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 .
Response to Arguments
The Examiner agrees that neither Yilgor nor Zhang are applicable any longer given that the hydrophobic polymer backbone is now confined to one containing perfluoropolyether segments.
As for the rejection over Re, this disclosure teaches polyurethane prepolymers that are indistinguishable from those claimed and it is the prepolymers over which the rejection is formulated. From page 7 of the 03/11/26 Office action:
“…Re still represents a foundation for rejection because it teaches a prepolymer synthesis where the perfluoropolyether polyol is preliminarily reacted with a diisocyanate and it is the prepolymer that is being equated with the claimed polymer/adhesive for the purpose of this rejection.”
Applicant references instead the thermosetting polyurethanes obtained upon mixing said prepolymers with a mixture of chain extender and crosslinking agent. It is the position of the Examiner that the prepolymers will inherently phase separate so that the urethane bonds are brought together and may participate in hydrogen bonding interactions. These interactions are susceptible to being disrupted by a mechanical force but may be re-established when returned to an equilibrium condition (which doesn’t have to be the initial state). See the claim interpretation section for more development of this aspect.
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.
Claim 1 and the claims dependent therefrom 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.
In response to the Examiner’s initial consternation over the phrase, “ having periodically embedded dynamic bonding units” given the absence of a definition attached to “periodically”, and insofar as the Examiner noted that the most applicable dictionary definition for this term was “at regularly occurring intervals, Applicant has amended claim 1 to state that the dynamic bonding units are “spaced at regular intervals”. While this is perhaps an improvement over the original expression, allowing the Examiner to conclude in concert with the “consisting essentially of” language that the backbone is apparently devoid of contributions from chain extenders insofar as they would disrupt the regularity with which the dynamic bonding units are spaced, the amended claim still lacks the precision that allows a practitioner of the instant invention to determine the full metes-and-bounds of the claim. For instance, Applicant should consider that even if one were use just one commercial source of a perfluoropolyether compound, that product would be comprised of perfluoropolyether molecules of different chain lengths unless its polydispersity was exactly one. In this scenario, the dynamic bonding units would not be all equally spaced apart, or in the language of the claim, spaced at regular intervals. Thus, Applicant has not yet defined this concept in such a way as to make clear their intent.
Claim Interpretation
Seemingly in response to the Examiner’s observation that the phrase “underwater adhesive”, originally disclosed in the preamble, was simply a recitation of intended use, Applicants’ have amended claim 1 so that this same language now appears in the body of the claim. Further, there is an implication that what makes the polymer an underwater adhesive is the fact that its dynamic bonds permit structural rearrangement in response to external mechanical input. Applicants’ reordering of the claim language in order that the “underwater adhesive” now appears in the body of the claim does not fundamentally change the Examiner’s treatment of the claim. The invention is still essentially directed to a polymer compound insofar as there are no other required materials.
Further, the fact that none of the references explicitly recognize the structural attributes correlated with the dynamic bonding units in these prior art polymers as allowing structural rearrangement induced by mechanical input is of no consequence insofar as this aspect is inherently held by the urethane bond phases of said polymers. (The Examiner has made a case that the urethane residues and soft hydrophobic polymer chains reorient into a phase separated configuration. Because the urethane groups are placed into close proximity to one another, they engage in a series of hydrogen bonding interactions that will inherently be broken when the polymer is subjected to a mechanical force/stress only to be re-established when the force is removed. Claim 4 makes clear that urethane groups represent an embodiment of a dynamic bonding unit that that will satisfy the requirement of the fourth-, third-, and second-to-last lines of claim 1.
In Applicants’ argument against Zhang, they note that the self-healing of the dynamic (hydrogen) bonds is in response to said bonds being first broken by thermal activation but this distinction is immaterial. The claims are not process claims and the prior art polymers need only (i) undergo phase separation such that the groups able to participate in dynamic bonding be brought together in forming an immiscible phase, and (ii) the dynamic bonding is of a sort that is broken by a mechanical input. Claim 4 verifies that this condition is met by hydrogen bonds and the skilled artisan knows that it is hydrogen bonding that urethane moieties engage in.
Claim Rejections - 35 USC § 102
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 1-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Re et al., EP 359272 for the reasons outlined previously. While the Examiner believes that Kamarov sufficiently proves that urethane prepolymers of Re will inherently adopt a phase separated arrangement where the hard urethane groups will reside largely in an immiscible phase, it is acknowledged that this disclosure focuses primarily on siloxane-derived polyurethanes. The article entitled “Fluoropolyether Coatings: Relationships of Electrochemical Impedance Spectroscopy Measurements, Barrier Properties and Polymer Structure” authored by Delucchi et al. and published in the Journal of PolymerScience, Part B: Polymer Physics (2002) 40, 52-64 further verifies that perfluoropolyether urethanes are biphasic at page 56, right column.
THIS ACTION IS MADE FINAL. 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 MARC S ZIMMER whose telephone number is (571)272-1096. The examiner can normally be reached M-F 8:30-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Kelley can be reached at 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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September 10, 2026
/MARC S ZIMMER/Primary Patent Examiner, Art Unit 1765
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