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 of Group I, Claims 1-5, drawn to a compound in the reply filed on 05 March 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)). Accordingly, claims 1-5 are herein examined on the merits.
Status of the Claims
Claims 1-5 are pending.
Claims 1-5 are currently amended.
Claims 6-11 are currently cancelled.
Priority
This application is a 371 of PCT/US2022/017354 which claims the benefit of US Provisional Application 63/152,249 with an effective filing date of 22 February 2021 as reflected in the filing receipt mailed on 02 November 2023.
Information Disclosure Statement
The information disclosure statements (IDSs) submitted are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements have been considered by the examiner. Please note: The two IDSs appear to be identical.
Specification
The disclosure is objected to because of the following informalities:
The use of the terms Bruker, Nicolet, ThermoScientific, EXFO, Adper, 3M ESPE, Scotchbond, etc., which are trade names or marks used in commerce, have been noted in this application. The terms should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Appropriate correction is required.
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.
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 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Navarro Fernandez et al. (US20190292136, published 26 September 2019, hereinafter Navarro Fernandez) in view of Higa et al. (US20120034481, published 09 February 2012, hereinafter Higa).
Navarro Fernandez is in the known prior art field of “amine core-bearing acrylamides and their use in adhesive formulations, particularly including dental adhesives”, see Abstract, formed by combining the appropriate monomers, see Paras. [0045];[0133]-[0136].
Regarding the limitations of instant application claims 1-5, Navarro Fernandez teaches a general amine core-bearing acrylamide formula of “acrylamide monomer compounds useful in adhesive compositions, the compounds comprising Formula (I):”
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398
358
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, see Paras. [0005]-[0012], with specific the formula of
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136
270
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, see Para. [0045], where instant application R1 is C1 alkyl, see Para. [0045], meeting most of Formula (I) in instant application claim 1, in instant application claim 2, in instant application claim 3, in instant application claim 4, and in instant application claim 5.
Navarro Fernandez does not teach the instant application claims 1 and 5 Formula (I) limitations of a quaternary amine core with an additional C1 alkyl, depicted as the first structure in instant application claim 5.
The specific BMAAPMA structure of Navarro Fernandez is a homolog of instantly claimed Formula (I). Since “compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups” “are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties”, see MPEP 2144.09, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the Navarro Fernandez compound to add a methyl group to create a quaternary amine from the optimal monomers with a reasonable predictability of success for the purpose of efficiently producing an amine core-bearing acrylamide with “varying polymeric complexity that may be used as acrylamide monomers in adhesive compositions or for other uses”, see Navarro Fernandez, Paras. [0005]-[0012];[0045]-[0046], obviously meeting the rest of Formula (I) in instant application claim 1 and in instant application claim 5.
Navarro Fernandez does not teach the instant application claims 2-4 Formula (I) limitations of a quaternary amine core with an additional C10-C20 alkyl.
The specific BMAAPMA structure of Navarro Fernandez is a homolog of instantly claimed Formula (I). Since “compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups” “are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties”, see MPEP 2144.09, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the Navarro Fernandez compound to add an additional C10-C20 alkyl group to create a quaternary amine from the optimal monomers with a reasonable predictability of success for the purpose of efficiently producing an amine core-bearing acrylamide with “varying polymeric complexity that may be used as acrylamide monomers in adhesive compositions or for other uses”, see Navarro Fernandez, Paras. [0005]-[0012];[0045]-[0046], obviously meeting the rest of Formula (I) in instant application claim 2, in instant application claim 3, and in instant application claim 4.
As stated above, Navarro Fernandez does not teach:
The instant application claims 1 and 5 Formula (I) limitations of a quaternary amine core with an additional C1 alkyl, depicted as the first structure in instant application claim 5; and,
The instant application claims 2-4 Formula (I) limitations of a quaternary amine core with an additional C10-C20 alkyl.
Higa is in the known prior art field of combining acrylamide monomers to create a quaternary amine cationic block with good adhesiveness and higher “anti-organic fouling properties”, see Abstract; Paras. [0020]-[0028];[0032]-[0076], where the core nitrogen is “treated with vapor or a solution of an alkyl halide compound to quaternize [the] nitrogen atom” and the “alkyl halide compound used can be a compound represented by CpH2p+1X or X(CH2)qX wherein p is an integer of 1 to 12, q is an integer of 2 to 12, and X is bromine or iodine”, see Para. [0101].
