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 1-7), Species A (hydroxy group) in the reply filed on 2/18/2026 is acknowledged.
Claim 8 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 2/18/2026.
Claim Objections
Claim 3 is objected to because of the following informalities: the close square bracket at the end of the claim before the period should be deleted as there is no corresponding open square bracket. Appropriate correction is required.
Claim Rejections - 35 USC § 112
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 2 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. Claim 2 recites, “The block copolymer according to Claim 1, wherein the first polymer block and the second polymer block have no constitutional unit (u0) represented by any one of General Formulae (u0-1) to (u0-4),
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wherein R represents a hydrogen atom, an alkyl group having 1 to 5 carbon atoms, or a fluorinated alkyl group having 1 to 5 carbon atoms; Yu1, Yu2, Yu3, and Yu4 each independently represents a divalent linking group; Zu1, Zu21, Zu22, Zu31, Zu32, Zu33, and Zu4 each independently represents a substrate adsorptive group; Wu4 represents a cyclic group; and nu represents an integer of 1 or more within a limit of valence” (emphasis added); however, given that a “substrate adsorptive group” is a relative limitation dependent upon a type of substrate to be utilized and thus the intended end use of the block copolymer, wherein one Zu group may be “adsorptive” for one type of substrate but not for another, and that the claim(s) and the specification do not limit the substrate to any particular substrate type or material nor limit each of Zu1, Zu21, Zu22, Zu31, Zu32, Zu33, and Zu4 (collectively referred to as the “Zu group”) to be the same as the substrate adsorptive group represented by each of R1c and/or R1d already recited in independent claim 1 from which claim 2 depends, one having ordinary skill in the art would not be reasonably apprised of the scope of the claimed invention and could not interpret the metes and bounds of the claim so as to understand how to avoid infringement given that one skilled in the art could not determine what constituent unit(s) (u0) would be required to be excluded from the first and second polymer blocks without knowing the substrate material in order to determine whether or not the Zu group thereof is or is not adsorptive thereto. Hence, the negative relative limitation renders the claim indefinite.
Claim Rejections - 35 USC § 102
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.
Claims 1-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kim (US2004/0030019A1). Kim discloses a block copolymer of Formula 5 as shown below and modified by the Examiner with first and second ellipsoids to show the copolymer sections thereof equated to the claimed “A” or first polymer block and “B” or second polymer block,
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“wherein, X4 is hydroxyl group (-OH), amine group (-NH2) or tertiary amine group [-N(R)2; R=methyl or ethyl group]” reading upon the claimed “substrate adsorptive group-containing group” with respect to the claimed R1c and R1d as in instant claims 1 and 3, particularly the elected hydroxy group as in instant claim 4, with each of the claimed m1 and n1 being 1, and each of the claimed m2 and n2 being 0; “Y2 is hydroxyl group (-OH), carboxyl group (-COOH), sulfonic acid group (-SO3H), thiol group (-SH), amine group (-NH2), tertiary amine group [-N(R)2; R=methyl or ethyl group] or phthalic anhydride group (-C6H3C2O3); A1 is a styrenic monomer; B1 is methyl methacrylate (MMA), vinylpyridine, or diene monomer; and, o or p are integers of 10 to 5,000” (Abstract, Paragraphs 0014-0017); and given that Kim specifically discloses examples wherein the block copolymer is a diblock copolymer of poly(styrene-b-methyl methacrylate) (see Examples, particularly Examples 6, 21, and 24), wherein the styrene or A block reads upon the claimed first polymer block as in instant claim 1 that has no constituent unit (u0) represented by Formulae (u0-1) to (u0-4) as in instant claim 2 (particularly no hydroxy group or no X4 group as provided by the diphenylethylene derivative of Kim) and has a “hydrophobic” constituent unit (Na) as in instant claim 5; while the MMA or B block reads upon the claimed second polymer block of instant claim 1 that has no constituent unit (u0) represented by Formulae (u0-1) to (u0-4) as in instant claim 2 (particularly no hydroxy group or no X4 group as provided by the diphenylethylene derivative of Kim) and has a “hydrophilic” constituent unit (Nb) as in instant claim 5 (particularly in light of the instant specification), Kim discloses the claimed invention with sufficient specificity to anticipate instant claims 1-5.
