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 without traverse of Group I, claims 1-6 in the reply filed on 3/20/2026 is acknowledged.
Claim Status
Claims 1-13 were filed 7/17/2023. Claims 7-13 were canceled in the response filed 3/20/2026. Claims 1-6 are pending.
Priority
The instant application was filed 7/17/2023 and claims the benefit of priority to:
PNG
media_image1.png
124
888
media_image1.png
Greyscale
See filing receipt dated 8/2/2023. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Drawings/Specification
The disclosure is objected to because of the following informalities: the chemical structures on p. 3 and 8-10 are objected to because they are blurry and difficult to read.
Appropriate correction is required.
The drawings are objected to because they are blurry and difficult to read.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claims 1 and 5 are objected to because of the following informalities:
In line 2 of step a) of claim 1 there should be a space between the terms “N2” and “into” in the limitation “N2into”.
In line 3 of step a) of claim 1, there should be a space between the words “reaction” and “system” in the limitation “reactionsystem”.
Claim 5 is objected to because the chemical structure is blurry and difficult to read.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 3 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 3, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 4 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Plueddemann (US 4344860, published on 9/17/1982).
"[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted) See MPEP 2113.
Plueddemann teaches the reaction between N-aminoethyl-gamma-aminopropyltrimethoxysilane ((CH3O)3-Si(CH2)3NH(CH2)2NH2) and 2 moles of acrylic acid to form a dicarboxylic acid:
PNG
media_image2.png
98
336
media_image2.png
Greyscale
. See col. 8, lines 43-48 and example 6 in col. 12. The structural limitations of the product appear to meet the structural limitations of the compound of claim 4. See MPEP 2131.
Claim(s) 4 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Polmanteer (US 3635887, published on 1/18/1972).
"[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted) See MPEP 2113.
Polmanteer teaches the following compound in example 8 in col. 10:
PNG
media_image3.png
162
356
media_image3.png
Greyscale
. The structural limitations of the compound appear to meet the structural limitations of the compound of claim 4. See MPEP 2131.
Subject Matter free from the Art
The process of claims 1-3, 5, and 6 appears to be free from the prior art. Claims 1, 2, 5, and 6 are objected to and claim 3 is rejected under 35 USC 112(b).
The closest prior art to the claimed invention are the processes in: Plueddemann (US 4344860, published on 9/17/1982); Zeng (CN107698615A, published on 2/16/2018, including translation); and Ryan (US3317577, published on 5/2/1967).
As described above, Plueddemann teaches the preparation of a dicarboxylic acid monomer from the reaction between acrylic acid and N-aminoethyl-gamma-aminopropyltrimethoxysilane. Plueddemann does not teach or suggest replacing the acrylic acid with an ester thereof and then hydrolyzing with trifluoroacetic acid to produce the claimed monomer.
Zeng teaches producing an amino-acid modified tetrasiloxane surfactant of the following formula:
PNG
media_image4.png
362
446
media_image4.png
Greyscale
. See claims. When R is CH2CH2NHCH2CH2COONa, this compound is derived from the reaction between N-aminoethyl-gamma-aminopropyltrimethoxysilane (aminotrialkoxysilane) and an acrylate derivative. Zeng teaches that the acrylate derivative is methyl acrylate (a methyl ester of methacrylic acid). Zeng teaches that the aminotrialkoxysilane compound is reacted with methyl acrylate to produce a methyl propionate type tetrasiloxane, which is then hydrolyzed in the presence of an alkali metal hydroxide base to produce the sodium salt above. Zeng does not teach or suggest motivation to carry out the hydrolysis with trifluoroacetic acid (TFA) to obtain the protonated carboxylic acid form of the compound.
Ryan teaches the following example 3 in col. 4:
PNG
media_image5.png
500
426
media_image5.png
Greyscale
. In this example, N-aminoethyl-gamma-aminopropyltrimethoxysilane is reacted with methyl acrylate sequentially to produce the monoester (A), diester (B), and triester (final product). Ryan does not teach or suggest motivation to carry out a hydrolysis with trifluoroacetic acid (TFA) of any of the forms of the ester to form the protonated carboxylic acid products, wherein the hydrolyzed and protonated form of the triester would correspond to the AAPTS-COOH compound of claim 5. The prior art does not appear to teach or suggest this compound.
Therefore, the instantly claimed process appears to be free from the prior art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMY C BONAPARTE whose telephone number is (571)272-7307. The examiner can normally be reached 11-7.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Scarlett Goon can be reached at 571-270-5241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/AMY C BONAPARTE/Primary Examiner, Art Unit 1692
Prosecution Insights