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 with traverse of Group I, species A(i)(a) and B(i), claims 1-2, 4-6, 9-13 and 17-20 in the reply filed on December 23, 2025 is acknowledged. The traversal is on the ground(s) that:
(i) This is a national stage application submitted under 35 U.S.C. §371 and should be analyzed under that standard.
In response, this is not found persuasive because the species of the aminoacid fragments ((N2a), (N2b) and N2c) do not share the same chemical structures and the species of the diamine fragments ((N3a) and (N3b)) do not share the same chemical structures.
Furthermore, Groups I, II and III lack unity of invention because even though the inventions of these groups require the technical feature of a polyaminoamide comprising a group of formula N1, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of CN 109232299. CN 109232299 teaches a polyaminoamide comprising a group of formula N1 (see the claim rejection below).
(ii) In other words, these three Groups of claims are inexorably linked. No additional search burden would be present during examination.
This is not found persuasive because claim 14, lines 1-2, recite “the at least one
polyaminoamide comprising a group of formula N1 as defined in claim 1”. Claim 1 is a method
claim and not a product claim.
Claim 16, line 1, recites “A process for electrodepositing copper on a substrate”. Claim 1, lines 4-5, recite “a composition for electrodepositing nanotwinned copper”. The composition of claim 1 is defined by an intended use, i.e., “for electrodepositing nanotwinned copper,”
which is not material to the composition, and therefore, the claimed method is different from the claimed process.
The requirement is still deemed proper and is therefore made FINAL.
Accordingly, claims 3, 7-8 and 14-16 are withdrawn from consideration as being directed to a non-elected invention.
Drawings
The drawings were received on January 2, 2025. These drawings are acceptable.
Specification
The disclosure is objected to because of the following informalities:
page 5, line 35, please deleted the reference to “claim 1”.
Appropriate correction is required.
Claim Objections
Claims 1 and 5 are objected to because of the following informalities:
Claim 1
line 18, please insert a -- : -- (colon) after the word “of”.
line 23, please insert a -- : -- (colon) after the word “of”.
line 54, please insert a -- : -- (colon) after the word “of”.
Claim 5
line 4, please amend the beginning parenthesis “(“ to a beginning bracket -- [ --.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
Claims 1-2, 4-6, 9-13 and 17-20 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.
Claim 1
line 54, the definition of “ArN11” is missing.
Claim 17
line 4, “RN32” is missing in a formula recited in claim 1.
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.
Claim(s) 1-2, 4, 9, 11-13, 17 and 19-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over CN 109232299 (‘299).
Regarding claim 1, CN ‘299 teaches a method of using a polyaminoamide comprising a group of formula
[B-A-B’-Z]n[y-Z]m (N1)
[= a n-decyl gemini surfactant with a structure of Formula I:
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wherein n = 1 and m = 0] (ρ [0006]; and Foreign Document: page 2, Formula 1),
the method comprising:
• using the polyaminoamide in a composition (= adding a compound of formula I to
crude oil emulsions) [ρ [0023]], wherein
B, B’ are the same1 or different, and are aminoacid fragments of formula N2a
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(N2a),2
or of Formula N2b
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(N2b),
or of Formula N2c
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(N2c),
A is a diamine fragment independently selected from the group consisting of formula N3a
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(N3a),3
and of Formula N3b
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(N3b),
DN1 is a divalent group selected from the group consisting of:
(a) a C1-C20-alkanediyl which may optionally be substituted by an amino group or interrupted by a double bond or an imino group, and
(b) an ether or polyether group of formula N2c
-[DN10-O-]oDN10- (N2c);
DN2 is a divalent group selected from the group consisting of:
(a) a linear, branched or cyclic C1 to C20 alkanediyl, which may optionally be
interrupted by one or more NRN10, or substituted by one or more groups NRN10RN11 or
ORN10, or
(b) -DN13-ArN13-DN13-; and
(c) an ether or polyether group of formula N2c;
DN10 is selected from the group consisting of a linear or branched C1-C6-alkanediyl;
DN13 is selected from the group consisting of a C1-C6-alkanediyl;
ArN13 is a C6 toC10 aromatic moiety;
DN11, DN12 are
