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 .
Status of Claims
Claims 1, 10-28, 32, 38, 40-44 are pending in the present application.
Claims 2-9, 29-31, 33-37, and 39 are canceled in the present application.
Claim Interpretation
Claim 28 recites the term “about.” In determining the range encompassed by the term "about," one must consider the context of the term as it is used in the specification and claims of the application. Ortho-McNeil Pharm., Inc. v. Caraco Pharm. Labs., Ltd., 476 F.3d 1321, 1326, 81 USPQ2d 1427, 1432 (Fed. Cir. 2007). See MPEP 2173.05(b) III A. The specification as originally filed defines the term “about” at Page 8 Line 42 to Page 9 Line 3 as including ±5% deviation of the recited range or value. For the purpose of examination, limitations preceded by the term “about” are interpreted as including ±5% deviation of the recited range or value.
Claims 10, 12, and 14 recite the acronym term “PAG.” The specification as originally filed defines the term “PAG” at Page 13 Lines 27-33 as polyalkylene oxide-polymers of any type. For the purpose of examination, the acronym “PAG” is interpreted as defined at Page 13 Lines 27-33.
Specification
The disclosure is objected to because of the following informalities:
Page 2 Line 31 recites “unmodified polyakylene oxides.” This appears to contain a typographical error, and should be likely be amended to recite “unmodified polyalkylene oxides.”
Page 2 Line 33 recites “such polyakylene oxides.” This appears to contain a typographical error, and should be likely be amended to recite “such polyalkylene oxides.”
Page 5 Line 29 recites “Prior art on graft polymers on polylakylene oxides.” This appears to contain a typographical error, and should be likely be amended to recite “Prior art on graft polymers on polyalkylene oxides.”
Page 13 Line 27 recites “‘PAG’ as used herein are polyakylene oxide-polymers.” This appears to contain a typographical error, and should be likely be amended to recite “‘PAG’ as used herein are polyalkylene oxide-polymers.”
Appropriate correction is required.
Claim Objections
Claims 1, 10, 11, 12, 13, 17, 21, 23, 24, and 25 are objected to because of the following informalities:
Claim 1 recites on Page 5 “the polymer backbone A” and “polymerizable with monomer B1.” For uniformity and consistency, the claim should be amended to recite “the polymer backbone (A)” and “polymerizable with monomer (B1).”
Claim 10 recites on Page 6 “polymerizable with monomer B1.” For uniformity and consistency, the claim should be amended to recite “polymerizable with monomer (B1).”
Claim 11 recites “the polymer backbone A.” For uniformity and consistency, the claim should be amended to recite “the polymer backbone (A).”
Claim 12 recites on Page 6 “(A) polymer backbone A,” and on Page 7 “grafted onto the polymer backbone A” and “polymerizable with monomer B1.” For uniformity and consistency, the claim should be amended to recite “(A) polymer backbone (A),” “grafted onto the polymer backbone (A),”and “polymerizable with monomer (B1).” Alternatively, on Page 6 “(A) polymer backbone A” could be amended to recite “(A) polymer backbone
Claim 12 recites the limitation “a) at least one mono-ol mono-carbonic acid of poly alkylene oxide (PAG) (PAG-MC) being reacted with itself; b) at least one di-ol of poly alkylene (PAG) (PAG-DO) with at least one PAG containing two carbonic acids as end-group; or c) at least one mono-ol mono-carbonic acid of poly alkylene oxide (PAG) (PAG-MC) with at least one di-ol of poly alkylene oxide (PAG) (PAG-DO) and at least one PAG containing two carbonic acids as end-group; ….” The inclusion of (PAG) appears to be redundant, confusing, and unnecessary when immediately preceding another parenthetical. Unless further clarification is provided, the claim should be amended to recite “a) at least one mono-ol mono-carbonic acid of poly alkylene oxide reacted with itself; b) at least one di-ol of poly alkylene
Claim 13 recites “the polymer backbone.” For uniformity and consistency, the claim should be amended to recite “the polymer backbone (A).”
Claim 17 recites “the polymer backbone A.” For uniformity and consistency, the claim should be amended to recite “the polymer backbone (A).”
Claim 21 recites “monomers B2a” and “monomers B2b.” For uniformity and consistency, the claim should be amended to recite “monomers (B2a)” and “monomers (B2b).”
Claim 23 recites “polymerizable with monomer B1.” For uniformity and consistency, the claim should be amended to recite “polymerizable with monomer (B1).”
