DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This application is a national stage entry under 35 U.S.C. §371 of International Application No. PCT/CN2021/075773 filed 2/7/2021.
Claims 1-15 are pending.
Election/Restrictions
Applicant’s election without traverse of Group I Claims 1-9 in the reply filed on 3/25/2026 is acknowledged.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 2 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 2 recites Q is 1, 2, or 3. However, no other option is possible since 1, 2, or 3 substituents on the phenolic ring are possible. Hence, claim 2 does not further limit claim 1 from which it depends.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claims 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Zhang et al. (US 2016/0215142).
Regarding claim 1: Zhang is directed to a composition comprising a phenalkamine represented by the formula (I). Specifically, Zhang discloses the reaction product of
cardanol or cashew nut shell liquid (CNSL), aldehyde, and a polyamine via the Mannich reaction. CNSL mainly comprises cardanol and cardol (see structure of CNDL below). ([0019]). Suitable polyamines include polyoxyethylene diamine, and hence the reaction product of CNSL, aldehyde, and polyoxyethylene diamine results in a phenalkamine of formula I of the present invention wherein X is H or OH, R1 is an aliphatic chain with 15 carbon atoms, H, R3 and R4 are CH2CH2, P, Q are integers.
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While Zhang doesn’t mention a single composition comprising the aforementioned specific formula wherein the polyamines is polyoxyethylene diamine, it would have been obvious to have selected such a formula since Zhang discloses finite number of identified, predictable options and one of ordinary skill in the art could have pursued the known potential solutions with a reasonable expectation of success.
Regarding claim 2: Q is either 1, 2, or 3 since no other option is possible.
Regarding claim 3: Zhang discloses the structure:
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wherein a is
Regarding claim 4: R1 has an unsaturated bond in CNSL.
Regarding claim 5: R1 is C15H31-m wherein m is 0, 2, 4, or 6 in cardol and cardanol.
Regarding claim 6: R2 is H.
Regarding claim 7: Zhang discloses the structure:
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wherein X includes -CH2CH2-O- segments, R0 and R0’ are aliphatic chains of 15 carbon atoms, and a and b are integers ([0026]).
Regarding claim 8: Zhang discloses the structure:
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Where a can b=2, b=0, and c=1, and X1=X3 = -CH2CH2O- (equivalent to formula III of the present invention.
Regarding claim 9: Additives of dispersants, stabilizers, curing promoters, adhesion promoters, pigments, other curing agents, anti-rutting agents, anti-stripping
agents, flow modifiers and fillers ([0048]).
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT T BUTCHER whose telephone number is (571)270-3514. The examiner can normally be reached Telework M-F 9-5 Pacific Time Zone.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Lanee Reuther can be reached at (571) 270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT T BUTCHER/Primary Examiner, Art Unit 1764
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