Regarding the limitations of instant application claims 1-5, Higa teaches a general quaternary amine core-bearing acrylamide of formula (2):
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316
446
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, see Paras. [0027]-[0028], with a more specific formula of formula (7):
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154
414
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, see Paras. [0030]-[0031], where any one of R2, R3, and/or R4 may correspond to a C1 alkyl and another one of R2, R3, and/or R4 may correspond to a C10 to C18 alkyl, see Paras. [0028];[0030]-[0031], meeting the quaternary amine with one C1 alkyl, such as R2, and another C10 to C18 alkyl, such as R4, in instant application claim 1, in instant application claim 2, in instant application claim 3, in instant application claim 4, and in instant application claim 5.
In reference to the above claims, since “[s]tructural relationships may provide the requisite motivation or suggestion to modify known compounds to obtain new compounds. For example, a prior art compound may suggest its homologs because homologs often have similar properties and therefore chemists of ordinary skill would ordinarily contemplate making them to try to obtain compounds with improved properties”, see MPEP 2144.08 II.A.4.(c), it would have been obvious to one of ordinary
skill in the art, before the effective filing date of the claimed invention, to have modified the amine core-bearing acrylamides of Navarro Fernandez to the C1 to C18 alkyl quaternary amine core-bearing acrylamides as taught by Higa with a reasonable predictability of success for the purpose of efficiently producing amine core-bearing acrylamides with the desired adhesiveness and “anti-organic fouling properties”, see Higa, Paras. [0020]-[0028];[0032]-[0076];[0101].
A rationale to support a conclusion that the claim would have been obvious is that a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art. Another rationale to support a conclusion that the claim would have been obvious is that the substitution of one known element for another yields predictable results to one of ordinary skill in the art. One of ordinary skill in the art would have been capable of modifying the amine core-bearing acrylamides of Navarro Fernandez by applying the known quaternization technique of Higa with a reasonable predictability of success for the purpose of efficiently producing amine core-bearing acrylamides with the desired adhesiveness and “anti-organic fouling properties”, see Higa, Paras. [0020]-[0028];[0032]-[0076];[0101]; and MPEP 2143 I. B-D.
The rationale to support a conclusion that the claim would have been obvious is that “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense”, see MPEP 2143 I.E. Since patents are part of the literature of the prior art relevant for all they contain, see MPEP 2123, Navarro Fernandez and Higa both teach amine core-bearing acrylamides, a person of ordinary skill in the art has good reason to modify Navarro Fernandez by relying upon Higa before the effective filing date of the claimed invention for knowledge generally available within the amine core-bearing acrylamide art regarding quaternization techniques, see MPEP 2143 B & G and 2141, for the benefit of efficiently producing amine core-bearing acrylamides with the desired adhesiveness and “anti-organic fouling properties”, see Higa, Paras. [0020]-[0028];[0032]-[0076];[0101]; and, MPEP 2141 and 2143 I. B-D.
Furthermore, an “obvious to try” rationale may support a conclusion that a claim would have been obvious where one skilled in the art is choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success, see MPEP 2145 X.B. Since Navarro Fernandez and Higa both teach amine core-bearing acrylamides and Higa teaches quaternization techniques, the prior art contains “detailed enabling methodology, a suggestion to modify the prior art to produce the claimed invention, and evidence suggesting the modification would be successful”, see MPEP 2145 X.B.; therefore, it would have been obvious for one of ordinary skill in the art at the time the invention was made to try the quaternization techniques of Higa on the amine core-bearing acrylamides of Navarro Fernandez to try to obtain “anti-organic fouling properties”, see Higa, Paras. [0020]-[0028];[0032]-[0076];[0101].
As stated in Sakraida v. Ag Pro, Inc., 425 U.S. 273, 189 USPQ 449, reh’g denied, 426 U.S. 955 (1976), “[w]hen a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, §103 likely bars its patentability. For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill”, see MPEP 2141.
Conclusion
No claims are allowed.
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/YO/Examiner, Art Unit 1692
/FEREYDOUN G SAJJADI/Supervisory Patent Examiner, Art Unit 1699
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