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 .
Election/Restrictions
Applicant's election with traverse of Group I in the reply filed on 24 February 2026, and of species of formula(I), claims 1-6 and 10-12 in the reply filed on 27 April 2026 is acknowledged. The traversal is on the ground(s) that the fluorescent element of US2020/0318154A1 (Xu) is not in the polymer chain, however, US2020/0140690A1(Gamsey), which is listed in Applicant’s information disclosure statement, discloses a polymer comprises fluorescent monomers and sodium sulfopropyl methacrylate ([0057] and [0113]) , which meets the claimed multifunctional tracer. Thus Groups I, II and III lack unity of invention because the shared technical feature of the tracer compound is not a special technical feature as it does not make a contribution over Gamsey.
The requirement is still deemed proper and is therefore made FINAL.
Claims 7-9, 13, 14, 16, 17 and 19-23 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention/species.
Claim Rejections - 35 USC § 102
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.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 2, 4 and 10-12 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Gamsey.
` Regarding claims 1, 2 and 4, Gamsey teaches a polymer comprises polymerizable fluorescent dyes and sodium sulfopropyl methacrylate ([0057] and [00113]), which meets the claimed multifunctional tracer.
Regarding claims 10-12, Gamsey teaches that the polymer comprises at least one monomer selected from HEMA (hydroxyethyl methacrylate), methyl methacrylate, sodium sulfopropyl methacrylate, etc., which anticipates the presence of the claimed third unit.
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.
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.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Gamesey.
The teachings of Gamesey are set forth above.
While teaching sodium sulfopropyl methacrylate unit([0057]), Gamesey does not teach the claimed potassium salt of sulfopropyl methacrylate. However, at the time the invention was made it would have been obvious for one of ordinary skill in the art to replace sodium salt with potassium salt since potassium is a close homolog of sodium. "Structural relationships may provide the requisite motivation or suggestion to modify known compounds to obtain new compounds. For example, a prior art compound may suggest its homologs because homologs often have similar properties and therefore chemists of ordinary skill would ordinarily contemplate making them to try to obtain compounds with improved properties." See MPEP2144.08 II A4(c) and 2144.09. I.
Claims 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over US2022/0056329A1 (AIJabri).
AIJabri teaches a polymeric taggant for well drilling comprises a polymer nanoparticles with a fluorescent dye attached to the polymer([0002] and [0016]), wherein the polymer comprises monomers such as 3-sulfopropyl methacrylate potassium salt ([0077]), which meets the claimed first unit, and the fluorescent dye such as fluorescein isothiocyanate can be covalently attached to the nanoparticles by reaction between isothiocyanate and amine group of amine modified acrylate ([0075]), which renders a fluorescence detectable second unit containing isothiocyanate obvious.
Claims 6 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over AIJabri in view of US Patent 4326008 (Rembaum).
The teachings of AIJabri are set forth above.
While teaching covalently attaching fluorescein isothiocyanate to amine modified acrylate by reaction between isothiocyanate and amine modified acrylate ([0075]), AI Jabri does not expressly disclose the amine modified acrylate is 2-aminoethyl methacrylate.
Rembaum teaches 2-aminoethyl methacrylate are readily available commercially and can react with fluorescein isothiocyanate to form a thiourea residue and a polymerizable fluorescent monomer (col2,line 30-33, col.4, line 10-15 and col.5, line 5-20).
At the time the invention was made it would have been obvious for a person of ordinary skill in the art to employ the commercially readily available 2-aminoethyl methacrylate of Rembaum to covalently attach the fluorescein isothiocyanate to the polymer of AI Jabri. The rationale to do so would have been the motivation provided by the teachings of Rembaum that to do so would predictably attach fluorescein isothiocyanate to the acrylate polymer of AIJabri, 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. 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), in the instant case, an amine modified acrylate for covalently attaching fluorescein isothiocyanate. Thus the formation of the claimed formula (I) when q is 0.
Conclusion
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/AIQUN LI/ Ph.D., Primary Examiner, Art Unit 1766
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