DETAILED ACTION
This communication responds to the application and amended claim set filed December 13, 2023. Claims 1-15 are currently pending.
Claims 1-9 are REJECTED for the reasons set forth below.
Claims 10-15 are ALLOWED.
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 .
Priority
This application is the national stage entry of PCT/IB2022/055424, filed June 10, 2022, which claims priority to US 63/211,299, filed June 16, 2021.
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.
Claims 3 and 4 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Regarding claims 3 and 4, it is not clear whether the monomeric unit c) is required, given that it is optional in claim 1.
Claim Rejections - 35 USC § 102
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.
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.
Claims 1-3 and 5-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Dias et al. (WO 02/100935).
Regarding claims 1 and 5-9, Dias teaches an elastomer formed via reaction of BIMS (brominated isobutylene para-methyl styrene) with dimethylaminoethyl methacrylate. (Exs. 1E-4E, Tables 1 and 6.) The resulting copolymer has an isobutylene monomeric unit (corresponding to a)), a functionalized amino para-methyl styrene unit (corresponding to b)), and a para-methyl styrene monomeric unit (corresponding to c)). The functionalized amino para-methyl styrene unit is formed via substitution of the bromine atom on the brominated para-methyl styrene units. (p. 4, line 22 – p. 5, line 3.)
Regarding claim 2, Dias teaches that only some of the para-methyl styrene units are halogenated. (p. 9, lines 1-5.) Thus, unit c) must be present.
Regarding claim 3, Dias teaches that preferred BIMS polymers have from 0.1 to 5 mol% bromomethylstyrene units. (p. 10, lines 17-19.) Assuming complete substitution of the functionalized amine, the resulting unit corresponding to b) will have the same molar amount, which is within the claimed range.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Dias et al. (WO 02/100935).
Regarding claim 4, Dias teaches all of the limitations of claim 1. (See paragraph 12 above, which is incorporated by reference herein.) Dias also teaches that preferred BIMS polymers have from 0.1 to 5 mol% bromomethylstyrene units. (p. 10, lines 17-19.) Assuming complete substitution of the functionalized amine, the resulting unit corresponding to b) will have the same molar amount, which overlaps the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).) It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range taught by Dias.
Allowable Subject Matter
Claims 10-15 are allowed.
The following is a statement of reasons for the indication of allowable subject matter:
Claims 10-15 are allowed in view of the closest prior art reference (Dias, discussed above.) Dias provides no teaching or suggestion that a monomer is added to the copolymer discussed above to form a polymerizable composition. At most, Dias teaches that the functionalized amines may be crosslinked, but there is no teaching or suggestion that there is further polymerization.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CATHERINE S BRANCH whose telephone number is (571)270-3539. The examiner can normally be reached Monday through Friday.
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CATHERINE S. BRANCH
Primary Examiner
Art Unit 1763
/CATHERINE S BRANCH/Primary Examiner, Art Unit 1763
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