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 .
Status of the Claims
2. Claims 1-22 are currently pending. Claims 14-22 have been withdrawn with traverse. Claims 1-13 are currently under examination. This office action is in response to the amendment filed on 12/23/2025.
Claim Objections
3. Claim 1-13 are objected to because of the following informalities: The claims recite in different places both C4 composition and C4 composition as well as C5 composition and C5 composition. Either a subscript should be used for all indications of a particular composition or no subscript should be used for all indications of a particular composition, there should not be some compositions referred to by subscript and some not. 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.
4. Claims 1-13 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.
Concerning claim 1 the claim recites
“wherein the other repeating unit comprises polymerized monomers from a C4 composition or a C5 composition;
wherein the C4 composition comprises isobutene, 1-butene and 2-butene;
wherein the C5 composition comprises 45-55% C5 diene and 8-15% of C5 mono-olefins”
which renders the claim indefinite as it is not clear what the boundaries of the C4 composition or the C5 composition are which thereby makes it unclear what the boundary of “the other repeating unit” because in combination with the comprising language defining the compositions it is not clear what monomers can be present in the compositions and so what monomers can be the claimed other repeating unit. The rejection would hold for claims 3-4 as these claims indicate at least one monomer containing carbon carbon double bond from the (C4 or C5) composition. This rejection would also hold form claim 10 which has the language of “wherein the other monomer having a carbon carbon unsaturated double bond is selected from the C4 composition or the C5 composition”.
Additionally claim 1 recites 45-55% C5 dienes and 8-15% of C5 monoolefins which renders the claim indefinite as it is not clear if these values are in mol% or weight%.
Concerning claim 6 the claim recites “wherein the copolymer A is from a copolymer B” which renders the claim indefinite as it is not clear what is meant by this. Does this mean that copolymer A is a subset of copolymer B? That Copolymer A is made from copolymer B?
Concerning claim 7 the claim recites “wherein the copolymer A is from a reaction of the copolymer B with ammonia” which includes the phrase “copolymer A is from a reaction” which renders the claim indefinite as this is not proper english and it is not clear what is being said.
Claims 2-5 and 8-13 are rejected as being drawn from a rejected base claim.
Claim Interpretation
5. Concerning Claim 1 the recited limitation of “wherein the other repeating unit comprises polymerized monomers from a C4 composition or a C5 composition;
wherein the C4 composition comprises isobutene, 1-butene and 2-butene;
wherein the C5 composition comprises 45-55% C5 diene and 8-15% of C5 mono-olefins”
is provided with its broadest reasonable interpretation that the repeating unit comprises polymerized monomers from on the indicated compositions, but need not include all of the monomer or components of the claimed compositions. That is that the “other repeating unit” need not be the polymerized composition, but must include the polymerized form of a monomer which is a part of the composition. This interpretation is consistent with the indication of claims 3-4 which indicate at least one monomer containing carbon carbon double bond from the (C4 or C5) composition. This interpretation would also be made concerning the claim 10 which has the language of “wherein the other monomer having a carbon carbon unsaturated double bond is selected from the C4 composition or the C5 composition”.
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.
6. Claim(s) 1, 3, 6-10, 12-13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fujimoto (JPS H01-55105 B2; all citations refer to the english language machine translation which is provided unless otherwise stated) as is evidenced by Chikatsu (US 3,800,002).
Concerning claim 1, 3, 12-13 Fujimoto teachess an example of a composition of a polymer of (pg 4 last paragraph and pg 5 paragraph 1)
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Which is dissolved a combination of ammonia water, water and hydrogen peroxide thereby forming an aqueous composition.
It should be noted that the monomer with a subscript of 5 has the claimed structure of the repeating unit having an amide group and a carboxyl group or the ammonia salt thereof.
It should be noted that the monomer having a subscript of 50 has the structure which results from isobutylene.
Chikatsu provides evidence that a C4 hydrocarbon fraction contains butadiene and isobutylene and a C5 hydrocarbon fraction includes pentene and isoprene (column 1 lines 5-20).
As such the polymer of Fujimoto teaches a composition comprising a polymer which includes a repeating unit having an amide group and a carboxyl group or the ammonia salt thereof, and another repeating unit which is derived from isobutylene which is indicated by Chikatsu to be able to be derived from a C4 fraction. It should be noted that there is no indicated of an organic crosslinking agent capable of covalently crosslinking with the amide group and or carboyl group of copolymer A in the initial composition which includes only the polymer, ammonia water and hydrogen peroxide.
Fujimoto does not specifically teach that the isobutylene is particularly sourced from a C4 fraction or that the composition is an adhesive.
