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 with traverse of Group I (claims 1-19, 42, and 43) in the reply filed on 5/12/2026 is acknowledged. The traversal is on the ground(s) that there is no undue burden placed on the examiner to examine all of the claims. This is not found persuasive because the inventions have acquired a separate status in the art in view of their different classification and a separate status in the art due to their recognized divergent subject matter.
The requirement is still deemed proper and is therefore made FINAL.
Claims 20-41 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 5/12/2026.
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.
Claims 1-19 and 42 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
With respect to claim 1, it is unclear whether “C4-5 olefins” represents C4 or C5 olefins or C4 and C5 olefins or C4 and/or C5 olefins. In the interest of compact prosecution the “and/or” interpretation is relied upon.
With respect to claim 12, it is unclear how a homopolyisoprene polymer prior to functionalization has an average functionality of 1-20 per 10,000 g/mol.
With respect to claims 2-11, 13-19, and 42, they are rejected for failing to cure the deficiency of the claim from which they depend.
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 of this title, 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 1-19, 42, and 43 are rejected under 35 U.S.C. 103 as being unpatentable over Brandes (US 5,633,415).
With respect to claims 1, 3, 4, 7, and 18, Brandes discloses a dispersant including homopolymers or copolymers of conjugated dienes which have been hydrogenated and functionalized (abstract). Brandes teaches that a hydrogenated polymer is modified with a polar functional group such as carboxylic acid which is subsequently reacted with an amine (col. 6, lines 56-62) to form an amide- or imide-functionalized at least partially hydrogenated polymer. Example XX is a partially hydrogenated (saturated and before functionalized) polybutadiene having Mn = 34,600 and Mw/Mn = 1.15 (col. 42, lines 30-31) which is subsequently acylated and imidized to form an imide functionalized C4 polymer (col. 42, lines 34-67).
Brandes does not explicitly disclose a functionality distribution (Fd) of 3.5 or less. Functionality distribution is directly related to Mw/Mn and relative maximum functionality for the 10th and 90th cumulative percentile per average functionality.
Nevertheless, Brades exemplifies a composition with a low Mw/Mn of 1.15.
Given that functionality distribution is based on the functionality of the highest and lowest molecular weights and further given that Brandes exemplifies a composition with a very narrow molecular weight distribution of 1.15, the highest and lowest molecular weights should have functionality distribution (Fd) that overlaps with claimed 3.5 or less.
With respect to claim 2, Brandes teaches that the amount of 1,2 insertions of polybutadiene is 30-90% (col. 8, lines, 45-50). Therefore, the remaining amount of 10-70 % is for 1,4-insertions.
With respect to claims 5, 6, and 14, Brandes does not exemplify a homopolyisoprene, rather it only exemplified a polybutadiene homopolymer.
Even so, Brandes teaches that the polymer includes a homopolymer of isoprene (col. 8, lines 58-61; col. 24, lines 41-47) which includes 100 mol % isoprene units.
Therefore, it would have been obvious to one of ordinary skill in the art to utilize a homopolyisoprene polymer in place of the exemplified polybutadiene—absent a showing of unexpected or surprising results.
With respect to claim 8, Brandes teaches that the polymer includes a homopolymer of isoprene that is modified with a polyamine and therefore provide for claimed pendant amine group (col. 8, lines 58-61; col. 24, lines 41-47). Brandes teaches that homopolymers can have molecular weights higher than 2,000-1,000,000 and still retain liquid properties (col. 15, lines 48-55). Brandes teaches that the amount of 1,2 insertions of conjugated dienes is 30-90% (col. 8, lines, 45-50). Therefore, the remaining amount of 10-70 % is for 1,4-insertions for a conjugated diene, including isoprene.
While Brandes fails to disclose a single embodiment of a homopolyisoprene having claimed molecular weight, functional group, and amount of structural isomers, the homopolymer and its properties are strongly suggested by Brandes.
Therefore, it would have been obvious to one of ordinary skill in the art to obtain a functionalized homopolyisoprene having the claimed properties—absent a showing of unexpected or surprising results.
With respect to claims 9 and 10, this claim only limits C4-5 olefins that are homopolyisobutylene and/or copolymer of isoprene and butadiene—neither of which in Brandes’s Example XX.
With respect to claim 11, Brandes teaches that homopolymers can have molecular weights higher than 2,000-1,000,000 and still retain liquid properties (col. 15, lines 48-55).
With respect to claim 12, Brandes teaches that the hydrogenated polymer is modified with “at least one” polar functional group (col. 6, lines 47-54). While Brandes does not disclose the average functionality of a homopolyisoprene, Brandes does teach having more than one which overlaps with claimed 1-20 per 10,000 g/mol.
Therefore, it would have been obvious to one of ordinary skill in the art to obtain a functionalized polyisoprene having an average functionality like claimed.
With respect to claim 13, there are no styrene repeat units in Brandes’s Example XX.
With respect to claims 15 and 16, exemplified polybutadiene in Example XX is not homopolyisobutylene or a copolymer of isoprene and butadiene.
With respect to claim 17, exemplified functionalized polybutadiene has 13.2 anhydride groups (i.e., functionalization) per polymer chain (col. 41, lines 53-55).
With respect to claim 19, Brandes teaches that there is a lack of undesirable by-products which suggests that side reactions are minimized (col. 4, lines 6-10).
With respect to claim 42, Brandes teaches that the functionalized polymers are used to prepare a liquid concentrate containing 5-90 wt % of the polymer.
With respect to claim 43, Brandes discloses a dispersant including homopolymers or copolymers of conjugated dienes which have been hydrogenated and functionalized (abstract). Brandes teaches that a hydrogenated polymer is modified with a polar functional group such as carboxylic acid which is subsequently reacted with an amine (col. 6, lines 56-62) to form an amide- or imide-functionalized at least partially hydrogenated polymer. Example XX is a partially hydrogenated (saturated and before functionalized) polybutadiene having Mn = 34,600 and Mw/Mn = 1.15 (col. 42, lines 30-31) which is subsequently acylated and imidized to form an imide functionalized C4 polymer (col. 42, lines 34-67).
Brandes does not explicitly disclose a functionality distribution (Fd) of 3.5 or less. Functionality distribution is directly related to Mw/Mn and relative maximum functionality for the 10th and 90th cumulative percentile per average functionality.
Nevertheless, Brades exemplifies a composition with a low Mw/Mn of 1.15.
Given that functionality distribution is based on the functionality of the highest and lowest molecular weights and further given that Brandes exemplifies a composition with a very narrow molecular weight distribution of 1.15, the highest and lowest molecular weights should have functionality distribution (Fd) that overlaps with claimed 3.5 or less.
Brandes does not exemplify a homopolyisoprene, rather it only exemplified a polybutadiene homopolymer.
Even so, Brandes teaches that the polymer includes a homopolymer of isoprene (col. 8, lines 58-61; col. 24, lines 41-47).
Therefore, it would have been obvious to one of ordinary skill in the art to utilize a homopolyisoprene polymer in place of the exemplified polybutadiene—absent a showing of unexpected or surprising results.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VICKEY NERANGIS whose telephone number is (571)272-2701. The examiner can normally be reached 8:30 am - 5:00 pm EST, Monday - Friday.
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, Joseph Del Sole can be reached at (571)272-1130. 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.
/Vickey Nerangis/
Primary Examiner, Art Unit 1763
vn
Prosecution Insights