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, claims 33-48 in the reply filed on 03/25/2026 is acknowledged. The traversal is on the ground(s) that written opinion of the International Searching Authority found unity of invention. This is not found persuasive as the examining decisions by each office are made independently.
Applicant adds that there is no undue search and examination burden for the Examiner to examine all the pending claims. Applicant is reminded that the analysis used to determine whether the office may require restriction differs in national stage applications submitted under 35 U.S.C. 371 (unity of invention analysis) as compared to national applications filed under 35 U.S.C. 111(a) (independent and distinct analysis). Per the discussion provided in the requirement of Restriction/Election as mailed on 01/30/2026 by the USPTO office it was determined that the limitations set forth in claims fail to define a contribution over prior art reference combination of Roeger-Goepfert et al. US 9,011,666 B2 and Grove et al. US 2018/0201733 A1, and fail to constitute a special technical feature and hence there is a lack of unity between the various inventive groups.
Claims 49-61 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected claims, there being no allowable generic or linking claim.
The requirement is still deemed proper and is therefore made FINAL.
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.
Claims 33-46 are rejected under 35 U.S.C. 103 as being unpatentable over Roeger-Goepfert et al. US 9,011,666 B2 and in view of Grove et al. US 2018/0201733 A1.
Roeger-Goepfert discloses a leveling agent composition derived from alkoxylated polyalkanolamine for metal electroplating (col 2, lines 25-28).
Reference Grove teaches a quick-setting polymeric coating composition derived from amine and epoxy compounds (title and abstract), used to coat a metal surface (para [0052]).
Regarding claim 33, Roeger-Goepfert teaches (reference claims 1 and 3), a leveling agent which is obtained by condensing a trialkanolamine of formula (1a) N(R1-OH)3 , to obtain a polyalkanolamine (II). Roeger-Goepfert further discloses alkoxylation of the polyalkanolamine (II) with either a C2-C12 alkylene oxide or glycidyl ether. Roeger-Goepfert discloses (col 16, Example 1) condensation of triethanolamine (corresponding to formula (I), where A1, A2, A3 are linear C1 alkylene, where R1, R1*, R2, R2* are H, and where R3 is # -C(R4 R4*OH), where R4 and R4* are H, and where the resulting leveling agent polytriethanolamine, has a hydroxy number of 611.5 mg KOH/g, which corresponds to applicant’s required intermediate Q.
Roeger-Goepfert further utilizes the generated polytriethanolamine of Example 1 in an alkoxylation reaction (col 17, Example 6) where the moles of hydroxy groups of polytriethanolamine, corresponding to intermediate Q = (611.5/56,100) moles/g x 202.1g=2.2 moles, and which is reacted with 128 g of propylene oxide = 128/58.08 =2.2 moles; resulting in the ratio of moles of hydroxy-group of intermediate Q to moles of propylene oxide of 1:1. Per Roeger-Goepfert’s disclosure (claim 3), it would be obvious to have utilized a glycidyl ether instead of propylene oxide in Example 6. Roeger-Goepfert’s only indicates glycidyl tert-butyl ether as an example of glycidyl ethers (col 7, line 66), but does not limit the use of other glycidyl ethers conforming with Formula (II).
Reference Grove who also teaches closely related polymer adducts to Roeger-Goepfert’s alkoxylated polyalkanolamine, recognizes the equivalence of t-butyl glycidyl ether and 2-ethyl hexyl glycidyl ether (para [0038]), where 2-ethyl hexyl glycidyl ether corresponds to the required glycidyl ether of formula (II), were R9 is branched C8-alkyl.
Since it is prima facie obvious to substitute art recognized equivalents known for the same purpose (MPEP 2144.06 II). An obvious polymer composition P derived from the teaching of Roeger-Goepfert in view of Grove would be wherein Example 6 (as discussed above), 2.2 moles of propylene oxide is substituted with 2.2 moles of 2-ethyl hexyl glycidyl ether (409.9g) and reacted with 2.2 moles of hydroxy groups of polytriethanolamine (202.1g), to obtain an alkoxylated polytriethanolamine corresponding to polymer P. The ratio of moles of hydroxy-group of intermediate Q to moles of 2-ethyl hexyl glycidyl ether corresponding to formula (II) would still be 1:1, and the amount of triethanolamine of formula (I) would be 202.1/(202.1 +409.9) x 100 ≈ 33 wt% and the 2-ethyl hexyl glycidyl ether of formula (II) would be 67 wt%, based on the total weight of polymer P.