However the claims as are currently drafted are drawn to an adhesive composition and not a method of making the adhesive composition and as such the particular method of deriving the additional monomer is considered to be a product by process limitation. It should be noted that the isobutylene monomer indicated by Chikatsu is another name for the isobutene listed in the claimed C4 composition and so the monomer used would have the same structure as a isobutene monomer from a C4 composition as claimed.
"[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP 2113.I.
"The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature" than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974). Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an nonobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 799, 803, 218 USPQ 289, 292-33 (Fed. Cir. 1983). See MPEP 2113.II.
As such since the polymer of a Fujimoto teaches the claimed polymer in an aqueous composition for an adhesive having monomers which have the claimed structures where one of the monomers is from isobutylene which is known to be able to be obtained from a C4 fraction then Fujimoto will have the claimed structure.
If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020). See MPEP 2111.02.
"[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.I.
There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the relevant time, but only that the subject matter is in fact inherent in the prior art reference. Schering Corp. v. Geneva Pharm. Inc., 339 F.3d 1373, 1377, 67 USPQ2d 1664, 1668 (Fed. Cir. 2003). See MPEP 2112.II.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP 2112.01.I.
As such since the composition of Fujimotoi teaches the claimed components the polymer and composition of Fujimoto would be considered to be an adhesive and so would teach the claimed limitations.
Concerning claim 6-10 Fujimoto as is stated above teaches an adhesive composition comprising a polymer having a structure of (pg 4 last paragraph and pg 5 paragraph 1)
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Fujimoto does not specifically teach the method of making this copolymer.
However the claims as are currently drafted are drawn to an adhesive composition and not a method of making the adhesive composition and as such the particular method of deriving the additional monomer is considered to be a product by process limitation.
"[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP 2113.I.
"The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature" than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974). Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an nonobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 799, 803, 218 USPQ 289, 292-33 (Fed. Cir. 1983). See MPEP 2113.II.
However this polymer would have the structure of a polymer which is made by polymerizing maleic anhydride and isobutylene into a copolymer and then reacting the maleic anhydride group with ammonia to give the maleamic acid or salt group and then cyclizing the majority of these groups into maleimide groups.
As such the polymer of Fujimoto would have the claimed structure which would be capable of being made by the indicated methods and as such would teach the claimed limitations.
8. Claim(s) 1-3, 5-13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bacskai (3,720,637) as is evidenced by Bashaw (US 3,989,586).
Concerning claim 1, 3, 5-12 Bacskai teaches crosslinked terpolymers of isobutene maleic anhydride and divinyl benzene (abstract). The polymer is indicated to be formed form a substantially 1:1 equimolar ratio of isobutene and maleic anhydride even if an excess of isobutene is present in the reaction in excess, and the amount of the divinyl benzene is preferably from about 0.1 mol% to about 5 mol% (column 2 lines 20-55).
Bacskai teaches that an amount of divinyl benzene crosslinked isobutene maleic anhydride copolymer is suspended in benzene which was stirred and NH3 gas (ammonia gas) bubbled thorough it which produced a solid polymer which is an amide ammonium salt of the maleic anhydride polymer (column 4 lines 5-20). This polymer was indicated to be used as a thickening agent for a aqueous latex used as adhesives for carpet backings (column 4 lines 60-68 and column 5 lines 1-35).
This indicates that the copolymer is present in an aqueous composition which is an adhesive composition.
Beshaw provides evidence of a copolymer of maleic anhydride with olefins such as butylene and isobutylene which are lightly crosslinked by incorporation of a polyunsaturated compound and the polymer is indicated to be treated with ammonia gas to open the carboxylic anhydride rings to convert one of the carboxyls to an amide and the other to the ammonium salt form (column 3 lines 15-30 and 50-60). This provides evidence that the amide ammonium salt indicated by Bacskai has the claimed repeating unit structure that includes an amide group and a carboxyl group ammonium salt.
Bacskai does not specifically teach that the isobutylene is particularly sourced from a C4 fraction.
However the claims as are currently drafted are drawn to an adhesive composition and not a method of making the adhesive composition and as such the particular method of deriving the additional monomer is considered to be a product by process limitation.
"[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP 2113.I.
"The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature" than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974). Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an nonobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 799, 803, 218 USPQ 289, 292-33 (Fed. Cir. 1983). See MPEP 2113.II.
As such since the polymer of a Bacskai teaches the claimed polymer in an aqueous composition having monomers which have the claimed structures where one of the monomers is from isobutene which is known to be able to be obtained from a C4 fraction then Bacskai will have the claimed structure and meet the claimed limitations.
