrzyk et al disclose polymer having the structure: PNG media_image1.png 190 134 media_image1.png Greyscale (page 664, scheme 1) which reads on the polymer having plurality of monomer units comprising amide and ureido groups in present claim 1. Mondrzyk et al are silent with respect to RAFT agent, value of “n” (i.e., degree of polymerization), and configured to exhibit an UCST in aqueous solution. However, Mondrzyk et al teach that homopolymers 5a and 5b have a UCST in ethanol-water of 35 and 29.5 0 C. The volume of water affects the UCST behavior in a way such that T C increases with larger volume of water in the case of 5b-co-solvent system (bridging paragraph pages 665-666). It is possible to decrease T C by adding RAMEB-CD to increase the water solubility of small molecules by fitting into the hydrophobic cyclodextrin cavity and of polymer by inclusion of polymeric chains. Through the complexation by RAMEB-CD, the formation of hydrogen bonds between ureido moieties is hindered and so is the precipitation of polymers 5a and 5b. This finally leads to a better solubility of polymer 5a and 5b and T C of 15 and 19 0 C (plage 666, 1 st full paragraph, col. 1). Additionally, Fujihara et al in the same field of endeavor teach that phase separation temperature (T p ) can be controlled ranging from 17 to 55 0 C by changing molecular weight of the polymer (abstract). The polymers show phase separated behavior in water below the UCST due to intra- and interhydrogen bonding interactions, because the pendant ureido groups have a carbonyl group as a hydrogen bond acceptor and amine as hydrogen bond donors. With increasing temperatures above the UCST, the hydrogen bonding interactions are broken due to the activation of molecular motion, resulting in polymers that can dissolve in water. The phase separated temperature can be widely controlled by varying ureido contents, molecular weight of polymers and salt concentrations in the solvent (page 2846, col. 1, 1 st full paragraph). The polymer is prepared by RAFT radical polymerization (page 2846, bridging paragraph col. 1 to col. 2). Therefore, in light of the teachings in Fujihara et al and given that precipitation of polymer is due to the formation of hydrogen bonds that derive from the presence of both carbonyl and amine groups in the polymer, it would have been obvious to one skilled in art prior to the filing of present application to use a known RAFT polymerization method (i.e., RAFT agent functions as a chain transfer agent to control molecular weight) for preparing polymer, of Mondrzyk et al, containing ureido groups, and control the molecular weight to any value (including to obtain degree of polymerization of 10 to 200) to improve water-solubility of polymer and hence UCST to any desirable value including 1 0 C to 100 0 C as in present claim 1 and 5 0 C to 60 0 C as in present claim 12 when present in an aqueous solution are 1 atm, absent evidence to the contrary. It is noted that repeating comonomer units are optional. Regarding claim 9, Fujihara et al teach that phase separated temperature can be widely controlled by varying salt concentration in the solvent (page 2846, col. 1, 1 st full paragraph). Therefore, in light of the teachings in Fujihara et al, it would have been obvious to one skilled in art prior to the filing of present application to optimize the salt concentration to any value (such as above zero to about 160 mM as in present claim 9) to configure the polymer, of Mondrzyk et al in view of Fujihara et al, to exhibit a desirable UCST, absent evidence to the contrary. Regarding claim 10 and 11, see Table 1, of Fujihara et al, wherein the polymer has a molecular weight distribution of 1.19 (i.e., reads on the molecular weight distribution in present claim 11) and M n of 0.843 * 10 -4 (i.e., 8430 and reads on number average molecular weight in present claim 10). Regarding claims 13 and 20, in addition to 10a to 10c above, see scheme 1, wherein the polymers 7a and 7b include a comonomer and the polymer is represented by the formula: PNG media_image2.png 172 156 media_image2.png Greyscale (i.e., reads on copolymer comprising comonomer unit that is a hydrophilic monomer in present claim 13). See Table 1, wherein both monomers are used in equal amounts of 0.5 molar fraction. However, It is the examiner’s position that instantly claimed amount of n > m and that taught by Mondrzyk et al i.e. equal molar fractions are so close to each other that the fact pattern is similar to the one in In re Woodruff , 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) or Titanium Metals Corp. of America v. Banner , 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) where, despite a slight difference in the ranges, court held that such a difference did not “render the claims patentable,” or, alternatively, that “a prima facie case of obviousness exists where the claimed range and prior art range do not overlap, but are close enough so that one skilled in the art would have expected them to have the same properties. Regarding claim 19, see 9d and 9f above . 