It would have been obvious to one of ordinary skilled in the art before the effective filing date of the invention to have substituted propylene oxide in Roeger-Goepfert with the 2-ethyl hexyl glycidyl ether as taught by Grove for the same application of creating a polymeric leveling agent.
Regarding claims 34-38, 40-41 and 45, as discussed when addressing claim 33, Roeger-Goepfert discloses (col 16, Example 1) condensation of triethanolamine (corresponding to 100% of formula (Ia)), where A1, A2, A3 are methylene, where R1, R1*, R2, R2* are H, and where R3 is # -C(R4 R4*OH), where R4 and R4* are H.
Regarding claims 39 and 46, Roeger-Goepfert discloses (col 21, reference claim 10) triisopropanolamine, making the claimed requirement obvious.
Regarding claims 42 and 44, as discussed when addressing claim 1, condensation of triethanolamine to generate the required intermediate Q is disclosed by Roeger-Goepfert. Reference Grove teaches n-hexyl glycidyl ether, which corresponds to R9 requirement of hexyl (Grove para [0038]).
Regarding claim 43, Roeger-Goepfert is silent on the use of diglycidyl ether, however reference Grove teaches multi-functional epoxy compounds such as propylene glycol diglycidyl ether (Grove para [0037]), which corresponds to Formula (IIa), to manage the molecular weight of the polymeric adduct, to tailor its storage stability and fast setting property (para [0036]).
It would have been obvious to one of ordinary skilled in the art before the effective filing date of the invention to have modified the embodiment of Roeger-Goepfert and Grove, as discussed when addressing claim 1, and utilize propylene glycol diglycidyl ether along with n-hexyl glycidyl ether, as taught by Grove for the same application of creating a polymer adduct with desired molecular weight. An artisan skilled in the art would incorporate small amount of the diglycidyl ether conforming with the claimed requirement in order to prevent polymer gelling.
Claims 47-48 are rejected under 35 U.S.C. 103 as being unpatentable over Roeger-Goepfert and in view of Grove, as applied to claims 33-46 above, and further in view of Chung et al. US 4,596,842 and European patent application No. 07120393, cited within Roeger-Goepfert (Equivalent reference Misske et al. US 2010/0234631 is utilized for the rejection below).
Regarding claims 48-49, Roeger-Goepfert teaches (reference claim 3) at least one glycidyl ether as an alkoxylating agent, thus implying that more than one glycidyl ether can be utilized as the alkoxylating agent. Both Roeger-Goepfert and Grove are silent on the glycidyl ether conforming with Formula IIp and IIq. Analogous reference Chung also teaches alkanolamine hydroxy-capped epoxy for cathodic electrocoat (title), and teaches monoepoxides such as dodecyl glycidyl ether and tetradecyl glycidyl ether corresponding to Formula IIp and IIq respectively (Chung col 6, line 49). Advantageously, Chung provides the motivation to utilize the monoepoxides to improve the electrical insulating, flexibility and corrosion resistance properties of the resin (Chung col 6, lines 62-68).
Roeger-Goepfert discloses the condensed triethanolamine (reference claim 10), corresponding to intermediate Q, but does not provide a range of hydroxyl number values of the self-condensed polyalkanolamine in the general disclosure. Roeger-Goepfert however cites European patent application No. 07120393 (col 2, line 6) to provide additional details of the polyalkanolamine. Reference Misske (para [0058]) notes the hydroxyl number of the condensation product, corresponding to intermediate Q, to be 200 to 1500 mg(KOH)/g, which overlap the claimed requirement. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). In the instant case, in the absence of showing of the criticality of the claimed range and owing to the closeness of the materials disclosed, the overlapping range of the prior art is sufficient to support an obviousness rejection.
As discussed when addressing claim 1, obvious embodiment of Roeger-Goepfert and Grove utilizes 2-ethyl hexyl glycidyl ether, which corresponds to glycidyl ether Formula IIr.
It would have been obvious to one of ordinary skilled in the art before the effective filing date of the invention to have further modified Roeger-Goepfert and Grove with dodecyl glycidyl ether and tetradecyl glycidyl ether as taught by Chung for the same application of creating a polymer composition with improved electrical insulating, flexibility and corrosion resistance properties.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Surbhi M Du whose telephone number is (571)272-9960. The examiner can normally be reached M-F 9:00 am to 5:00pm.
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/S.M.D./
Examiner, Art Unit 1765
/JOHN M COONEY/Primary Examiner, Art Unit 1765
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