DETAILED ACTION
Claims 1-3, 5-7, 18-21 and 24-31 are pending as amended on 22 July 2026, claims 4, 8-17, 22 and 23 are withdrawn from consideration.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 amendment overcomes the rejection under 35 U.S.C. 102 (a)(1)/(a)(2) over Sridhar. However, a new ground of rejection has been formulated over Sridhar in view of US Patent 4119553 (Cane).
Applicant’s arguments have been fully considered but are moot as they do not apply to the current rejection.
Claim Rejections - 35 USC § 103
Claims 1-3, 5-7 and 18-21 are rejected under 35 U.S.C. 103 as being unpatentable over Sridhar in view of Cane.
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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which has two ester groups and m+n is 1.
Sridhar teaches the reaction is carried out at higher temperature or in the presence of a base catalyst ([0033]).
Sridhar does not teach the presence of M as alkali or alkaline earth metal.
Cane teaches that conventional esterification catalysts such as sodium hydroxide or alkaline earth metal oxide or hydroxide can be employed in the esterification reaction between PIBSA and a polyol in order to minimize the duration of the high temperature treatment (col.3, line 20-25).
At the time the invention was made it would have been obvious for a person of ordinary skill to include conventional esterification catalysts such as sodium hydroxide or alkaline earth metal oxide or hydroxide of Cane in the esterification reaction of Sridhar. The rationale to do so would have been the motivation provided by the teachings of Cane that to do so would minimize the duration of the high temperature treatment (col.3, line 20-25), and further since it has been held that it is prima facie obviousness to use a known material based on its suitability for its intended use, in the instant case, an esterification catalyst. See MPEP 2144.06(II) and 2144.07; In re Fout, 675 F2d 297, 213 USPQ 532 (CCPA 1982); Sinclair & Carroll Co v Interchemical Corp, 325 US 327, 65 USPQ 297 (1945); In re Leshin, 227 F2d 197, 125 USPQ 416 (CCPA 1960) and Ryco, Inc v Ag-Bag Corp, 857 F2d 1418, 8 USPQ2d 1323 (Fed Cir 1988). Thus the combination of Sridhar and Cane renders it obvious the presence of -COOM
due to the reaction of the sodium or alkaline earth hydroxide with acidic group COOH.
Sridhar further 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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which contains multiester group, wherein the COOH is converted to a COOM group in the presence of sodium or alkaline hydroxide as discussed above.
Additionally, Sridhar discloses a compound of the structure ([0041]):
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which also renders the claimed compound of claims 1-3 and 7 when the compound is prepared in the presence of sodium or alkaline hydroxide as discussed above.
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 24-31 stand 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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached at 571-2721302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AIQUN LI/ Ph.D., Primary Examiner, Art Unit 1766
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