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 .
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.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1, 2, 4, and 7, and the species of block copolymer shown below in the reply filed on 6/23/2026 is acknowledged.
PNG
media_image1.png
151
220
media_image1.png
Greyscale
Claims 3, 5, 6, and 8-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1, 2, 4, and 7 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1, 2, 4, and 7 of copending Application No. 18/255,023 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Claims 1, 2, 4, and 7 of the copending application are identical to the instant claims 1, 2, 4, and 7.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 4 and 7 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Regarding claim 4: Claim 4 depends from claim 1 and states that the block copolymer is a diblock copolymer, a triblock copolymer, or a multiblock copolymer. A written, independent claim 1 recites a block copolymer comprising at least one block A and at least one block B; the independent claim therefore reads on a copolymer that may comprise any number of blocks that is greater than or equal to 2. Similarly, the phrase “multiblock copolymer” as recited in claim 4 reads on a block polymer wherein the number of blocks can be any value greater than 1. Claim 4 therefore fails to further limit the scope of the parent claim, as any species of block copolymer that would satisfy claim 1 would also fall within the scope of the phrase “multiblock copolymer” in claim 4.
Regarding claim 7: Claim 7 depends from claim 2, and states the block copolymer is chosen from the group consisting of recited structures which include the structures shown below. The examiner notes that he has numbered the structures for convenience in referring to them for the explanation of this rejection.
(1)
PNG
media_image2.png
167
222
media_image2.png
Greyscale
(2)
PNG
media_image3.png
160
218
media_image3.png
Greyscale
(3)
PNG
media_image4.png
194
226
media_image4.png
Greyscale
(4)
PNG
media_image5.png
150
221
media_image5.png
Greyscale
(5)
PNG
media_image6.png
164
214
media_image6.png
Greyscale
(6)
PNG
media_image7.png
192
219
media_image7.png
Greyscale
(7)
PNG
media_image8.png
194
224
media_image8.png
Greyscale
(8)
PNG
media_image9.png
187
226
media_image9.png
Greyscale
(9)
PNG
media_image10.png
192
217
media_image10.png
Greyscale
(10)
PNG
media_image11.png
197
223
media_image11.png
Greyscale
Parent claim 2 requires that the block (A) and block (B) comprise units chosen from a list of specified monomers. With respect to block (A), note that the species recited in claim 2 are all (meth)acrylamides. In contrast, structures (4), (5), (9), and (10) all depict structures wherein the block A comprises methyl (meth)acrylate units. With regards to block B, parent claim 2 recites a list consisting of species of N-alkyl (meth)acrylamide compounds. Note, however, that structures (1), (2), (3), (5), (6), (7), (8), and (10) all depict polymers wherein the B block is an N-alkyl, N’-alkyl (meth)acrylamide. Claim 10 therefore does not require all of the limitations of its parent claim, as it recites multiple structures wherein one or both of block A and block B comprises monomer(s) that are outside the scope of parent claim 2. The examiner suggests that applicant amend claim 7 to depend from claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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, 2, and 4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Penott-Chang et al, published in Colloids and Surfaces A: Physiochemical and Engineering Aspects vol. 295 pages 99-106.
Penott-Chang discloses the production of a hydrophobically modified polyacrylamide having the structure shown below via polymerization of acrylamide and t-octyl acrylamide (abstract; page 100: 2.2 HMPAMs; page 101: Fig. 1).
PNG
media_image12.png
287
323
media_image12.png
Greyscale
Note that Penott-Chang teaches that segregation of the hydrophobic monomers in the micellular polymerization method used to prepare the copolymer shown above results in the production of a block copolymer (for claim 1).
Regarding claimed block A: Note that the first block in the structure shown above is polyacrylamide, corresponding to the claimed block A wherein the monomer is an unfunctionalized acylamide (for claims 1, 2).
Regarding claimed block B: Note that the second block in the structure shown above is poly(N-tert-octyl acrylamide), corresponding to claimed block B wherein the monomer is the N-alkyl acrylamide (for claim 1) N-tert-octyl acrylamide (for claim 2).
Regarding claim 4: The prior art structure corresponds to the claimed invention which is a diblock copolymer.
Claims 1 and 4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Rwei et al, published in Journal of Applied Polymer Science vol 133(13).
Rwei discloses the production of a block copolymer PNIPAAm-b-PNTBA having the structure shown below (abstract; Page 3: Synthesis of PNIPAAm-block-PNTBA and Fig. 1(e); page 4: Table 1).
PNG
media_image13.png
209
252
media_image13.png
Greyscale
Regarding claimed block A: Note that the first block in the structure shown above is poly(N-isopropyl acrylamide), corresponding to block A comprising an N-alkyl acrylamide wherein the alkyl group contains 3 carbon atoms (for claim 1).
Regarding claimed block B: Note that the second block in the structure shown above is poly(N-t-butyl acrylamide), corresponding to block B comprising an N-alkyl acrylamide wherein the alkyl group contains 4 carbon atoms (for claim 1).
Regarding claim 4: The structure shown above is a diblock copolymer.
Claim(s) 1, 2, 4, and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gibson et al, Polymer Chemistry vol 12 pages 2165-2174 (2021).
Gibson discloses a diblock copolymer POAA-PDMAC (for claim 4) having the structure shown below (page 2169: Scheme 2).
PNG
media_image14.png
154
275
media_image14.png
Greyscale
Note that the first block is poly(N,N-dimethyl acrylamide) (for claim 2), corresponding to claimed block A comprising repeating units of a N-alkyl, N-alkyl acrylamide wherein the alkyl group is a C1 alkyl (for claim 1). The prior art second block is poly(t-octyl acrylamide) (for claim 2), corresponding to the claimed block B comprising repeating units of N-alkyl acrylamide wherein the alkyl group is a C8 group (for claim 1).