Concerning claim 2 Bacskai teaches as is stated above a polymer that comprises isobutylene maleic anhydride , the amide ammonium salt of maleic anhydride and divinyl benzene (column 4 lines 5-20). The polymer is indicated to be made from an approximately alternating polymer of isobutene maleic anhydride which comprises 0.007 mol of divinyl benzene per 0.255 mol of maleic anhydride (column 3 lines 50-68 and column 4 lines 1-35). This polymer which is then turned into the amide ammonium salt can be represented by a polymer with a molar ratio of isobutylene maleic anhydride and divinyl styrene of approximately 1:1: 0.02745. Bacskai teaches that if all of the maleic anhydride was turned to the amide ammonium salt than the polymer would have a nitrogen value of 14.87 % but that the exemplary polymer had a nitrogen value of 9.95 %, indicating that approximately 66.9 wt% of the amide ammonium salt units of the maximum possible where present .
Isobutene has a molecular weight of approximately 56.106g/mol, maleic anhydride has a molecular weight of approximately 98.057 g/mol divinyl benzene has a molecular weight of approximately 130.19 g/mol and the amide ammonium salt of maleic anhydride has a molecular weight of approximately 132.088 g/mol .
The polymer with a molar ratio of isobutylene maleic anhydride and divinyl styrene of approximately 1:1: 0.02745 would have approximately 36.38 wt% of isobutene, 63.58 wt% of maleic anhydride and 0.04 wt% of divinyl benzene. The theoretical polymer with a molar ratio of isobutylene maleic anhydride amide ammonium salt and divinyl styrene of approximately 1:1: 0.02745 would have approximately 29.8 wt% of isobutene 70.16 wt% of the maleic anhydride amide ammonium salt and 0.038 wt% of divinyl benzene. However as is stated above only about 66.9 wt% of the amide ammonium salt units of the maximum possible where present. This would indicate that approximately 46.94 wt% of the maleic anhydride amide ammonium salt is present in the exemplary polymer of Bacskai. This value is well within the claimed range of from 10 to 80 wt%, and as such the example of Bacskai would teach the claimed limitations.
Concerning claim 13 Bacskai further indicates an aqueous dispersion consisting essentially of water and a amide-ammonium salt of crosslinked terpolymer of isobutene maleic anhydride and divinyl benzene (claim 5). This composition would not contain an organic crosslinking agent capable of covalently crosslinking with the amide group and or carboxyl of the copolymer.
Bacskai does not specifically teach that this composition is an adhesive.
However this composition of Bacskai teaches each and every one of the claimed components of recited in the composition. Moreover the amide and ammonium salt groups of the polymer are known to be able to provide adhesive properties, as is the carboxyl group which results for maleic anhydride groups being present in water.
If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020). See MPEP 2111.02.
"[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.I.
There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the relevant time, but only that the subject matter is in fact inherent in the prior art reference. Schering Corp. v. Geneva Pharm. Inc., 339 F.3d 1373, 1377, 67 USPQ2d 1664, 1668 (Fed. Cir. 2003). See MPEP 2112.II.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP 2112.01.I.
As such since the composition of Bacskai teaches the claimed components the polymer and composition of Bacskai would be considered to be an adhesive and so would teach the claimed limitations.
Claim Rejections - 35 USC § 103
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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
9. Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fujimoto (JPS H01-55105 B2; all citations refer to the english language machine translation which is provided unless otherwise stated)
Concerning claim 4 Fujimoto teaches the adhesive composition of claim 1 as is stated above which includes the polymer having a structure of (pg 4 last paragraph and pg 5 paragraph 1)
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Fujimoto teaches that the polyemrs which are used have a general structure of pg 2 paragraph 2)
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Where the A unit represent an alpha olefin such as isobutene 1-pentene, isoprene and butadiene (pg2 paragraph 3). As such these monomers would be substantially equivalent and interchanable with one another.
It should be noted that the example above uses isobutene as the alpha olefin monomer, and differs from the claimed polymer only in that a monomer derived from the C5 fraction is not used. It should be noted that the 1-pentene indicated by Fujimoto would be a C5 monoolefin which are recited as part of the C5 composition.
It would have been obvious to one of ordinary skill in the art at the time of filling to alter the exemplary composition of Fujimoto to use 1-pentene or isoprene instead of isobutylene in the exemplary polymer which include a monomer having an amide group and a carboxyl group or the ammonia salt thereof because Fujimoto teaches that alternatives which are substantially equivalent and interchangeable to isobutylene in the polymer include pentene and isoprene which are monomer which have the structure of a monomer derived from a C5 fraction.
Fujimoto does not specifically teach that the pentene or isoprene is particularly sourced from a C5 fraction.