With respect to instant claims 6-7, although Kim discloses that the block copolymers are utilized as polymer matrices for stabilizing nano-sized metal particles or their salts, and not specifically as an “undercoat agent which is used for phase separation of a layer containing a block copolymer on a substrate” as in instant claim 6 or as a “resin composition for forming a phase-separated structure” as in instant claim 7, given that the polymer matrices disclosed by Kim, with or without the nano-sized metals or metal salts stabilized therein, are capable of the same intended end use as recited in the preambles of instant claims 6-7, the Examiner takes the position that Kim also anticipates instant claims 6-7.
Claims 1-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hirao (Recent advance in living anionic polymerization of functionalized styrene derivatives). Hirao discloses in-chain functionalized polystyrene-block-poly(MMA) copolymers (Section 6) with well-defined and controlled structures synthesized by living anionic polymerization utilizing diphenylethylene (DPE) derivatives in order to controllably introduce one or more functional groups into a desired position of the polymer chain, particularly as shown in Scheme 8 (copied below), positioned between the two blocks as in the claimed invention (wherein the residual CH2 group of the DPE derivative may be included as part of “A” or the first polymer block as in the instant examples).
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Hirao discloses that suitable functional groups include hydroxyl, amino, formyl and carboxyl groups (Sections 3 and 6), reading upon the claimed “substrate adsorptive group-containing group” with respect to the claimed R1c and R1d as in instant claims 1 and 3-4, particularly the elected hydroxy group of instant claim 4 (with the claimed n1 being 1, and each of the claimed m1, m2, and n2 being 0); and given that the polystyrene block as the claimed A block reads upon the claimed first polymer block as in instant claim 1 that has no constituent unit (u0) represented by Formulae (u0-1) to (u0-4) as in instant claim 2 (particularly no hydroxy group) and has a “hydrophobic” constituent unit (Na) as in instant claim 5, while the MMA or B block reads upon the claimed second polymer block of instant claim 1 that has no constituent unit (u0) represented by Formulae (u0-1) to (u0-4) as in instant claim 2 (particularly no hydroxy group) and has a “hydrophilic” constituent unit (Nb) as in instant claim 5 (particularly in light of the instant specification), the Examiner takes the position that Hirao discloses the claimed invention with sufficient specificity to anticipate instant claims 1-5.
With respect to instant claims 6-7, although Hirao does not specifically disclose that the block copolymer is an “undercoat agent which is used for phase separation of a layer containing a block copolymer on a substrate” as in instant claim 6 or a “resin composition for forming a phase-separated structure” as in instant claim 7, given that the block copolymers disclosed by Hirao are capable of the same intended end use as recited in the preambles of instant claims 6-7 and that instant claims 6-7 do not provide any additional limitations in the body of the claims do differentiate the claimed “undercoat agent” and claimed “resin composition”, respectively, from the block copolymer of instant claim 1 which is comprised by the “undercoat agent” of instant claim 6 or the “resin composition” of instant claim 7, the Examiner takes the position that Hirao also anticipates instant claims 6-7.
Claims 1-5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hirao (Synthesis of well-defined functionalized polymers and star branched polymers by means of living anionic polymerization using specially designed 1,1-diphenylethylene derivatives; hereinafter referred to as “Hirao 2000”). Hirao 2000 discloses in-chain functionalized polymers produced utilizing diphenylethylene derivatives to provide precise control of the placement and number of functional groups in the polymer chain, wherein Hirao 2000 specifically discloses a scheme for producing ABC star polymers utilizing a well-defined polystyrene-block-PMMA functionalized with a hydroxyl group between the blocks anionically synthesized using 1-[4-(2-tert-butyldimethylsilyloxy)-ethyl]phenyl-1-phenylethylene (structure 23) and then deprotected as illustrated in Scheme 14 (Abstract, Sections 2.2-2.3 and 2.6, p. 1179); wherein the deprotected PS-b-PMMA block copolymer (intermediate) has a structure as shown below (copied from Scheme 14) reading upon the claimed block copolymer as recited in instant claims 1-5, wherein the PS block is the claimed A or first polymer block that has a hydrophobic constituent unit (Na) and no constituent unit (u0) as in instant claims 1-2 and 5, the PMMA block is the claimed B or second polymer block that has a hydrophilic constituent unit (Nb) and no constituent unit (u0) as in instant claims 1-2 and 5, the -CH2CH2OH group is the claimed R1d “substrate adsorptive group-containing group” as in instant claims 1 and 3-4 with Z1 being a hydroxy group (-OH) and the -CH2CH2- reading upon the claimed -X1-Y1- of instant claim 3, with n1 being 1, and each of m1, m2, and n2 being 0, such that Hirao 2000 anticipates instant claims 1-5.