Regarding claim 7: The structure shown above corresponds to the 11th structure in the recited list. Gibson further teaches a polymer wherein the POAA block comprises 82 units and the PDMAC block comprises 100 units (page 2171: Fig. 7).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Penott-Chang et al, published in Colloids and Surfaces A: Physiochemical and Engineering Aspects vol. 295 pages 99-106.
As discussed earlier in this Action, Penott-Chang discloses a block copolymer comprising a polyacrylamide block and a poly(t-octyl acrylamide) block. Note that this corresponds to the 9th claimed structure wherein R1 and R2 are both hydrogen.
Penott-Chang is silent regarding the production of a block copolymer wherein the value of each of variable x and variable y is in the range of 10 to 10000.
“[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation"; see In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See also In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) (MPEP § 2144.05(II)(A)).
As discussed earlier in this Action, Penott-Chang discloses the production of a block copolymer comprising a first block of polyacrylamide, corresponding to claimed block A, and a second block of poly(t-octyl acrylamide), corresponding to claimed block B. Furthermore, Penott-Chang teaches that the polymerization of t-octyl acrylamide is performed to incorporate hydrophobic group(s) into the polymer. The number of repeating units in each block of the prior art polymer therefore is a result effective variable, affecting both the overall molecular weight (i.e., increasing the number of repeating units will result in a corresponding increase in molecular weight as the chain becomes longer) and the balance of hydrophilic/hydrophobic properties of the block copolymer. Barring a showing of evidence demonstrating the criticality of the claimed values, it therefore would have been obvious before the effective filing date to vary the number of repeating units in each block through routine experimentation in order to optimize the molecular weight and hydrophilic/hydrophobic properties of the block copolymer of Penott-Chang.
Claim(s) 1, 4, and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Kawasaki et al, US2016/0208149.
Kawasaki discloses the production of a block copolymer (for claim 1) comprising a polymer block A and a polymer block B (¶0014). The prior art block copolymer is only required to comprise the block A and block B, corresponding to the claimed diblock structure (for claim 4).
Regarding the claimed block A: The prior art block A comprises (meth)acrylic acid ester unit(s). Methyl (meth)acrylate, ethyl (meth)acrylate, n-propyl (meth)acrylate, and isopropyl (meth)acrylate are all disclosed to be suitable embodiments of the (meth)acrylic acid ester of prior art block A (¶0014, 0018). Note that these are all compounds wherein the alkyl group contains 1 to 3 carbon atoms. The prior art block A therefore corresponds to claimed block A comprising alkyl (meth)acrylate units (for claim 1).
Regarding the claimed block B: Prior art polymer block B comprises an N-substituted (meth)acrylamide unit having the structure shown below (¶0014, 0024)
PNG
media_image15.png
115
116
media_image15.png
Greyscale
Kawasaki teaches that R4 may be a hydrogen or methyl group and R3 can be an alkyl group such as a t-butyl group or a pentyl group (¶0025). Note that the named species of alkyl group-i.e., t-butyl group and pentyl group- contain 4 (t-butyl) or 5 (pentyl) carbon atoms. The prior art block B comprising the structure depicted above therefore corresponds to the claimed block B comprising N-alkyl functionalized (meth)acrylamide (for claim 1).
Regarding claim 7: The prior art teaches a block copolymer wherein the block A may be poly(methyl methacrylate) and the block (B) may be poly(t-butyl methacrylamide). Note that this corresponds to the 7th formula in the recited list. Furthermore, Kawasaki teaches that the block A (¶0021) and block B (¶0042) individually have a molecular weight of the A block may be 500 to 500000. Based on the molecular weights of methyl methacrylate (100.12 g/mol) and t-butyl methacrylamide (141.21 g/mol), this corresponds to a polymer wherein the poly(methyl methacrylate) block comprises about 5 to 4,994 repeating units and poly(t-butyl methacrylamide) comprises about 4 to 3541 repeating units.
Kawasaki does not specifically exemplify the production of a block copolymer wherein the A block and B block comprise the units required by the claimed invention.
It has been held that the selection of a known material based on its suitability for its intended is prima facie obvious; see Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (MPEP § 2144.07).
As noted above, Kawasaki teaches the production of a block copolymer comprising a (meth)acrylate block A and a N-alkyl (meth)acrylamide block B. Furthermore, Kawasaki teaches the use of (meth)acrylates comprising a C1 to C3 alkyl group and N-alkyl (meth)acrylamides having a C4 or C5 alkyl group as the monomers for use in the production of the block and block B, respectively. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious before the effective filing date to prepare a block copolymer comprising the required monomers in each block in view of the teachings of Kawasaki.
Response to Arguments
Applicant's arguments filed 6/23/2026 have been fully considered with regards to the availability of Gibson as prior art but they are not persuasive.
Applicant argues that the instant application claims priority to U.S. Provisional application 63/183,279 which would give it an effective filing date of May 3,2021. In response, the examiner notes that the application file currently only shows a claim to the international application PCT/US2022/027254. As such, the instant application currently has an effective filing date of May 2, 2022, more than one year after the publication date of Gibson. Gibson therefore currently qualifies as prior art under 35 U.S.C. 102(a)(1).
Applicant may file a corrected application data sheet claiming priority to the provisional application (see MPEP 601.05(a)(II)) and request an updated filing receipt to have the claim for priority to the provisional application entered.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEFFREY S LENIHAN whose telephone number is (571)270-5452. The examiner can normally be reached Mon.-Fri. 5:30-2:00PM.
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, Heidi Riviere Kelley can be reached at 571-270-1831. 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.
/JEFFREY S LENIHAN/Primary Examiner, Art Unit 1765
Prosecution Insights