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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Election/Restrictions
Applicant's election with traverse of Group I: claims 26-32 in the reply filed on April 27, 2026 is acknowledged. The traversal is on the ground(s) that the claims are linked by special technical feature sufficient for the unity of invention that have unexpected results. This is not found persuasive because the results are not commensurate in scope with the claims. The results are produced with specific polymer backbones and side chains in specific amounts, whereas the claims are directed to generic ingredients in broader weight percent ranges, additionally claim 26 lists the monomer B2b as optional while all of the inventive examples include vinyl pyrrolidone as the B2b monomer. The claims must have all the components required to produce the unexpected results. The unexpected results are also not persuasive because the tests for the DTI performance only compares the inventive examples to comparatives that have one or two of the side chain monomers but not all three, which the inventive examples all include the three side chain monomers. Comparative example IV has all three side chain monomers in amounts outside the claimed percent ranges and 35% biodegradation, but it was not tested for DTI performance; therefore it is unclear if the weight percents are critical or if the inclusion of all three side chain monomers is all that is needed for both high DTI performance and biodegradability.
The requirement is still deemed proper and is therefore made FINAL.
Claims 33-45 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on April 27, 2026.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
The abstract of the disclosure is objected to because it contains the phrases “This application relates to”. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Objections
Claim 26 is objected to because in line 5 of the claim, there should be the word “the” between “in” and “case” so that it reads “wherein in the case of…”.
Claims 26, 29 and 31 are objected to because “lactame” should be spelled “lactam.”
Claims 26 and 30 are objected to since they contain the capitalization of the phrase “WEIGHT OF THE GRAFT COPOLYMER” for no particular reason.
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 26-32 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 claims 26-27, 29-31, the phrases “such as” (claim 26, B2a and B2b), "preferably", “more preferably”, “most preferably”, “even more preferably”, “even further even more preferably”, “more preferred”, “even more preferred”, “most preferred” render the claims indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 26 recites the broad recitation “the molecular weight of the polymer backbone (A) as Mn in g/mol is within 500 to 12000” and also recites “and at least 1000” which is the narrower statement of the range/limitation. Claim 30 recites the broad recitation “having a molecular weight as Mn in g/mol of within 500 to 12000” and also recites “and at least 600” which is the narrower statement of the range.
The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claims 27- 32 are also rejected under 112b due to their dependency on claim 26 and they do not rectify the problem.
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 non-obviousness.
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.
Claims 26-32 are rejected under 35 U.S.C. 103 as being unpatentable over Baum et al US20110154582.
Regarding claims 26, 30, Baum teaches a graft copolymer (B) comprising a graft copolymer (B1) having a main chain consisting essentially of alkylene oxide units, such as ethylene oxide units, the main chain having a number average molecular weight Mn of 600 to 10,000 g/mol ¶¶[0056-0057], which reads on the polymer backbone (A). The side chains consist essentially of ethylenically unsaturated monomers such as vinyl acetate and vinyl imidazole, among a few selection, wherein in one embodiment, the ethylenically unsaturated monomers of the side chain comprise at least 50 mol% of vinyl acetate ¶[0058]. The vinyl acetate reads on the monomer B1 and the vinyl imidazole reads on the monomer B2a, and the B2b monomer is optional for both claims 26 and 30.
The quantitative ratio of polyalkylene oxides to ethylenically unsaturated monomers is preferably so chosen that the graft copolymer comprises 30% to 80% by weight of polyalkylene oxide, ¶[0059], which overlaps with the claimed range for (A). this also means the total side chains (B) is 20-70 wt.% which overlaps with the claimed range for (B).
While the amount of the vinyl acetate monomer and vinyl imidazole are not specifically recited in terms of the total weight of the graft copolymer, considering the teachings of Baum above with respect to the weight of the polyalkylene oxide, and the mole percentage of the vinyl acetate monomer, the amount of the vinyl acetate monomer and vinyl imidazole overlap with the recited ranges.
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by Baum because selection of overlapping portion of ranges has been held to be prima facie obvious. 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).
Regarding claim 27, Baum teaches the polymer backbone is preferably derived from the polymerization of ethylene oxide and can optionally further be derived from propylene oxide, ¶[0057], which satisfies i), ii) and iv).
Regarding claim 28 and 32, Baum does not teach capping the polymer backbone with an alkyl group on the ends, and because this capping is optional to satisfy ii) of claim 28, then a polymer backbone that isn’t capped also satisfies ii) of the claim. Additionally, Baum does not teach the biodegradability of the graft copolymer. Although Baum is silent as to the biodegradability of the graft copolymer, Baum teaches the claimed graft copolymer with the claimed monomers and polymer backbone in overlapping molecular weights and percent weights, and applicant states in pg. 1 line 34 and pg. 2 line 1 of the instant specification that the lower molecular weight polyethylene oxides have an increased biodegradability and the lack of carbon-carbon bonds in the polymer backbone also improves biodegradability. Therefore one of ordinary skill in the art is reasonably suggested that Baum’s graft copolymer must have the claimed 25% biodegradability because Baum’s copolymer aligns with the requirements for increased biodegradability, which satisfies options iii) and ii) of claims 28 and 32 respectively.
Regarding claim 29 and 31, Baum teaches the polymer backbone preferably comprises only polyethylene oxide, ¶[0057], and the preferable number average molecular weight of 600-10,000 g/mol, ¶[0056], overlaps with the claimed range.
Baum teaches the monomers of vinyl acetate and vinyl imidazole, and further teaches an additional monomer can be selected as vinyl pyrrolidone ¶[0058], which reads on the claimed B1, B2a, and B2b.
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included vinyl pyrrolidone as another monomer in the graft copolymer in addition to the vinyl acetate and vinyl imidazole with the motivation of producing another permutation of a graft copolymer with side chains derived from unsaturated monomers because Baum teaches vinyl pyrrolidone is suitable as an additional monomer for the graft copolymer.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VIRGINIA L STONEHOCKER whose telephone number is (571)272-3431. The examiner can normally be reached Monday-Friday 7:00AM-4:00PM EST.
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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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/V.L.S./Examiner, Art Unit 1766
/RANDY P GULAKOWSKI/Supervisory Patent Examiner, Art Unit 1766
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