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(from Scheme 14)
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 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Kawaue (US2018/0273794A1) in view of Hirao (discussed in detail above and incorporated herein by reference) or Hirao 2000 (discussed in detail above and incorporated herein by reference) or Hirao (Chain-end- and in-chain-functionalized AB diblock copolymers as key building blocks in the synthesis of well-defined architectural polymers, hereinafter referred to as “Hirao 2011”). Kawaue teaches a brush composition useable for phase-separation of a layer (3) containing a block copolymer formed on a substrate (1) via a brush layer (2) or undercoat layer formed by applying the brush composition to the substrate (1) as shown in Fig. 1, wherein the brush composition comprises a resin component (A) containing a polymeric compound (A1) in which a first polymer block (32a) and a second polymer block (32b) are bonded to each other through a linking group containing a substrate adhering group (32c) (as shown in Fig. 3B, as in instant claims 1 and 6-7) that is preferably selected from the group consisting of a hydroxy group, a carboxy group, a thiol group, a sulfo group, a phosphonic acid group, an amino group and an amide group (reading upon the claimed “substrate adsorptive group-containing group” as in instant claims 1 and 4; Entire document, particularly Abstract, Paragraphs 0001, 0006, 0009-0010, and 0129-0131). Kawaue teaches that each of the first and second polymer blocks of the resin component (A) may be a hydrophobic or a hydrophilic polymer block, with specific reference to a styrene block or an (α-substituted) acrylate ester block, e.g., MMA, wherein the first and second polymer blocks may be the same or different from each other and at least one of the first and second polymer blocks is preferably a styrene structural unit as described in Paragraphs 0065-0128 (reading upon the units of instant claims 2 and 5). Kawaue teaches that the polymeric compound (A1) may be produced by reacting a compound containing a substrate adhering group with t-butyldimethylchlorosilane in the presence of imidazole as described in Paragraphs 0132-0161, such that after polymerization and elimination of t-butyldimethylsilane (e.g., to deprotect the functional groups), the linking group containing a substrate adhering group is preferably a linking group represented by general formula (Y1) as described in Paragraphs 0162-0169, and copied below, such that the difference between the teachings of Kawaue and the claimed invention as recited in instant claims 1-7, particularly when Rb1 as taught by Kawaue is a hydroxyl group as elected, similar to the claimed invention when represented by Formula (n1-6) (of the present specification and copied below to the right of formula (Y1) of Kawaue) is that Kawaue teaches a single bond or an alkylene group of 1 to 3 carbon atoms as Yb01 connecting each substrate adhering group Rb1 to a central carbon atom linking blocks A and B, while in the claimed invention, the substrate adsorptive group-containing group(s) (shown as hydroxyl groups below), e.g., substrate adhering group(s) of Kawaue, are connected via phenyl rings connecting to a central carbon of the linking group linking blocks A and B as shown below.
