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 .
Response to Arguments
Predicated on an indication of allowable subject matter in original claim 3, Applicant has amended claim 1 to include its limitations. However, it appears that the Examiner’s earlier statement that the combined limitations of original claims 1 and 3 was premature/erroneous as it was deemed necessary to outline the new foundation for rejection infra. Any inconvenience to Applicant is sincerely regretted.
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.
Claims 1-10 and 12, are rejected under 35 U.S.C. 103 as being unpatentable over Hori et al., U.S. Patent Application Publication No. 2015/216787 in view of Sugiyama et al., JP 08-310979.
Hori is directed a vinyl copolymer bearing low generation carbosiloxane dendrimer moieties and the employment of said copolymer in the formulation of cosmetics. A general formula connoting the structure of the monomer contributing said dendrimer residues and depicted in formula (1’) of [0035] mirrors that which is embraced by claimed formula (1) where prior art variable Z correlates with -R2b-Oc- of claimed formula (2) when c= 0 and Z is an alkylene group [0028]. A first exemplification of the prior art dendrimer-containing monomer depicted in formula 22 is anticipatory of monomer (a) where Y is a methacryloxypropyl group, R1 is a methyl group, a=0, and R1 and Xi+1 are methyl groups (as depicted in claim 3). The prior art monomers (B) comprehensively disclosed in [0041-0043] are correlated with claimed monomer (b).
As for the limitation defining maximum amounts of polymerization inhibitor, there is no mention within Hori of the presence of a corresponding material nor is it completely clear that a skilled practitioner of the prior art invention would infer one to inherently be present. On the other hand, the Examiner acknowledges the suggestion in Applicants’ background section that inhibitors are generally incorporated to ensure stability over the plurality of steps needed to prepare the dendrimer-containing monomers. Moreover, patent disclosures are not required to explain/describe aspects of their invention known to one of ordinary skill thus it may be the case that prior art component (A) does contain some measure of a polymerization inhibitor despite the reference being silent as to its presence. Indeed, Sugiyama indicates that many commercially available acrylic monomers are formulated with 30 to 200 pp, of a polymerization inhibitor [0002] to prevent their polymerization during storage. Assuming that the dendrimer-containing monomer, or even the comonomers (b), are furnished with a polymerization inhibitor present, it would have been obvious to one of ordinary skill as of the effective filing date of the instant invention to remove the inhibitor so that it does not slow their polymerization into a copolymer nor discolor the polymer product.
Sugiyama says that, whereas low boiling point monomers may be isolated from an inhibitor by distillation, higher boiling point monomers, of which the monomer bearing carbosiloxane dendrimer structure would be one, require sufficiently stringent conditions that the inhibitor would also be volatilized. Another known method, alkali extraction, yields poor outcomes as the realization of a high-purity monomer is difficult. Accordingly, the supporting reference advocates instead isolating the polymerization initiator, usually a hydroquinone or phenol-based compound [0002] by treating the monomer with an alumina, molecular sieve, or activated carbon-based monomer [0005,0009]. The monomer may be passed through a pack column of the adsorbing medium [0011]. While Sugiyama is not forthcoming as to a continuous method, developing a batch method into one that is continuous is generally considered to be prima facie obvious in the absence of documented unexpectedly beneficial results. See MPEP 2144.04 and specifically the citation to In re Dilnot, 319 F.2d 188, 138 USPQ 248 (CCPA 1963) (Claim directed to a method of producing a cementitious structure wherein a stable air foam is introduced into a slurry of cementitious material differed from the prior art only in requiring the addition of the foam to be continuous. The court held the claimed continuous operation would have been obvious in light of the batch process of the prior art.). The use of packed adsorbent columns would be especially conducive to a continuous process. Recirculation of a mixture where the column is not so efficient as to remove all of the impurity, in this case residual inhibitor, in a single pass is also a known.
To the extent that a similar means of removing similar classes of impurity from a mixture are taught by Sugiyama, one of ordinary skill has a reasonable expectation that the inhibitor will have been removed to an equivalent extent to that mandated by claims 1 and 2.
Allowable Subject Matter
Claims 11 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. Claims 13-18 are allowable.
There is no suggestion in Hori to add an inhibitor to either monomer component prior to their copolymerization. It is notable that monomer (a) is not initially required to be one containing siloxane dendrimer structure in claim 13. A modified survey of the prior art did find instances where a free radical polymerization inhibitor was intentionally added to a reaction mixture wherein a free radical-polymerizable monomer containing organosilicon moieties was being formed and subsequently co-condensed to provide a siloxane compound containing said polymerizable groups. See, for instance, WO 2022/197363. The reaction(s) involved the input of heat or other conditions that could promote the polymerization of the free radical-polymerizable groups, (meth)acrylic groups in particular. The Examiner did not, though, find any disclosures mentioning the introduction of an inhibitor in the context of that following a previous isolation step where another inhibitor was removed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARC S ZIMMER whose telephone number is (571)272-1096. The examiner can normally be reached M-F 8:30-5:00.
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June 15, 2026
/MARC S ZIMMER/Primary Patent Examiner, Art Unit 1765
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