DETAILED ACTION
Claims 1-3, 5-7, 18-21 and 24-31 are pending as amended on 25 November 2025, claims 4, 8-17 and 22-23 are withdrawn from consideration.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Applicant’s amendments to the claims and the remarks/arguments have been entered and fully considered.
Response to Amendment and Arguments
Applicant’s arguments have been fully considered but are not persuasive.
Applicant argues that Sridhar teaches optional and catalytic amount of triethylamine to accelerate the reaction of hydroxyacrylate with PIBSA not to neutralize the acid functions of PIBSA. However, this does not change the fact that the reaction mixture contains acidic -COOH group from PIBSA and triethylamine base, which anticipates a salt formation reaction between the COOH group and the base, i.e., triethylamine, thus the presence of triethyl ammonium group. As to the catalytic amount of triethylamine relative to PIBSA, it does not require a 1:1 equimolar ratio for an acid group to react with a base to form a salt, i.e., the reaction product can be a mixture of salt and acid form of PIBSA derived product. In other word, not all PIBSA need to be neutralized to meet the claim.
As such the rejection over Sridhar stand and reiterated below.
Claim Rejections - 35 USC § 112
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.
Claim 30 is 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 30 recites “conversion of any free carboxylic acid groups from the anhydride to an acid salt, an ester, or an amide group”, however, independent claim 24 requires the presence of an amide group in the formula, thus claim 30 fails to include all the limitations of the claim 24 upon which it depends. 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 § 102
Claims 1-3, 5-7 and 18-21 stand rejected under 35 U.S.C. 102 (a)(1)/(a)(2) as being anticipated by Sridhar.
Regarding claims 1-3, 7, 20 and 21, Sridhar teaches a composition comprises a reaction product of polyisobutylene succinic anhydride (PIBSA)with hydroxyalkyl acrylate monomers such as hydroxyethyl methacrylate form a compound such as a compound of the formula ( [0049]):
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210
272
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Which has two ester groups and m+n is 1.
Sridhar teaches the reaction is carried out in the presence of a base exemplified as triethylamine ([0031], [0033] and [0084]), which anticipates the presence of -COO-N+H(C2H7)3 due to the reaction of triethylamine base with acidic group COOH.
Sridhar teaches that the PIBSA has a molecular weight of less than 2300 exemplified as about 1000 ([0031] and [0081]), thus the polyisobutylene chain has a molecular mass of about 900 which corresponds to about 16 isobutylene units or 64 carbon number estimated by the examiner based on formula mass of about 56 of isobutylene and formula mass of 100 of succinic anhydride((1000-100)/56X4), which meets the claimed R1.
Sridhar further discloses that the reaction product can be cured through free radical cure mechanism ([0056]), and curing of the reaction product through free radical would result in a polymer of structure as evidenced by instant disclosure ([0036])
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229
147
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which contains multiester group, wherein the COOH is converted to an OM group, i.e., -COO-N+H(C2H7)3 in the presence of triethylamine ([0084]) as discussed above.
Additionally, Sridhar discloses a compound of the structure ([0041]):
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242
214
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which also anticipates the claimed compound of claims 1-3 and 7 since the compound is prepared in the presence of a base such as triethylamine ([0031] and [0033]), thus the presence of -COO-N+H(C2H7)3 due to the reaction of triethylamine base with acidic group - COOH.
Regarding claims 5 and 6, Sridhar teaches that the compound has a molecular weight of 30,000 ([0029]), which meets the claimed range.
Regarding claims 18 and 19, Sridhar teaches that the reaction mixture comprises toluene as solvent ([0031] and [0093]), and exemplified 600 mL toluene in a reaction mixture of about 1000 g, which is about 55% estimated by the Examiner based on a density of toluene of about 0.87g/mL, which meets the claimed amount.
Allowable Subject Matter
Claims 24-29 and 31 are allowed as directed to allowable species indicated in previous Office action.
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 AIQUN LI whose telephone number is (571)270-7736. The examiner can normally be reached Monday-Friday 9:00 am -4:00 pm.
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/AIQUN LI/Ph.D., Primary Examiner, Art Unit 1766