DETAILED ACTION
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 .
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.
Specification
The disclosure is objected to because of the following informalities:
Applicants disclose the hyperbranched polyamidoamine as having a structural formula (1); however, this structure is not representative of a hyperbranched polyamidoamine, as it does not contain the amide functional group.
Appropriate correction is required.
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 3-6 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 claim 1, applicants claim an oil-soluble hyperbranched polyamidoamine. In claim 3, applicants claim the hyperbranched polyamidoamine as having a structural formula (1); however, this structure is not representative of a hyperbranched polyamidoamine. For example, applicants disclose a hyperbranched polyamidoamine on p. 6 of the instant specification, where there are no C=O-OH bonds. Therefore, it is unclear as to whether the claimed invention is directed to polyamidoamines, as they are known in the art, with a formula, such as R1[-NH-CH2CH2-NH-C=O-CH2CH2-]n, OR if applicants are redefining the hyperbranched polyamidoamine to mean only those with the claimed structure.
Additionally, in claim 3, n is not defined; therefore, the scope of the formula is unclear.
It is noted that since claims 4-6 ultimately or directly depend from Claim 3, they are rejected along with claim 3 because they incorporate all of the limitations of claim 3, including those that are indefinite.
Claim Rejections - 35 USC § 103
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.
Claims 1 and 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over WO 97/21792 in view of JP 2018/100260, as evidenced by Chen (US 2020/0093124). For convenience, the machine translations of WO ‘792 and JP ‘260 will be cited below.
WO ‘792 teaches a lubricating oil for metalworking comprising a base oil, which includes paraffin--based oil, and a sulfonic acid type anion type surfactant. Alkylbenzene sulfonic acid is the most well-known sulfonic acid type anion type surfactant, and the alkyl tail renders it oil soluble.
WO ‘792 teaches the inclusion of a preservative, but does not teach the claimed oil soluble hyperbranched polyamidoamine.
JP ‘260 teaches a hydrophobilically modified dendrimer, exemplified as PAMAM (polyamidoamine), teaching that these hydrophobically modified dendrimers can be used as antibacterial agents in metalworking fluids, where the metalworking fluids include oil based fluids. JP ‘260 teaches the molecular weight of the dendrimer as 300-30,000, which overlaps with the claimed range of 500-40,000.
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to have used the hydrophobilically modified PAMAM dendrimer of JP ‘260 as the preservative in WO ‘792, as WO ‘792 allows for the inclusion of preservatives and JP ‘260 teaches that the hydrophobilically modified PAMAM dendrimers have antibacterial properties.
WO ‘792 does not teach the oil composition for use in olefin polymerization; however, during examination, statements reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the recited purpose or intended use results in a structural difference between the claimed invention and the prior art. See MPEP 2111.02 (II).
The phrase “for olefin polymerization” does not result in a structural difference between the claimed invention and the prior art.
As to the “antistatic” limitation, in addition to imparting antibacterial and hydrophilicity to the material surface, a polyamino residue such as PAMAM imparts antistatic property, as evidenced by Chen (p. 10, [0080]).
As to claim 5, JP ‘260 teaches the hydrophobic group as containing C4-C20 alkyl groups.
Claims 1, 2 and 4-10 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2007/131646 in view of Hedstrand (US 5,560,929), as evidenced by Xi (Ionic Conductivity of Alkali-Metal Carboxylated Dendritic Poly(amidoamine) Electrolytes and Their Lithium Perchlorate Salt Complex, Polymer, 41, 2000, pp. 6103-6111).
WO ‘646 teaches an antistatic for olefin polymerization by contacting a) at least one antistatically acting compound comprising at least one hydrogen atom bound to a nonmetallic heteroatom (i.e. N) with (b) at least one metal alkyl in an amount which is sufficient to react completely with the at least one hydrogen atom bound to a heteroatom, where the metal preferably includes Li (p. 2, ll. 1-14).
WO ‘646 teaches the antistatically acting compound as having an electrical conductivity of at least 0.05 µS/cm, particularly preferably 1 µS/cm (p. 2, ll. 35-40), comprising -NH2 or -NHR1 groups (p. 3, ll. 8-17), and can include polymeric amines or amides (p. 3, ll. 35-36), but does not teach the claimed oil-soluble hyperbranched polyamidoamine.
Hedstrand teaches dense star polymer or dendrimers having a highly branched interior structure capable of associating or chelating with metal ions are modified by capping with a hydrophobic groups capable of providing a hydrophobic outer shell, where the modified dendrimers are useful for dispersing metal ions in a non-aqueous polymer matrix (Abstract). Hedstrand teaches dendrimers to include poly(amidoamine) (col. 3, ll. 40-64), where Gen-3 dendrimer has a molecular weight of about 7000, the hydrophobic groups include carboxyl functionalized hydrocarbon groups, and the metal ions capable of association with the polymer to include Li (col. 6, ll. 54-62).
The conductivity of alkali-metal carboxylated dendritic poly(amidoamine) dendrimers is 10-5 to 10-6 S/cm, which is 0.1-1 µS/cm, as evidenced by Xi (Abstract).
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to have used the hydrophobically modified dendrimers of Hedstrand in the antistatically acting compound, as WO ‘646 does not limit the antistatically acting compound and teaches them to include polymeric amines and amides.
WO ‘646 also teaches that (a) can include an oil-soluble alkylsulfonic acid and a polymeric amine, in combination (p. 4, ll. 20-35). WO ‘646 also teaches that the antistatic can be prepared by introducing as a solution in an inert solvent such as alkanes (p. 6, ll. 21-24).
WO ‘646 in view of Hedstrand is prima facie obvious over instant claims 1 and 6-8.
As to claim 2, WO ‘646 incorporates by reference US 4,182,810 (p. 4, ll. 19-20), who teaches a combination of 5-25 wt% polysulfone copolymer, 5-25 wt% polymeric amine, 5-30 wt% oil-soluble sulfonic acid and 20-85 wt% solvent (col. 3, ll. 11-20). These ranges overlap with the claimed ranges of 1-10% polyamidoamine, 5-30% oil-soluble surfactant and 60-94 wt% solvent, and it has been held that overlapping ranges are sufficient to establish prima facie obviousness. See MPEP 2144.05.
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to have selected from the overlapping portion of the range taught by the reference because overlapping ranges have been held to establish prima facie obviousness.
As to claim 4, Hedstrand teaches the ratio of exterior hydrophobic groups to the highly branched interior structure as preferably 1:5 to 5:1, suggesting a grafting rate of about 17-80%, which overlaps with the claimed range of 5-45%, and it has been held that overlapping ranges are sufficient to establish prima facie obviousness. See MPEP 2144.05.
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to have selected from the overlapping portion of the range taught by the reference because overlapping ranges have been held to establish prima facie obviousness.
As to claim 5, Hedstrand teaches the hydrophobic groups as hydrocarbon groups of 4-40 carbon atoms (col. 4, ll. 16-45).
As to claim 9, WO ‘646 exemplifies the inclusion of 9 ppm of the antistatic mixture (Costelan AS 100/THA, p. 13, Table 1).
As to claim 10, WO ‘646 teaches the catalyst as a Ziegler catalyst (p. 7, ll. 36-38).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIEANN R JOHNSTON whose telephone number is (571)270-7344. The examiner can normally be reached Monday-Friday, 8:00 AM - 4:00 PM EST.
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/Brieann R Johnston/Primary Examiner, Art Unit 1766
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