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, 4-8, 18 and 19, in the reply filed on 07/07/2025 is acknowledged.
Claims 9-17, and 20, are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 07/07/2025.
Response to Amendment
The previous rejection of Claims 4, and 6, under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite is/are withdrawn in light of the Applicant’s amendments.
The previous rejection of Claim(s) 1-8, 18 and 19, under 35 U.S.C. 102(a)(1) as being anticipated by Ma et al., “Development of Cationic Polymer Coatings to Regulate Foreign-Body Responses,” Advanced Materials, vol. 23, issue. 24, page H189-H194, (2011), (hereinafter Ma) is/are withdrawn in light of the Applicant’s amendments.
The previous rejection of Claim(s) 1, 2, 5, 6, and 18, under 35 U.S.C. 102(a)(1) as being anticipated by US 2017/0042037 A1 to Thorseth et al. (hereinafter Thorseth) is/are withdrawn in light of the Applicant’s amendments.
The previous rejection of Claim(s) 1, 2, 5-7, and 18, under 35 U.S.C. 102(a)(1) as being anticipated by CN 104744693 A to Huang et al. (hereinafter Huang) is/are withdrawn in light of the Applicant’s amendments.
Claim Objections
Claims 4 and 6 are objected to because of the following informalities:
Claim 4 recites chemical formulas with the following structure,
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. However, this does not appear to be a standard chemical drawing for representing bonding points, such as
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or brackets such as
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. It appears that the claimed chemical structures are not correct.
Claim 6 recites chemical formulas
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with the same issues cited above such as
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. However, this does not appear to be a standard chemical drawing for representing bonding points, such as
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or brackets such as
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. It appears that the claimed chemical structures are not correct.
Appropriate correction is required.
Specification
The disclosure is objected to because of the following informalities:
In para 15 and 74, the specification states the chemical formula of the nitrogen-containing group recites chemical formulas with the following structure,
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. However, this does not appear to be a standard chemical drawing for representing bonding points, such as
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102
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or brackets such as
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. It appears that the claimed chemical structures are not correct.
In para 18 and 79, the specification states the binary epoxy residual group has the formulae,
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with the same issues cited above such as
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. However, this does not appear to be a standard chemical drawing for representing bonding points, such as
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27
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or brackets such as
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. It appears that the claimed chemical structures are not correct.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 4-8, 18, and 19 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites “a nitrogen-containing group comprising…a tertiary amino group…wherein the tertiary amino group…” and Claim 5 recites “the tertiary amino group.” However, nowhere in the Applicant’s specification is a “tertiary amino group” mentioned or described for the nitrogen-containing group. The only term described in the Applicant’s specification is a “dimethylamine group,” for which the Applicant is appearing to replace in the claims.
Thus, since there is no support and/or description of the broader limitation of “tertiary amino” in the Applicant’s specification, it is considered new matter.
Claims 4, 6-8, 18, and 19, are dependent claims which fail to alleviate the issues above.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1, 4, and 18, is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 5,520,829 A to Kapuscinski et al. (hereinafter Kapuscinski).
Regarding claims 1, 4, and 18, Kapuscinski teaches an ethylene-propylene copolymer with moieties derived from a reaction product of allyl glycidyl ether and N-(3-aminopropyl)morpholine (See abstract), specifically, the reaction product of allyl glycidyl ether and N-(3-aminopropyl)morpholine (Example 1) is grafted upon a ethylene-propylene copolymer (Mn 80,000), (Examples XIV-XXVII, col 11, l n 30 to col 12, ln 3), which meets the claimed polymer of claims 1, and 4. Kapuscinski further teaches that the reaction product may also be obtained from N-(3-aminopropyl)pyrrolidone (Table, col 4, ln 18).
Claim(s) 1, 4-8, 18, and 19, is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP S60-231734 A to Tada et al. (hereinafter Tada).
Regarding claims 1, 4-8, 18, and 19, Tada teaches an additive of a reaction product of formula I obtained from a reaction of formula II and formula III (See abstract), wherein the reaction product is specifically obtained compounds (2) and compounds (3)
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, such as from N-(3-aminopropyl)morpholine and limonene dioxide, (See example 8, Table 1) which meets the nitrogen-containing group of claims 1 and 4, and the limonene dioxide meets the epoxy compound residual that contains two epoxy residue groups of claim 5. The above reaction product has a molecular weight of up to 5,000 (See specification, page 2), which meets the claimed repeating units of the polymer. Tada further teaches that compound (3) is specifically butanediol diglycidyl ether (example 2), which meets the claimed binary epoxy compound cited in claim 6, wherein a1=2, and if the molecular weight is up to 5,000 would approximately be ~25 repeating units or below and meet the claimed range.
Claim(s) 1, 4, 5, 18, is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2011/0152468 A1 to Corley et al. (hereinafter Corley).
Regarding claims 1, 4, 5, 18, Corley teaches a reaction product from an epoxy resin component and a curing agent (para 8), wherein the epoxy component specifically contains a bisphenol A diglycidyl ether (EPON 828, Example 1, para 51), and the curing agent is a monoamine of N-(3-aminopropyl)morpholine (See Table 1, para 51), and the components are mixed and reacted/cured (para 51-53), which meets the claimed polymer of claims 1, 4, and 5.
Claim Rejections - 35 USC § 103
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 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, 4-6, 18, is/are rejected under 35 U.S.C. 103 as being unpatentable over KR 101646531 B1 to Lim et al. (hereinafter Lim).
Regarding claims 1, 4-6, 18, Lim teaches a curing agent obtained by first obtaining n amine adduct from a reaction of a first epoxy compound and an amine, and then further reacting with a second epoxy compound (See abstract), wherein examples of suitable amines include N-(3-aminopropyl)morpholine or N-(3-aminopropyl)pyrrolidone (page 3) and examples of suitable first epoxy compounds include polyglycidyl ethers of butylene glycol (page 3-4). The above amine adduct meets the claimed polymer of claims 1, 4-6, 8, 18.
It would have been obvious to one ordinarily skilled in the art before the effective date of the claimed invention for form the amine adduct by reacting N-(3-aminopropyl)morpholine or N-(3-aminopropyl)pyrrolidone with a polyglycidyl ether of butylene glycol because Lim teaches that examples of suitable amines include N-(3-aminopropyl)morpholine or N-(3-aminopropyl)pyrrolidone (page 3) and examples of suitable first epoxy compounds include polyglycidyl ethers of butylene glycol (page 3-4). (“The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination.” See MPEP 2144.07).
Response to Arguments
Applicant’s arguments with respect to claim(s) 1, 4-8, 18, and 19, have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HA S NGUYEN whose telephone number is (571)270-7395. The examiner can normally be reached Mon-Fri, Flex schedule 7:30am-4:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached at (571)272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HA S NGUYEN/Primary Examiner, Art Unit 1766
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