DETAILED ACTION
This communication responds to the application and amended claim set filed June 9, 2023. Claims 1-14 are currently pending.
Claims 1-14 are REJECTED for the reasons set forth below.
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 .
Priority
This application is the national stage entry of PCT/JP2021/044211, filed December 2, 2021, which claims priority to JP 2020-205257, filed December 10, 2020. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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.
Claims 1-14 are rejected under 35 U.S.C. 103 as being unpatentable over Miyazawa et al. (JP 6489275) in view of Nadano et al. (JP2010-001273).
The examiner will refer to the US version of Miyazawa (US 2021/0317065) and the machine translation of Nadano, which is attached to this communication.
Regarding claims 1, 3-5, and 9-12, Miyazawa teaches the purification and polymerization of the following monomer:
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(Abstract; paras. [0063], [0072]-[0073].)
There are two differences between Miyazawa and the present claims. First, Miyazawa does not explicitly teach the process of making the above monomer. However, the process is known in the art and is referenced in Miyazawa at para. [0011].) Nadano teaches the referenced process of making the above monomer via the following reaction:
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(para. [0011].) The reaction of a diol corresponding to formula (3) with an acrylic acid chloride results in a monomer corresponding to formula (4). Nadano further teaches that a bis-isomer may form with the reaction an acrylic acid chloride with each hydroxyl group in the diol. (para. [0010].) This will result in a monomer corresponding to formula (5).
Second, neither Miyazawa nor Nadano teaches the relative amount of monomer corresponding to formula (5). However, Miyazawa teaches that high purity monomer corresponding to formula (4) is desirable to form more consistent polymers. (para. [0005]-[0006].) Further, the purification processes of both Nadano and Miyazawa are intended to purify the resulting monomer corresponding to formula (4) as much as possible. Thus, it is reasonable to infer that the bis-isomer (an undesirable side product) will be removed as much as possible and will be present in a very small amount.
Regarding claim 2, Miyazawa is silent as to the relative standard deviation of the resulting polymer. However, given that the relative standard deviation corresponds to the low amount of monomer corresponding to formula (5) (see published Specification at paragraph [0030]), it is reasonable to infer that the polymer of Miyazawa as modified by Nadano will possess a relative standard deviation within the claimed range.
Regarding claims 6 and 13, Miyazawa teaches that an additional polymerizable monomer may be added to the polymerization process. (para. [0159].)
Regarding claims 7, 8, and 14, Miyazawa teaches that a radical polymerization process is preferred. (para. [0162].) The polymerization is conducted in an organic solvent such as hydrocarbons or esters. (paras. [0167]-[0168].)
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CATHERINE S BRANCH whose telephone number is (571)270-3539. The examiner can normally be reached Monday through Friday.
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CATHERINE S. BRANCH
Primary Examiner
Art Unit 1763
/CATHERINE S BRANCH/Primary Examiner, Art Unit 1763