However the claims as are currently drafted are drawn to an adhesive composition and not a method of making the adhesive composition and as such the particular method of deriving the additional monomer is considered to be a product by process limitation.
"[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP 2113.I.
"The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature" than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974). Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an nonobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 799, 803, 218 USPQ 289, 292-33 (Fed. Cir. 1983). See MPEP 2113.II.
As such since the polymer of a Fujimoto renders obvious the claimed polymer in an aqueous composition for an adhesive having monomers which have the claimed structures where one of the monomers is can be pentene or isoprene which are known to be able to be obtained from a C5 fraction then Fujimoto will have the claimed structure and meet the claimed limitations.
Response to Arguments
10. Applicant's arguments filed 12/23/2025 have been fully considered but they are not persuasive. Applicants argue with regard to the rejections over 102/103 that the present application relates to an adhesive comprising at least one of the following copolymer A having
At least one repeating unit carrying and amide group and a carboxyl and/or its ammonium salt and
At least on other repeating unit having polymerized monomers from a C4 or C5 Composition.
This combination of components and chemical structures features beneficially provides unexpected performance characteristics that distinguish the claimed adhesive from conventional formulations disclosed in the prior art. This is born out in the examples which demonstrate that artificial boards prepared using the claimed C4 composition (Example 2) and C5 composition (Example 3) exhibit superior properties of 24 hour water absorption thickness expansion rate, internal bonding strength and internal bonding strength after boiling water testing. Specifically Examples 1. 4 and 8 with styrene Example 5 with vinyl acetate, example 6 with methyl vinyl ether, example 7 with 1-pentene outperform comparative example 10 with isobutene alone.
This argument is not found to be persuasive, as the polymers in the examples can not be directly compared to one another as Example 1 has a Mw of 72,000 and the non aminolyzed polymer had a mass percentage of maleic anhydride of 44%, Example 2 has a Mw of 20,000 the non aminolyzed polymer had a mass percentage of maleic anhydride of 63% while example 3 does not state the Mw but the non aminolyzed polymer had a mass percentage of maleic anhydride of 63%, example 4 has a Mw of 31,000 with the non aminolyzed polymer had a mass percentage of maleic anhydride of 54%, Example 5 has a Mw of 19,000 and the non aminolyzed polymer had a mass percentage of maleic anhydride of 52%, Example 6 has a MW of 216,000 with the non aminolyzed polymer had a mass percentage of maleic anhydride of 61%, example 7 has a Mw of 16,000 and the non aminolyzed polymer had a mass percentage of maleic anhydride of 61 %, example 8 does not give the Mw but gives that the non aminolyzed polymer had a mass percentage of maleic anhydride of 45%, Comparative example 10 gives a Mw of 25,000 with the non aminolyzed polymer had a mass percentage of maleic anhydride of 63% (all values from applicants specification pages 18-23) . As such Example 2 and 3 indicated by applicant can not be directly compared to the other examples as they differ in either Mw, or in the amount of maleic anhydride used to make the polymer. More over it should be noted that as was similarly stated in the interview on Nov 19 2025 that the claim language is interpreted such that it would indicate that any single monomer from the composition could be used and as such the comparative example 10 from applicants specification is within the claimed scope of the claim as the isobutene used is one of the monomers listed as part of the C4 composition. As such the examples provided do not indicated unexpected results between the claimed composition and the non claimed compositions. Moreover unexpected results can not be used to rebut a 102 rejection. As such the rejections provided above are maintained.
Applicant further argues that amended claim 1 now recites that he other repeating comprises polymerized monomers form a C4 composition comprising isobutene, 1-butene and 2-butene or a C5 composition comprising 45-55% C5 dienes and 8-15% C5 mono olefins. As discussed during the interview the cited references fail to disclose the C4 compositions or the C5 compositions specific components.
This argument is not found to be persuasive as during the interview examiner indicated that references would not teach the polymer if the “other monomer” is the polymerized form of the indicated C4 composition or the indicated C5 composition. However the claim language as is currently drafted does not indicate that the entire C4 or C5 composition is polymerized only that there is polymerized monomers from the composition which as indicated in the claim interpretation above has a broadest reasonable interpretation which is met by having one of the monomer of the C4 or C5 composition polymerized into the polymerized monomers. As such the rejection provided above is maintained.
Conclusion
11. Claims 1-13 are rejected. No claims are currently allowable.
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 DAVID L MILLER whose telephone number is (571)270-1297. The examiner can normally be reached M-F 9:30-6:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached at 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DAVID L MILLER/ Examiner, Art Unit 1763
/JOSEPH S DEL SOLE/Supervisory Patent Examiner, Art Unit 1763
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