Detailed Office Action
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Acknowledgment of Election in Response to Unity of Invention Requirement
2. Applicant’s election without traverse of Group I, claims 1-8 and 38, in the reply filed on 22 June 2026 is acknowledged. Claims 9, 10, 12, 15, 17, 18, 23, 24, 26, 30, and 32 have been withdrawn from further consideration as being drawn to non-elected inventions.
Prior Art Rejections
3. 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.
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.
4. Claims 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Pattison (US 2,870,097) in view of JP H1135791-A.
Pattison discloses a poly(cyclic acetal) produced by polymerizing 1,3-dioxepane with hydroxyl or mercapto compounds to yield polymers having hydroxyl or thiol terminal groups having melting points that overlap those claimed, wherein it is disclosed that the molecular weight of the polymer may be controlled by controlling the ratio of cyclic acetal to polyol. See column 1, line 15 through column 2, line 55.
5. Though Pattison teaches how to control the molecular weight of the poly(cyclic acetal) polymer, the reference does not disclose that the number average molecular weight is from about 10 kiloDaltons (kDa) to about 3000 kDa. However, the production of poly(cyclic acetal) polymer, possessing excellent thermal stability and suitable for the production of moldings, having molecular weights that fall within those claimed was known at the time of invention as evidenced by JP H1135791-A. See abstract and paragraphs [0001], [0004], [0005], and page 3, fifth paragraph within the provided English translation. Accordingly, the position is taken that it would have been obvious to produce poly(cyclic acetal) polymers of the primary reference having the claimed molecular weight. Furthermore, within page 3, fourth paragraph of the translation, it is disclosed that the presence of hydroxyl groups within the polymer is disadvantageous, because it promotes decomposition. Considering this teaching in combination with the aforementioned thiol teachings within the primary reference, the position is taken that one would have been motivated to reduce the content of terminal hydroxyl groups to correspond to the claimed terminal hydroxyl groups content, so as to obtain a polymer having greater resistance to decomposition, while in use in such applications as moldings, as provided for by the secondary reference.
6. Claim 38 is rejected under 35 U.S.C. 103 as being unpatentable over Pattison (US 2,870,097) in view of JP H1135791-A and further in view of KR 10-2017-0010391 A.
Pattison discloses a poly(cyclic acetal) produced by polymerizing 1,3-dioxepane with hydroxyl or mercapto compounds to yield polymers having hydroxyl or thiol terminal groups having melting points that overlap those claimed, wherein it is disclosed that the molecular weight of the polymer may be controlled by controlling the ratio of cyclic acetal to polyol. See column 1, line 15 through column 2, line 55.
7. Though Pattison teaches how to control the molecular weight of the poly(cyclic acetal) polymer, the reference does not disclose that the number average molecular weight is from about 10 kiloDaltons (kDa) to about 3000 kDa. However, the production of poly(cyclic acetal) polymer, possessing excellent thermal stability and suitable for the production of moldings, having molecular weights that fall within those claimed was known at the time of invention as evidenced by JP H1135791-A. See abstract and paragraphs [0001], [0004], [0005], and page 3, fifth paragraph within the provided English translation. Accordingly, the position is taken that it would have been obvious to produce poly(cyclic acetal) polymers of the primary reference having the claimed molecular weight. Furthermore, within page 3, fourth paragraph of the translation, it is disclosed that the presence of hydroxyl groups within the polymer is disadvantageous, because it promotes decomposition. Considering this teaching in combination with the aforementioned thiol teachings within the primary reference, the position is taken that one would have been motivated to reduce the content of terminal hydroxyl groups to correspond to the claimed terminal hydroxyl groups content, so as to obtain a polymer having greater resistance to decomposition, while in use in such applications as moldings, as provided for by the secondary reference.
8. Pattison and JP H1135791-A fail to disclose the claimed depolymerization method of the disclosed poly(cyclic acetal) polymers; however, the depolymerization of polyoxymethylene in the presence of nitric acid was known at the time of invention, as evidenced by the disclosure within page 2, seventh text paragraph of KR 10-2017-0010391-A. Accordingly, one seeking to decompose/recycle the poly(cyclic acetal) polymers would have motivated to depolymerize them by heating in the presence of a strong acid. Though the reference fails to disclose the claimed pressure condition, the position is taken that operation at the claimed pressure condition would have been obvious, because (1) the claimed pressure condition encompasses atmospheric pressure, which would have been expected to be a conventional process condition, and (2) determining the optimal pressure condition would have required only routine experimentation.
Conclusion
9. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Rabon A Sergent whose telephone number is (571)272-1079. The examiner can normally be reached on Monday through Friday from 9:00 AM until 5:00 PM, ET.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Riviere Kelley, can be reached at telephone number (571)270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RABON A SERGENT/ Primary Examiner, Art Unit 1765
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