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(n1-6)
However, given that a phenyl ring or an arylene group is an obvious functional equivalent divalent hydrocarbon group to an alkylene group in the art, and that more specifically, Kawaue teaches that the polymeric compound (A1) can be produced by anion(ic) polymerization utilizing 1,1-diphenylhexyllithium as a polymerization initiator as opposed to n-butyllithium in the process described in Paragraph 0148 as shown in Chemical Formula 17 (Paragraphs 0148-0153); and that each of Hirao, Hirao 2000, and Hirao 2011 similarly teaches anionic polymerization of similar block copolymers utilizing functionalized 1,1-diphenylethylene (DPE) derivatives in order to provide well-defined block copolymers, particularly polystyrene block copolymers as in Kawaue, wherein the number and placement of functional groups within the polymer chain can be precisely controlled (Entire documents), with both Hirao and Hirao 2011 discussing the known phase-separation and/or self-organizing behavior of such block copolymers into ordered structures or assemblies (Hirao, Section 7. Concluding remarks; Hirao 2011, Introduction) as in Kawaue, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to utilize functionalized DPE derivatives in an anionic polymerization process as in Hirao, Hirao 2000, or Hirao 2011 to produce the polymeric compound (A1) of the brush composition for the brush layer in the invention taught by Kawaue comprising first and second polymer blocks bonded together by a linking group containing a substrate adhering group, such as a hydroxy group, as taught by Kawaue, given that an anionic polymerization process utilizing functionalized DPE derivatives provides precise control over the type, number, and placement of the functional groups as taught by Hirao, Hirao 2000, or Hirao 2011, and thus can be easily tailored to provide desired adhesion to a particular substrate material based upon the selected type, number, and position of the functional groups as the substrate adhering groups in the invention taught by Kawaue. Hence, absent any clear showing of criticality and/or unexpected results, the claimed invention as recited in instant claims 1-7 would have been obvious over the teachings of Kawaue in view of Hirao or Hirao 2000 or Hirao 2011 given that it is prima facie obviousness to use a known technique to improve similar devices in the same way and/or prima facie obviousness to simply substitute one known element for another to obtain predictable results.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 6, and 7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 6 of copending Application No. 18/437759 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because copending claim 6 is directed to a “composition used in the method for producing a structure body including a phase-separated structure according to Claim 1, the composition comprising the block copolymer represented by General Formula (n1)” wherein General Formula (n1) is the same as the claimed General Formula (n1), and hence copending claim 6 encompasses the claimed block copolymer of instant claim 1 and is essentially the same as the “undercoat agent” and “resin composition” of instant claims 6 and 7, respectively.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 2-5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 6 of copending Application No. 18/437759, as applied above to claims 1, 6, and 7, in view of Kawaue (discussed in detail above and incorporated herein by reference). As discussed above, copending claim 6 encompasses the block copolymer as recited in instant claim 1, and although copending claims 2-5 recite the same limitations as recited in instant claims 2-5, it is noted that Kawaue teaches a similar block copolymer having substrate adhering/adsorptive group(s), such as hydroxyl, carboxy, and amino group(s) as in instant claims 3-4, for use as an undercoat for producing a structure body including a phase-separated structure as in copending claim 6, wherein Kawaue teaches that suitable polymer blocks for the first and second polymer blocks may be hydrophobic or hydrophilic blocks with examples thereof including polystyrene and (α-substituted) acrylate ester, e.g., MMA, blocks (reading upon the claimed units as recited in instant claims 2 and 5), such that it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to utilize similar polymer blocks and substrate adhering/adsorptive groups as taught by Kawaue in the invention recited in copending claim 6 given that it is prima facie obviousness to simply substitute one known element for another to obtain predictable results. Hence, absent any clear showing of criticality and/or unexpected results, the claimed invention as recited in instant claims 2-5 would have been obvious over copending claim 6 in view of Kawaue.
This is a provisional nonstatutory double patenting rejection.
Citation of pertinent prior art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Vora (US2016/0244557A1) discloses a block copolymer comprising a polymer block chain A and a polymer block chain B, wherein A and B are chemically different, covalently connected polymer chains, which are phase separable and connected via a junction group X(Y(Z)b)a, which comprises a surface active pendant moiety Y(Z)b, and the block copolymers can be produced utilizing a 1,1-diphenylethylene (DPE) derivative. Quirk (Anionic Synthesis of Dimethylamino-Functionalized Polystyrenes and Poly(methyl methacrylates) Using 1-(4-Dimethylaminophenyl)-1-phenylethylene) discloses dimethylamino-functionalized polystyrenes as well as poly(styrene-b-butadiene) diblock copolymers with the dimethylamino group at the interface between the blocks that are synthesized in quantitative yields utilizing a dimethylamino-functionalized 1,1-DPE compound.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MONIQUE R JACKSON whose telephone number is (571)272-1508. The examiner can normally be reached Mondays-Thursdays from 10:00AM-5:00PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached at 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MONIQUE R JACKSON/Primary Examiner, Art Unit 1787