DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on November 26, 2025 has been entered.
This Office action is in response to Applicant’s amendment filed November 26, 2025. Claims 19-23 remain withdrawn from consideration. Applicant has amended claim 1. New claim 25 has been added. Currently, claims 1-9, 11-14, 17-23 and 25 remain pending in the application.
The text of those sections of Title 35 U.S. Code not included in this action can be found in the prior Office actions, Paper Nos. 20241218, 20250128, 20250408, and 20250701.
The rejection of claims 1-9, 11-14 and 17-18 under 35 U.S.C. 102((a)(1)) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Allen et al, WO 2010/062703, is maintained for the reasons of record.
NEW GROUNDS OF REJECTION
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.
Claim 25 is 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.
Claim 25 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, for containing the limitation “or a mixture of ethylene oxide and propylene oxide”. This limitation renders the claim vague and indefinite, since currently amended claim 1 requires that Re1’, Re2’, Re3’, and Re4’ must all be hydrogen. Accordingly, the examiner asserts that the polyether block must only be ethylene oxide. Appropriate correction and/or clarification is required.
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.
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 25 is rejected under 35 U.S.C. 102((a)(1)) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Allen et al, WO 2010/062703.
Allen et al, WO 2010/062703, discloses polycarbonate block copolymers having the formulae:
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132
490
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and
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124
474
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wherein Rz is R10, and R10 is an optionally substituted C1-20 alkyl group, (see pages 21, line 10-page 22, line 5, and pages 33-34), wherein the polycarbonate block copolymers have a solubility in supercritical carbon dioxide of at least 0.1% by weight (see page 79, line 25-page 80, line 30), which meets the instant claim limitations when Z1 is R-O, R is a C1-11 alkyl group, Re1, Re2, Re3, and Re4 are all hydrogen, Re1’, Re2’, Re3’, and Re4’ are all hydrogen, and Z2 is hydrogen. Specifically, note Examples 1-9. Although Allen et al is silent with respect to the water solubility value of their polycarbonate block copolymers, the examiner asserts that the polycarbonate block copolymers disclosed in Allen would inherently meet the water solubility requirements of the instant invention, since products of identical chemical composition cannot have mutually exclusive properties. Therefore, instant claim 25 is anticipated by Allen et al, WO 2010/062703.
In the alternative that the above disclosure is insufficient to anticipate the above listed claims, it would have nonetheless been obvious to the skilled artisan to produce the claimed polycarbonate block copolymers, as the reference teaches each of the claimed ingredients within the claimed proportions for the same utility.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-9, 11-14, 17-18 and 25 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7, 10-13, 17, 19-20, 22 and 25 of copending Application No. 18/701,951. Although the claims at issue are not identical, they are not patentably distinct from each other because copending Application No. 18/701,951 claims a similar composition comprising a polycarbonate block polyether of formula I:
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684
712
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(see claims 1-7, 10-13, 17, 19-20, 22 and 25 of copending Application No. 18/701,951), as required in the instant claims. The examiner notes that it appears that the “R” groups have been labelled “O” groups by mistake. Therefore, claims 1-9, 11-14, 17-18 and 25 are an obvious formulation in view of claims 1-7, 10-13, 17, 19-20, 22 and 25 of copending Application No. 18/701,951.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed November 26, 2025 have been fully considered but they are not persuasive.
Applicant argues that Allen et al, WO 2010/062703, does not teach or suggest in general a structure of claimed formula I, wherein Re1’, Re2’, Re3’, and Re4’ must all be hydrogen, as required by applicant in the newly amended claims. However, the examiner respectfully disagrees. Specifically, the examiner respectfully maintains that Allen et al clearly discloses polycarbonate block copolymers having the formulae:
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124
474
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wherein Rz is R10, and R10 is an optionally substituted C1-20 alkyl group, (see pages 21, line 10-page 22, line 5, and page 39), and wherein the number of polyether blocks is more than the number of polycarbonate blocks, per the requirements of the instant invention. Accordingly, the examiner respectfully maintains that the instant claim limitations are clearly met when Z1 is R-O, R is a C1-11 alkyl group, Re1, Re2, Re3, and Re4 are all hydrogen, Re1’, Re2’, Re3’, and Re4’ are all hydrogen, and Z2 is hydrogen. Furthermore, the examiner asserts that the polycarbonate block copolymers disclosed in Allen would inherently meet the water solubility requirements of the instant invention, since products of identical chemical composition cannot have mutually exclusive properties.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Blackburn et al, US 2025/0230383, discloses a composition comprising a polycarbonate block polyether of formula (I).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN P MRUK whose telephone number is (571)272-1321. The examiner can normally be reached on 7:00am-5:30pm Monday-Thursday.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Angela Brown-Pettigrew, can be reached on 571-272-2817. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRIAN P MRUK/
Primary Examiner, Art Unit 1761
Brian P Mruk
December 10, 2025