Claim 24 recites “the total amount of monomers B,” “monomers B2a,” “monomers B2b,” and “the total amount of monomers B.” For uniformity and consistency, the claim should be amended to recite “the total amount of monomers (B),” “monomers (B2a),” “monomers (B2b),” and “the total amount of monomers (B).”
Claim 25 recites “the monomer B2.” For uniformity and consistency, the claim should be amended to recite “the monomer (B2).”
Claim 25 recites “N-vinyllactame.” This contains a typographical error, and should be amended to recite “N-vinyllactam
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.
Claims 11-13, 20-22, 24, 27, and 28 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 11 recites the relative term “low molecular weight di-carbonic acids” that renders the claim indefinite. The term is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear what quantitative molecular weight range is required to satisfy the term “low.” For the purposes of examination, the claim is interpreted as instead reciting “di-carbonic acids.”
Claim 12 recites the relative term “low-molecular weight di-carboxylic acid compounds” that renders the claim indefinite. The term is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear what quantitative molecular weight range is required to satisfy the term “low.” For the purposes of examination, the claim is interpreted as instead reciting “
Claim 12 recites the relative term “at least one low molecular weight di-carbonic acids” that renders the claim indefinite. The term is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear what quantitative molecular weight range is required to satisfy the term “low.” For the purposes of examination, the claim is interpreted as instead reciting “at least one
Claim 12 recites the limitation "PAG-DC" that has insufficient antecedent basis. “PAG-DC” is not previously recited by claim 12 or by claim 1 from which it depends, and one of ordinary skill in the art would not be reasonably apprised of the definition and scope of this limitation. For the purposes of examination, the claim is interpreted as instead reciting “a) at least one mono-ol mono-carbonic acid of poly alkylene oxide s (PAG-DC); or c) at least one mono-ol mono-carbonic acid of poly alkylene oxide MC) with at least one di-ol of poly alkylene oxide s (PAG-DC); ….”
Claim 20 recites the limitation “the polymeric sidechains (B) comprise at least one vinyl ester monomer (B1) and optionally at least one olefinically unsaturated monomer (B2) other than the monomer (B1), and wherein the remaining amount of vinyl ester may be any other known vinyl ester.” This limitation is unclear, because no specific vinyl ester monomers are defined with a content range, and therefore, the scope of “remaining amount of vinyl ester may be any other known vinyl ester” is unknown. For the purposes of examination, the claim is interpreted as instead reciting “the polymeric sidechains (B) comprise at least one vinyl ester monomer (B1) and optionally at least one olefinically unsaturated monomer (B2) other than the monomer (B1), wherein at least 10 weight percent of the total amount of vinyl ester monomer (B1) is selected from the group consisting of vinyl acetate, vinyl propionate, and vinyl laurate, and wherein the remaining amount of vinyl ester may be any other known vinyl ester.”
Claim 21 recites the limitation “the optionally at least one olefinically unsaturated monomer (B2) is selected from the group consisting of monomers B2a and monomers B2b.” This limitation is unclear, because no specific monomers are defined for B2a and B2b. For the purposes of examination, the claim is interpreted as instead reciting “the optionally at least one olefinically unsaturated monomer (B2) is selected from the group consisting of monomers (B2a) and monomers (B2b), (B2a) being selected from the group consisting of N-vinyllactams, N-vinylpyrrolidone, N-vinylpiperidone, N-vinylcaprolactam, and derivatives thereof substituted with C1- to C8-alkyl groups, and (B2b) being selected from the group consisting of salts and esters of carboxylic acids.”
Claim 22 recites the limitation “the amount of vinyl ester monomer (B1) is from 1 to 100% by weight, and the amount of the optional at least one further monomer (B2) is from 0 to 99%, by weight.” This limitation is unclear, because it does not provide a basis from which the recited ranges are relative to. For the purposes of examination, the claim is interpreted as instead reciting “the amount of vinyl ester monomer (B1) is from 1 to 100% by weight based on total amount of monomers (B), and the amount of the optional at least one further monomer (B2) is from 0 to 99% based on total amount of monomers (B).”
