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 .
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.
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 7, 11, 13, and 19 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.
Regarding claim 7: Claim 7 recites the limitation "polyether-modified polybutadiene (G)" in line 4. There is insufficient antecedent basis for this limitation in the claim. Note that the independent claim 1 states that (G) is a polyether-modified amino-functional polybutadiene (G). It is suggested that applicant amend claim 7 to use terminology consistent with that used in the independent claim.
Regarding claim 11: Claim 11 depends from claim 9 and recites the limitations regarding the units (S), (T), (U), (V), (W), (X), (Y), and (Z) in lines 3-4. There is insufficient antecedent basis for this limitation in the claim. Note that neither claim 9 nor independent claim 1 recites any of these units. It is suggested that applicant amend claim 11 to depend from claim 10, which states that the hydrogenated polyether-modified amino-functional polybutadiene comprises the said units.
Regarding claim 13: Claim 13 depends from claim 9 and recites a limitation regarding the average molar mass of “the B radical” in line 3. It is unclear if the phrase “the B radical” is intended to refer back to epoxidizing reagent (B) recited in independent claim 1, or if it refers to some other structure. The examiner notes that claim 10 recites various units of the claimed polymer which contain variable B which is defined as a radical of formula (4a). If the phrase “the B radical” is intended to refer to this portion of the structure of the claimed hydrogenated polyether-modified amino-functional polybutadiene, it is suggested that applicant amend claim 13 to depend from claim 10.
Regarding claim 19: Claim 19 recites the limitation "polyether-modified polybutadiene (G)" in line 2. There is insufficient antecedent basis for this limitation in the claim. Note that the independent claim 1 states that (G) is a polyether-modified amino-functional polybutadiene (G). It is suggested that applicant amend claim 19 to use terminology consistent with that used in the independent claim.
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(s) 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Schubert et al, US2024/0141077, in view of Liu et al, Topics in Catalysis vol. 55 pages 637-643.
The applied reference to Schubert has a common inventor with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2).
Schubert discloses a process for the production of a polyether-modified, amino-functional polybutadiene (for claim 1) (abstract, ¶0011-0014), wherein said process comprises the steps of
reacting a polybutadiene (A) with at least one epoxidizing compound such as performic acid (for claim 4) to give an epoxy functional polybutadiene wherein >0% to < 100% of the double bonds are epoxidized (for claims 3, 15), corresponding to claimed step (a) (for claim 1) (¶0012, 0065, 0066);
reacting the epoxy functional polybutadiene with an amino-functional compound such as butylamine (for claim 17), corresponding to the claimed primary amine (for claim 5), to give a hydroxy- and amino-functional polybutadiene, corresponding to claimed step (b) (for claim 1) (¶0013, 0072) ; and
reacting the hydroxy- and amino-functional polybutadiene with at least one epoxy functional compound such as phenyl glycidyl ether (for claim 18), corresponding to the claimed glycidyl compound (for claim 6), to give a polyether-modified amino-functional polybutadiene, corresponding to claimed step (c) (for claim 1) (¶0014, 0095).
Regarding claim 2: The prior art process may further comprise the step of reacting the polyether-modified amino-functional polybutadiene with an end-capping reagent to give a product wherein the polyether radicals are endcapped (¶0028), corresponding to claimed step (cc).
Regarding claim 9: The prior art process results in the production of a polyether-modified amino-functional polybutadiene.
Regarding claim 10: The prior art polymer comprises unit (U), (V), (W), (X), (Y), and (Z) that correspond to claimed formulae (S), (T), (U), (X), (Y), and (Z) respectively (¶0140-0151).
Regarding claim 11: The sum total of prior art units (U), (V), and (W)-which correspond to claimed units (S), (T), and (U) is greater than 0 up to 100% relative to all repeating units in the polymer (¶0161).
Regarding claim 12: Schubert teaches that the number average molar mass of the polybutadiene component is in the range of 200 to 20000 g/mol (¶0181).
Regarding claim 13: Schubert teaches that that average molar mass of the B radical is in the range of 30 to 20000 g/mol (¶0187).
Regarding claim 14: Schubert teaches that the polyether-modified amino-functional polybutadiene has a number average molecular weight of 1000 to 50000 g/mol (¶0189).
Regarding claim 16: Schubert teaches that the performic acid is preferably formed in situ from formic acid and hydrogen peroxide (¶0067).
