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 .
The Examiner assigned to this application has changed.
Claims 1-17 are pending as amended on 1/20/2026.
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-5, and species wherein the backbone comprises a tannin and wherein the at least one compound is a thiol-functional group in the reply filed on 1/20/2026 is acknowledged. The traversal is on the ground(s) that search and examination of all claims can be made without serious burden.
This is not found persuasive because the cited section of the MPEP is directed to national applications filed under 35 USC 111(a) rather than to national stage applications filed under 35 USC 371. Search burden is not a requirement for restriction of national stage applications filed under 35 USC 371. The unity of invention practice is applied to national stage application filed under 35 USC 371, as described in MPEP 1850. See MPEP 201. A proper prior lack of unity analysis was set forth previously, and therefore the requirement is still deemed proper and is made final.
Claims 6-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
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.
Claims 1-5 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.
Claim 1 recites a functionalized polymeric composition which comprises two components: “a backbone” and “at least compound…”
According to a most reasonable plain language interpretation, claim 1 requires a composition which comprises two separate/distinct components: “a backbone,” and, “at least one compound…” In contrast, based on the specification/examples and, e.g., instant claim 6, there is reasonable basis to conclude that applicant considers the recited functionalized polymeric composition to be a composition comprising a functionalized polymer obtained from the reaction of a polymer (comprising a backbone) and a compound.
As presently worded, it is confusing whether claim 1 is:
met by a composition comprising a functionalized polymer (wherein the functionalized polymer has a backbone, and, has structure derived from at least one compound having at least one thiol or amine group), OR
met by a composition comprising a polymer material (backbone) and a thiol/amine compound (which are capable of forming a functionalized polymer),
and therefore, the scope of claims 1-5 is unclear. For examination purposes, claim 1 has been interpreted as reciting a composition which comprises a functionalized polymer obtained from reacting a polymer (backbone) and at least one compound having a thiol and/or amine group.
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.
Claim(s) 1-5 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Dong et al (CN-104250831-A; included machine translation cited herein).
This is a rejection of the generic claims, not a rejection of the elected species.
As to claims 1 and 5, Dong discloses a modified polymer obtained from reaction of a polymer material, wherein the polymer material can be, e.g., lignin, cellulose, tannin, synthetic polyphenol, etc… (abstract, [0005]). The polymer is prepared by reacting a polymeric material with a compound having the formula
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, and then reacting the modified polymer with
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(see [0005] of machine translation and original document).
Dong exemplifies a modified polymer formed by reaction of lignin with allyl glycidyl ether (AGE) [0045], followed by reaction with cysteamine hydrochloride [0047]. The product of reaction of lignin with AGE and then cysteamine HCl, as exemplified by Dong, is a functionalized polymer composition as presently recited obtained from reaction of a backbone (lignin) and at least one compound having a thiol functional group and an amine functional group (cysteamine HCl).
As to claim 2, lignin, as taught by Dong, can be considered a “polymeric scaffold” as presently recited.
As to claims 3 and 4, Dong teaches a composition according to claim 2, as set forth above, wherein the backbone comprises “polymeric scaffold.” Claims 3 and 4 depend from claim 2, and further limit “the nitrogen-containing polymer” recited in claim 2 to particular structure(s). However, claims 3 and 4 do NOT require the backbone recited in claim 2 to be a nitrogen-containing polymer. In other words, compositions wherein the backbone is a polymeric scaffold are not excluded from claims 3 and 4. Therefore, claims 3 and 4 are anticipated by Dong for the same reasons set forth above for claim 2.
Claim(s) 1-5 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Teng et al (CN-112472693-A; included machine translation cited herein).
This is a rejection of the elected species.
Teng discloses a plant tannin antimicrobial agent with the following structural formula:
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See p 3 of original document.
In the formula shown above, “n” is a positive integer, and the average degree of polymerization is 3.2 to 52.4 (translation p 4), and therefore, the plant tannin antimicrobial agent disclosed by Teng is a functionalized polymeric composition.
Teng teaches that the agent is prepared from raw materials which include plant tannin and a nucleophile (p 4, middle). Teng names several nucleophilic reagents, including cysteamine and cysteamine hydrochloride (p 4, last paragraph), which are compounds having a thiol group and an amine group (and named in instant claim 5). Teng exemplifies an agent formed from reaction of tannin and cysteamine (example 2, p 8 of translation), and which has a degree of polymerization of 52.4 (see Table on p 9 of original document, example 2). Therefore, Teng exemplifies a plant tannin antimicrobial agent formed from a composition comprising tannin (meeting the presently recited “backbone,” as recited in claims 1 and 2) and cysteamine (meeting the presently recited compound having a thiol group and an amine group, as recited in instant claims 1 and 5).
As to claims 3 and 4, Teng teaches a composition according to claim 2, as set forth above, wherein the backbone comprises a tannin. Claims 3 and 4 depend from claim 2, and further limit “the nitrogen-containing polymer” recited in claim 2 to particular structure(s). However, claims 3 and 4 do NOT require the backbone recited in claim 2 to be a nitrogen-containing polymer. In other words, compositions wherein the backbone is a tannin are not excluded from claims 3 and 4. Therefore, claims 3 and 4 are anticipated by Teng for the same reasons set forth above for claim 2.
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.
Claim(s) 1-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dong et al (CN-104250831-A; included machine translation cited herein).
This is a rejection of the elected species.
As to claims 1, 2 and 5, Dong discloses a modified polymer obtained from reaction of a polymer material, wherein the polymer material can be, e.g., lignin, cellulose, tannin, synthetic polyphenol, etc… (abstract, [0005]). The polymer is prepared by reacting a polymeric material with a compound having the formula
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, and then reacting the modified polymer with
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(see [0005] of machine translation and original document), wherein the compound having the thiol and the amine group copied above can be
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(see [0035] of the original document), which is cysteamine HCl.
When forming a modified polymer as disclosed by Dong, the person having ordinary skill in the art would have been motivated to select any polymer starting material from the list of suitable options named by Dong (which includes tannin), and, to select any suitable compound according to the formula
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from the list of suitable options named by Dong (which includes cysteamine HCl), in order to arrive at a polymer suitable to be used for water treatment, as taught by Dong. Case law has established that it is prima facie obvious to choose from a finite number of identified, predictable solutions with a reasonable expectation of success. KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398 (2007). MPEP 2143, rationale (E). It would have been obvious to the person having ordinary skill in the art, therefore, to have formed a modified polymer, as taught by Dong, by reaction of tannin (as the polymer material) with a compound having the formula
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, and then with cysteamine HCl (as the compound having the formula
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), thereby arriving at a functionalized polymeric composition as presently recited, formed from reaction of a backbone (tannin) and a compound having a thiol group and an amine group (cysteamine HCl).
As to claims 3 and 4, Dong teaches a composition according to claim 2, as set forth above, wherein the backbone comprises “tannin.” Claims 3 and 4 depend from claim 2, and further limit “the nitrogen-containing polymer” recited in claim 2 to particular structure(s). However, claims 3 and 4 do NOT require the backbone recited in claim 2 to be a nitrogen-containing polymer. In other words, compositions wherein the backbone is tannin are not excluded from claims 3 and 4. Therefore, Dong suggests a composition according to claims 3 and 4 for the same reasons set forth above for claim 2.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RACHEL KAHN whose telephone number is (571)270-7346. The examiner can normally be reached Monday to Friday, 8-5.
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/RACHEL KAHN/ Primary Examiner, Art Unit 1766
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