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 .
DETAILED ACTION
All the references cited in the International Search Report have been considered. None is anticipatory or meet the amended claims.
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 of this title, 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) 1-9 is (are) rejected under 35 U.S.C. 103(a) as being unpatentable over Weber et al. (US 20160075833) in view of Sakai et al. (US 20130052564).
As to claims 1-9, Weber (abs., claims, examples, 1, 8) discloses a polysulfone-polyethylene block copolymer having Mw of 10k-150k (overlapping with range of claim 7). Weber (8) implies the copolymer can be used in dialysis and filter system (as membrane), as obviously recognized by one of ordinary skill in the art. The block copolymer (Ex.1, Table 1) is produced by polymerizing Me-PEG (Mn 2k, the PEG having the same Mn in instant Ex.4, meets the structures of claims 5-6) having at least one free hydroxyl group (51) reacted with 4,4’-dichlorodiphenyl sulfone and 4,4’-dihydroxydiphenyl sulfone in NMP/potassium (the same medium as instant Ex.1-4) carbonate at 190 °C. The PEG fraction is 8 wt%, corresponding to the ratio of instant claim 3 as 0.086.
Weber is silent on the claimed polysulfones block having the claimed terminal OH groups content calculated from peak areas of a spectrum acquired by 1H-NMR measurement of claims 1-2.
In the same area of producing membrane comprising polysulfones, Sakai (abs., claims, examples, 1, 7-8, 68-69) discloses a commercially available polysulfone (Sumikaexcel PES 3600P, the same polysulfone of instant Ex. 1 and corresponds to the comonomers of 4,4’-dichlorodiphenyl sulfone and 4,4’-dihydroxydiphenyl sulfone of Weber) that renders high temperature operability and chemical stability and has a backbone of:
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. Sumikaexcel PES 3600P would inherently possess the claimed terminal OH groups, because in view of the substantially identical composition (in this case, the disclosed polymer structure and MW), it appears that the adduct would have inherently possessed the claimed properties. See MPEP § 2112.
Therefore, as to claims 1-9, it would have been obvious to one of ordinary skill in the art to have modified the block copolymer disclosed by Weber and replaced the aforementioned comonomers with Sumikaexcel PES 3600P in view of Sakai, because the resultant process would yield the claimed copolymers and facilitates the block copolymerization by avoiding monomer condensation and improved high temperature operability and chemical stability in the copolymer. Moreover, it has been found that where claimed ranges overlap ranges disclosed by prior art, a prima facie case of obviousness exists - see MPEP 2144.05 I. 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). Therefore, it would have been obvious to one skilled in the art to have created/selected the claimed compositional elements from the composition disclosed in the Weber and Sakai since it discloses all applicants' components, values and methods of making.
Accordingly, the examiner recognizes that not all the claimed effects or physical properties are positively stated by the references. However, Weber and Sakai teach a process using the claimed steps, claimed processing conditions, and the claimed components in the claimed amounts. Therefore, one of ordinary skill would have a reasonable expectation that the claimed block copolymer would necessarily flow from a process employing the claimed steps, claimed processing conditions, and the claimed components in the claimed amounts. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. See In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977); In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990); see also MPEP § 2112.01(I)-(II). If it is the applicant’s position that this would not be the case: (1) applicant must provide evidence to support the applicant’s position, and (2) it would be the examiner’s position that the application contains inadequate disclosure on how to obtain the claimed effects or properties with only the claimed steps, claimed processing conditions, and the claimed components in the claimed amounts.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHANE FANG whose telephone number is (571)270-7378. The examiner can normally be reached on Mon-Thurs. 8am-6pm. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached on 571.572.1302. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SHANE FANG/Primary Examiner, Art Unit 1766
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