Claim 24 recites “the amount of the at least one vinyl ester monomer (B1) is from 1 to 100% by weight, % by weight based on the total amount of monomers (B), and wherein the remaining amount of vinyl ester may be any other known vinyl ester, ….” This limitation is unclear, because no specific vinyl ester monomers are defined, and therefore, the scope of “remaining amount of vinyl ester may be any other known vinyl ester” is unknown. For the purposes of examination, the claim is interpreted as instead reciting “the amount of the at least one vinyl ester monomer (B1) is from 1 to 100% by weight, % by weight based on the total amount of monomers (B), the at least one vinyl ester monomer (B1) is selected from the group consisting of vinyl acetate, vinyl propionate, and vinyl laurate, and wherein the remaining amount of vinyl ester may be any other known vinyl ester, ….”
Claim 24 recites “the optionally at least one olefinically unsaturated monomer (B2) is selected from the group consisting of monomers B2a and monomers B2b, ….” This limitation is unclear, because no specific monomers are defined for B2a and B2b. For the purposes of examination, the claim is interpreted as instead reciting “the optionally at least one olefinically unsaturated monomer (B2) is selected from the group consisting of monomers (B2a) and monomers (B2b), (B2a) being selected from the group consisting of N-vinyllactams, N-vinylpyrrolidone, N-vinylpiperidone, N-vinylcaprolactam, and derivatives thereof substituted with C1- to C8-alkyl groups, and (B2b) being selected from the group consisting of salts and esters of carboxylic acids.”
Claim 27 recites “A method of using.” This is an improper method claim, because the claim does not appear to set forth any steps involved in the method and/or process. Attempts to claim a process without setting forth any steps involved in the process generally raises an issue of indefiniteness under 35 U.S.C. 112(b). See MPEP 2173.05(q). It is unclear what specific step or steps are required to satisfy the use of the claimed graft polymer. For the purposes of examination, the claim is interpreted as reciting “A method of mixing mixing
Claims 13 and 28 are also rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, since these claims depend from the claims rejected above and does not remedy the aforementioned deficiencies.
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, 10-28, and 32 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-22, 24, 25, 29, 30, 32, and 34 of copending Application No. 19/137674 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because both claim a graft polymer comprising identical structure and characteristics.
Regarding Claims 1 and 10-22, 19/137674 claims an identical graft polymer comprising (A) a polyalkylene oxide ester polymer backbone having general formula (I) and (B) grafted polymeric sidechains on the (A) polymer backbone that are formed of monomers (B1) that include vinyl acetate and monomers (B2) that include N-vinyllactams (19/137674, Claims 1-22).
Regarding Claims 23-26, 19/137674 claims a method of obtaining the graft polymer of claim 1 by radical polymerization using radical initiators (19/137674, Claims 24, 25).
Regarding Claims 27, 28, and 32, 19/137674 claims a method of using the graft polymer of claim 1 in cleaning compositions (19/137674, Claims 29, 30, 32, 34).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
Claims 1, 10-28, 32, 38, and 40-44 would be allowable if rewritten or amended to overcome the rejections under 35 U.S.C. 112(b) and the non-statutory double-patenting rejection set forth in this Office action.
Distinctions between the aforementioned claims and closest prior art of record are below:
Boeckh et al. (US 2009/0176935 A1) teaches a graft polymer comprising (A) a polyalkylene oxide graft base and (B) side chains formed by polymerization of vinyl ester monomers, where (A) the polyalkylene oxide graft base has an average molecular weight of 2,500 to 15,000 and a polydispersity of less or equal to 1.5 (Boeckh, Abstract, [0001], [0011]-[0030]). Boeckh fails to teach a graft polymer having a polyalkylene oxide graft base having a polydispersity of 2 to 6, 10-560 ether groups, 2-51 ester groups, and 1-51 structural elements specifically represented by general formula (I) defined by claim 1.
Fossum et al. (US 2019/0390142 A1) teaches a graft copolymer including a polyalkylene oxide that has an average molecular weight of 1,000 to 20,000 and a vinyl ester (Fossum, Abstract, [0007]-[0053]). Fossum fails to teach a graft polymer with a polyalkylene oxide graft base having a polydispersity of 2 to 6, 10-560 ether groups, 2-51 ester groups, and 1-51 structural elements specifically represented by general formula (I) defined by claim 1.
The prior art of record, whether taken alone or in combination, does not disclose or render obvious the scope of the aforementioned claims. In view of the foregoing, the aforementioned claims are considered to contain allowable subject matter.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELI D STRAH whose telephone number is (571)270-7088. The examiner can normally be reached M-F 9 am - 7 pm.
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/Eli D. Strah/Primary Examiner, Art Unit 1782
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