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 .
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1-18) in the reply filed on June 30, 2026 is acknowledged. Claims 19 and 22 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on June 30,2026.
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 6-7 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 6, the phrase “the ethylene amine being preferentially ethylene diamine or tetraethylene pentamine” renders the claim indefinite because it is not clear if those limitations are mandatory. The examiner suggests deleting that phrase.
Regarding claim 7, it is unclear if both of the formula (I) compounds (the dimethylamine and the ethylene diamine) need to have bio-sourced carbons because claim 7 depends from claim 1 which has the phrase “at least one formula (I)” which seems to indicate that only one formula (I) compound in the composition needs to have the bio-sourced carbon. Clarification is requested.
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, 5-6, 9-13, 15 and 18 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Purnell (US 5,147,557).
Regarding claim 1, 5-6, 9-11 and 13, Purnell teaches a cationic polymer which is a condensation product of dimethylamine and epichlorohydrin (Abstract). This results in a polyamine. Regarding the bio-sourced limitations, as the compound in Purnell is the same compound with the same utility and same structure and would perform the same way, these limitations are treated as product-by-process limitations and do not carry much patentable weight.
Regarding claims 12, 15 and 18, this is a product by process limitation and, as such, does not carry much patentable weight.
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) 1-8 and 10-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Honig et al (US 5,167,766) in view of Shi et al (US 2015/0018548) and Hook et al (US 2008/0015370).
Regarding claims 1 and 5-6, Honig teaches a cationic polymer which is a reaction of epichlorohydrin and dimethylamine (col. 10, lines 1-10) which makes a polyamine.
However, Honig fails to teach that the components of the cationic polymer are bio-sourced from partially renewable and non-fossil sources.
Shi teaches producing dimethylamines from carbon dioxide (Abstract) which is a non-fossil source.
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have the dimethylamine of Honig be made via non-fossil sources as taught by Shi. One would have been motivated to do so in order to have an environmentally friendly process and cycling the use of carbon dioxide (Shi, Abstract).
Hook teaches that epichlorohydrin can be made from naturally occurring hydrocarbons (Abstract).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have the epichlorohydrin of Honig be made from the naturally occurring hydrocarbons of Hook. One would have been motivated to do so in order to receive the expected benefit of using renewable raw material (Hook, Abstract).
Regarding claims 2-3 and 10-11, given that the epichlorohydrin and the dimethylamine are completely made from renewable and non-fossil materials, the bio-sourced carbon content of these compounds is 100%.
Regarding claims 4 and 7-8, Honig teaches that the cationic polymer is 50 mol% epichlorohydrin, 47 mol% dimethylamine and 3 mole % ethylene diamine (col. 10, lines 1-10) and given that the epichlorohydrin and the dimethylamine are made from 100% bio-sourced carbon content, the entire polymer would have between 5 wt.% and 100 wt.% bio-sourced carbon content.
Regarding claims 12-13, this is a product by process limitation and, as such, does not carry much patentable weight.
Claim(s) 1-6, 10-11, 14 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Merrell (US 5,024,768) in view of Shi et al (US 2015/0018548) and Hook et al (US 2008/0015370).
Regarding claims 1 and 5-6, Merrell teaches a cationic polymer which is a condensation product of dimethylamine and epichlorohydrin (col. 5, table).
However, Merrell fails to teach that the components of the cationic polymer are bio-sourced from partially renewable and non-fossil sources.
Shi teaches producing dimethylamines from carbon dioxide (Abstract) which is a non-fossil source.
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have the dimethylamine of Merrell be made via non-fossil sources as taught by Shi. One would have been motivated to do so in order to have an environmentally friendly process and cycling the use of carbon dioxide (Shi, Abstract).
Hook teaches that epichlorohydrin can be made from naturally occurring hydrocarbons (Abstract).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have the epichlorohydrin of Merrell be made from the naturally occurring hydrocarbons of Hook. One would have been motivated to do so in order to receive the expected benefit of using renewable raw material (Hook, Abstract).
Regarding claims 2-3 and 10-11, given that the epichlorohydrin and the dimethylamine are completely made from renewable and non-fossil materials, the bio-sourced carbon content of these compounds is 100%.
Regarding claim 4, given that the epichlorohydrin and the dimethylamine are the only two components in the polymer and they are 100% from bio-sourced carbon, the polymer has 100% bio-sourced carbon content.
Regarding claim 14, Merrell teaches that the polymer has a charge density of 1.5 to 12 meq/g (col. 4 lines 55-60).
Regarding claim 16, Merrell teaches that the polymer is linear (col. 4 lines 55-60).
Claim(s) 1-13, 15 and 17-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pera (EP 0 431 739) in view of Shi et al (US 2015/0018548), Hook et al (US 2008/0015370) and Letellier et al (WO 2014/049382).
Regarding claim 1, 5-7 and 9, Pera teaches a cationic polymer (Figures) which is made from dimethylamine, epichlorohydrin and ethylene diamine (page 7, Table 1, Example 7) which results in a polyamine. However, it fails to teach that each of these components are bio-sourced from renewable or non-fossil fuel resources.
Shi teaches producing dimethylamines from carbon dioxide (Abstract) which is a non-fossil source.
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have the dimethylamine of Merrell be made via non-fossil sources as taught by Pera. One would have been motivated to do so in order to have an environmentally friendly process and cycling the use of carbon dioxide (Shi, Abstract).
Hook teaches that epichlorohydrin can be made from naturally occurring hydrocarbons (Abstract).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have the epichlorohydrin of Pera be made from the naturally occurring hydrocarbons of Hook. One would have been motivated to do so in order to receive the expected benefit of using renewable raw material (Hook, Abstract).
Letellier teaches an ethylene diamine (Abstract) made renewable non-fossil carbon sources (page 9).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have the ethylene diamine of Pera be made from renewable and non-fossil carbon sources as taught by Letellier. One would have been motivated to do so in order to receive the expected benefit of avoiding the uses of chemical processes and the use of non-renewable sources of carbon (Letellier, page 2).
Regarding claims 2-4 and 10-11, given that all the components are made by renewable and non-fossil carbon sources and there are no other components in the polymer, each of the components and the final polymer itself has 100% bio-sourced carbons.
Regarding claims 8 and 17, Pera teaches that the amount of the ethylene diamine is present in the amount from 1 to 15 mol % of the total moles of dimethylamine and ethylene diamine (page 5, lines 1-15). The dimethylamine can be calculated to range from 85 to 99 mol %.
Regarding claim 12, given that all the compounds which make up the cationic polymer are from recycled materials, the epichlorohydrin and the dimethylamine are totally segregated.
Regarding claim 13, the phrase pertaining to “recycling method” is a product-by-process limitation and as such, does not carry much patentable weight.
Regarding claim 15, Pera teaches that the bio-sourced polymer is obtained by reacting the epichlorohydrin and dimethylamine at a temperature between 5 to 95 C and then after this step, the adduct is polymerized at a temperature of 80 C (page 5-6, Examples).
Regarding claim 18, Pera teaches that the bio-sourced polymer is obtained by reacting the epichlorohydrin and dimethylamine at a temperature between 5 to 95 C and then after this step, the adduct is polymerized at a temperature of 80 C (page 5-6, Examples). The phrase pertaining to “recycling at least one material” is a product-by-process limitation and as such, does not carry much patentable weight.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DORIS L LEE whose telephone number is (571)270-3872. The examiner can normally be reached M-F 8 am - 5 pm.
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DORIS L. LEE
Primary Examiner
Art Unit 1764
/DORIS L LEE/Primary Examiner, Art Unit 1764
Prosecution Insights