Detailed Office Action
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 112
2. 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.
3. Claims 1-5, 8, and 9 are 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.
With respect to claims 1, 3-5, 8, and 9, the language, “low-viscosity”, is subjective; it is unclear quantitatively exactly what constitutes “low-viscosity”.
With respect to claims 1 and 3, though applicant has specified the weight average molecular weight of the oxetane-based polymer, applicants has failed to define the variable , n.
With respect to claim 3, the language, “oxirane substituted by R1”, renders the claims indefinite, when R1 is hydrogen, because “substituted” is understood to mean that a hydrogen has been replaced with another group; however, one definition of R1 is hydrogen. In other words, when R1 is hydrogen, the oxirane is not substituted.
Prior Art Rejection
4. 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.
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.
5. Claims 1, 2, 8, and 9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP 2010-254893 A.
JP 2010-254893 A discloses the reaction under thermal conditions of a polymer that meets applicant’s Formula (I). Applicant’s attention is directed to general formula (2) within page 3 of the Japanese language reference and pages 2 and 3 of the provided English language translation. When m is 2 to 10 of disclosed general formula (2), general formula (2) is polymeric. Furthermore, specific examples of general formula (2) are disclosed as being 3-ethyl-3-hydroxy-poly(ethyleneoxy) methyl oxetane and 3-ethyl-3-hydroxy-poly(propyleneoxy) methyl oxetane. Regarding claim 2, in accordance with In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990), a chemical composition and its properties are inseparable; therefore, since the disclosed exemplified prior art polymer of general formula (2) and instantly claimed Formula (I) are the same, the claimed viscosity property is necessarily present. See MPEP 2112.01(II).
6. Claims 1, 2, 8, and 9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP 2019-23256 A.
JP 2019-23256 A discloses the reaction under active energy ray conditions (paragraph [0068]) of a polymer that meets applicant’s Formula (I). Applicant’s attention is directed to formula (2b) within paragraphs [0041]-[0046] of the English language translation. When m is 2 to 5 of disclosed formula (2b), formula (2b) is polymeric. Furthermore, specific examples of formula (2b) are disclosed as being 3-ethyl-3-hydroxy-poly(ethyleneoxy)methyloxetane and 3-ethyl-3-hydroxy-poly(propyleneoxy) methyl oxetane. Regarding claim 2, in accordance with In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990), a chemical composition and its properties are inseparable; therefore, since the disclosed exemplified prior art polymer of formula (2b) and instantly claimed Formula (I) are the same, the claimed viscosity property is necessarily present. See MPEP 2112.01(II).
7. Claims 1-3, 5, 8, and 9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CN 112341617A.
CN 112341617 A discloses the reaction under thermal conditions of a polymer that meets applicant’s Formula (I). Applicant’s attention is directed to Example 1 within page 3 of the provided English language translation. Within Example 1, 3-ethyl-propylene oxide methanol, corresponding to 3-ethyl-3-hydroxyethyloxetane, is reacted with oxirane (a mixture of ethylene oxide and propylene oxide) in the presence of sodium methoxide, yielding an alkaline condition, and under temperature and pressure conditions that meet those of instant claim 5 to yield a polyether of one functionality and having a molecular weight of 1003. Regarding claim 2, in accordance with In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990), a chemical composition and its properties are inseparable; therefore, since the disclosed prior art polymer of Example 1 and instantly claimed Formula (I) are produced using the same reactants under the same conditions to yield the same polymer, the claimed viscosity property is necessarily present. See MPEP 2112.01(II).
8. Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over CN 112341617A in view of Adkins et al. (US 2014/0275310 A1).
CN 112341617 A discloses the reaction under thermal conditions of a polymer that meets applicant’s Formula (I). Applicant’s attention is directed to Example 1 within page 3 of the provided English language translation. Within Example 1, 3-ethyl-propylene oxide methanol, corresponding to 3-ethyl-3-hydroxyethyloxetane, is reacted with oxirane (a mixture of ethylene oxide and propylene oxide) in the presence of sodium methoxide, yielding an alkaline condition, to yield a polyether of one functionality and having a molecular weight of 1003.
9. Though the primary reference discloses the use of sodium methoxide, the primary reference fails to disclose the use of the claimed compounds of claim 4 to achieve an alkaline condition. However, for the polymerization/reaction of alkylene oxides, the use of alkaline catalysts such as those claimed were known to be equivalent to sodium methoxide at the time of invention, as supported by paragraph [0073] and claim 2 of the secondary reference. Accordingly, the position s taken that it would have been obvious to use the known equivalent catalysts in place of sodium methoxide, so as to arrive at the instant process.
Conclusion
10. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Rabon A Sergent whose telephone number is (571)272-1079. The examiner can normally be reached on Monday through Friday from 9:00 AM until 5:00 PM, ET.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Riviere Kelley, can be reached at telephone number 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RABON A SERGENT/Primary Examiner, Art Unit 1765