07-21-aia AIA Claim s 15 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Mondrzyk et al (Polymer International, vol. 64; pp661-667; Year: 2015) in view of Fujihara et al (Journal of Polymer Science, Part A: Polymer Chemistry, vol. 54, pages 2845-2854, Year: 2016) and Seuring et al (Macromolecules, vol. 45, pages 3910-3918, Year: 2012) . The discussion with respect to Mondrzyk et al and Fujihara et al in paragraph 9 above is incorporated here by reference. Mondrzyk et al and Fujihara et al are silent respect to the hydrophobic comonomer units. However, Seuring et al in the same field of endeavor teach that phase transition temperature can be increased in a controlled manner by copolymerization with hydrophobic comonomers (page 3911 and col. 1) which reads on the hydrophobic comonomer units in present claim 15. Copolymers with BA contents lower than 11 mol% showed lower cloud points than the homopolymer (page 3914, col. 1, 1 st full paragraph) which reads on hydrophobic comonomer reduces the UCST in present claim 16. Therefore, in light of the teachings in Seuring et al in the same field of endeavor, it would have been obvious to one skilled in art prior to the filing in present application to include any of the hydrophobic monomers, in the copolymer, of Mondrzyk et al in view of Fujihara et al, to tune the UCST to a desirable value by copolymerization with a hydrophobic monomer, absent evidence to the contrary . 07-21-aia AIA Claim s 17 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Mondrzyk et al (Polymer International, vol. 64; pp661-667; Year: 2015) in view of Fujihara et al (Journal of Polymer Science, Part A: Polymer Chemistry, vol. 54, pages 2845-2854, Year: 2016), Seuring et al (Macromolecules, vol. 45, pages 3910-318, Year: 2012), and Onishi et al (JP 2000-086729 A) . It is noted that JP 2000-086729 A is in Japanese. A copy of the machine translation into English is provided with this Office action. All line/paragraph citations in the body of rejection below are to the English translation unless explicitly stated. The discussion with respect to Mondrzyk et al, Fujihara et al, and Seuring et al in paragraph 10 above is incorporated here by reference. Mondrzyk et al, Fujihara et al, and Seuring et al differ with respect to the species of hydrophobic monomers. However, Onishi et al in the same field of endeavor teach a copolymer comprising monomer unit represented by formula PNG media_image3.png 104 176 media_image3.png Greyscale (paragraph 0009), at least one monomer selected from (meth)acrylamide (paragraph 0011) and at least one hydrophilic or hydrophobic monomer (paragraph 0013). Examples of hydrophobic monomer units include (meth)acrylate esters (paragraph 0021). Therefore, in light of the teachings in Onishi et al and given that UCST of polymer can be tuned by the inclusion of hydrophobic monomers based on the teachings in Seuring et al, it would have been obvious to one skilled in art prior to the filing of present application to include any hydrophobic monomer in the same field of endeavor such as (meth)acrylate ester (i.e., reads on comonomer unit represented by formula III in present claim 17, wherein Q 1 and Q 2 = O, R 1 and R 2 = alkyl in present claim 16, and Q 1 and Q 2 = O in present claim 18), to tune the UCST value to a desirable value, absent evidence to the contrary . Allowable Subject Matter 12-151-08 AIA 07-43 12-51-08 Claim s 7-8 and 14 are 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. Information Disclosure Statement It is noted that some of the references are listed more than once in IDS different on different days. Only of these references is considered and a line is put through the others. Specifically, US 20080113573 A1 and Mondrzyk et al in IDS filed on 8/17/2023 and 3/10/2025. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to KARUNA P REDDY whose telephone number is (571)272-6566. The examiner can normally be reached 8:30 AM to 5:00 PM M-F. 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 (Lanee) Reuther can be reached at 571-270-7026. 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If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /KARUNA P REDDY/Primary Examiner, Art Unit 1764 Application/Control Number: 18/141,968 Page 2 Art Unit: 1764 Application/Control Number: 18/141,968 Page 3 Art Unit: 1764 Application/Control Number: 18/141,968 Page 5 Art Unit: 1764 Application/Control Number: 18/141,968 Page 6 Art Unit: 1764 Application/Control Number: 18/141,968 Page 7 Art Unit: 1764 Application/Control Number: 18/141,968 Page 8 Art Unit: 1764 Application/Control Number: 18/141,968 Page 9 Art Unit: 1764 Application/Control Number: 18/141,968 Page 10 Art Unit: 1764
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