Schubert is silent regarding the step of hydrogenating the polyether-modified amino-functional polybutadiene (for claim 1) to form a hydrogenated polymer (for claim 9) comprising the claimed units (V) and (W) (for claim 11).
Liu teaches that it was known in the art that diene-based polymers such as polybutadiene can be hydrogenated using RhCl(PPh3)3 (i.e., Wilkinson’s catalyst) (for claims 8, 20) (abstract, page 641: Section 3.5; page 642: Table 3) in the presence of hydrogen (for claims 8, 20) to a degree of 99.5 mol% (for claims 7, 19) (page 641: right column, 2nd paragraph). Liu further teaches that it was known that hydrogenating the double bonds of the diene-based polymer resulted in a final product having superior mechanical/thermal stability and oxidative resistance (page 637: right column, lines 4-9).
As taught by Liu, it was known in the art that hydrogenating the double bonds of diene-based polymers such as polybutadiene results in a final polymer having improved mechanical/thermal stability and oxidative resistance. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to one of ordinary skill in the art to modify the process of Schubert by performing a step of hydrogenating the polyether-modified amino-functional polybutadiene, corresponding to claimed step (d) (for claim 1), with the reasonable expectation of obtaining a hydrogenated polyether-modified amino-functional polybutadiene (for claim 9) having the improved properties taught by Liu.
Furthermore, one of ordinary skill in the art will recognize that claimed units (V) and (W) are the structures obtained by hydrogenating units obtained from 1, 2 addition of polybutadiene and units of 1,4 addition of butadiene, respectively. Hydrogenation of the polymer of Schubert will therefore inherently result in the production of the required units (for claim 11).
This rejection under 35 U.S.C. 103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C.102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.
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 1-15 and 17-20 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 5-7, 10, 12-14, and 17 of copending Application No. 18/546,541 in view of Liu et al, Topics in Catalysis vol. 55 pages 637-643.
Copending claim 1 recites a process for the production of a polyether-modified, amino-functional polybutadiene (for claim 1), wherein said process comprises the steps of
reacting a polybutadiene (A) with at least one epoxidizing compound to give an epoxy functional polybutadiene, corresponding to claimed step (a) (for claim 1);
reacting the epoxy functional polybutadiene with an amino-functional compound to give a hydroxy- and amino-functional polybutadiene, corresponding to claimed step (b) (for claim 1); and
reacting the hydroxy- and amino-functional polybutadiene with at least one epoxy functional compound to give a polyether-modified amino-functional polybutadiene, corresponding to claimed step (c) (for claim 1) (¶0014, 0095).
Regarding claims 2-15 and 17-19: Copending claims 2, 5-7, 10,12-14, and 17 recite limitations that overlap the scope of the instant claims.
The copending claims are silent regarding performing a hydrogenation step.
Liu teaches that it was known in the art that diene-based polymers such as polybutadiene can be hydrogenated using RhCl(PPh3)3 (i.e., Wilkinson’s catalyst) (for claims 8, 20) (abstract, page 641: Section 3.5; page 642: Table 3) in the presence of hydrogen (for claims 8, 20) to a degree of 99.5 mol% (for claims 7, 19) (page 641: right column, 2nd paragraph). Liu further teaches that it was known that hydrogenating the double bonds of the diene-based polymer resulted in a final product having superior mechanical/thermal stability and oxidative resistance (page 637: right column, lines 4-9).
As taught by Liu, it was known in the art that hydrogenating the double bonds of diene-based polymers such as polybutadiene results in a final polymer having improved mechanical/thermal stability and oxidative resistance. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to one of ordinary skill in the art to modify the process of the copending claims by performing a step of hydrogenating the polyether-modified amino-functional polybutadiene, corresponding to claimed step (d) (for claim 1), with the reasonable expectation of obtaining a hydrogenated polyether-modified amino-functional polybutadiene (for claim 9) having the improved properties taught by Liu.
Furthermore, one of ordinary skill in the art will recognize that claimed units (V) and (W) are the structures obtained by hydrogenating units obtained from 1, 2 addition of polybutadiene and units of 1,4 addition of butadiene, respectively. Hydrogenation of the polymer of copending claim 13 will therefore inherently result in the production of the required units (for claim 11).
This is a provisional nonstatutory double patenting rejection.
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.
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/JEFFREY S LENIHAN/Primary Examiner, Art Unit 1765
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