(a) independently selected from the group consisting of a linear or branched C1 to C6 alkanediyl, or
(b) both, together with the adjacent two N atoms, part of a 5 or 6-membered
aromatic heterocyclic ring system;
DN21, DN22 are
(a) independently selected from the group consisting of a linear or branched C1
to C6 alkanediyl, or
(b) both, together with the adjacent two N atoms, part of a 5 or 6-membered aromatic heterocyclic ring system;
DN23 is a C1 to C6 alkanediyl;
RN1, RN2 are independently selected from the group consisting of a C1 to C6 alkyl;
RN3 is selected from the group consisting of H and a C1 to C6 alkyl;
RN10, RN11 are independently selected from the group consisting of H and a linear or
branched C1 to C6 alkanediyl;
XN2 is N or CRN3;
Y is a diamine comonomer fragment;
Z is a divalent coupling fragment of formula N4
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(N4);
ZN1 is selected from the group consisting of:
(a) a linear or branched C1 to C12 alkanediyl, which may be interrupted by one or more O atoms, and
(b) a divalent group -DN11-ArN11-DN11-;
ZN2, ZN3 are independently selected from the group consisting of a chemical bond and
hydroxyethanediyl;
n is an integer of from 1 to 400;
m is 0 or an integer of from 1 to 400;
o is an integer of from 1 to 6; and
p, r are independently 0 or 1;
wherein the ratio of n:m is at least 25:754
(= a n-decyl gemini surfactant with a structure of Formula I:
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where
DN1 is a C1 alkanediyl,
DN2 is a C3 alkanediyl,
RN1, RN2 are C4 alkyls,
RN3 is a C10 alkyl,
Z is a divalent coupling fragment of formula N4:
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,
ZN1 is a C1 alkanediyl,
ZN2 is a chemical bond,
ZN3 is a chemical bond,
n is 1, and
m is 0) [ρ [0006]; and Foreign Document: page 2, Formula 1].
CN ‘299 does not teach the following:
a. For electrodepositing nanotwinned copper.
The subject matter would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention because this is the intended use of the composition and is not material to the composition.
b. Wherein RN3 is selected from the group consisting of H and a C1 to C6 alkyl.
CN ‘299 teaches that RN3 is a C10 alkyl.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify RN3 taught by CN ‘299 with wherein RN3 is selected from the group consisting of H and a C1 to C6 alkyl. The person with ordinary skill in the art would have been motivated to make this modification because a C6 alkyl and a C10 alkyl are homologs5, and because structural relationships may provide the requisite motivation or
suggestion to modify known compounds to obtain new compounds. For example, a prior art
compound may suggest its homologs because homologs often have similar properties and
therefore the person with ordinary skill in the art would ordinarily contemplate making them to try to obtain compounds with improved properties. See MPEP §2144.09.
Regarding claim 2, CN ‘299 teaches wherein B and B’ are the same or different (= the same) and are aminoacid fragments of formula N2a (=
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)
[ρ [0006]; and Foreign Document: page 2, Formula 1].
The method of CN ‘299 differs from the instant invention because CN ‘299 does not
disclose wherein DN1 is selected from the group consisting of (i) a linear C2 to C10 alkanediyl group, (ii) a C2 to C3 oxyalkylene group, (iii) a cyclic C6 to C12 alkanediyl group, and (iv) a divalent phenyl or pyridyl group.
CN ‘299 teaches that DN1 is a C1 alkanediyl.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify DN1 taught by CN ‘299 with wherein DN1 is selected from the group consisting of (i) a linear C2 to C10 alkanediyl group, (ii) a C2 to C3 oxyalkylene group, (iii) a cyclic C6 to C12 alkanediyl group, and (iv) a divalent phenyl or pyridyl group. The person with ordinary skill in the art would have been motivated to make this
modification because a C2 alkanediyl and a C1 alkanediyl are homologs6, and because structural
relationships may provide the requisite motivation or suggestion to modify known compounds to obtain new compounds. For example, a prior art compound may suggest its homologs because homologs often have similar properties and therefore chemists of ordinary skill would ordinarily contemplate making them to try to obtain compounds with improved properties. See MPEP § 2144.09.
Regarding claim 4, CN ‘299 teaches wherein A is a fragment of formula N3a, wherein DN2 is selected from the group consisting of methanediyl, ethanediyl, and 1,3-propanediyl (=
propanediyl:
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)
[ρ [0006]; and Foreign Document: page 2, Formula 1].
Regarding claim 9, CN ‘299 teaches wherein Z is selected from the group consisting of C1
to C12 alkanediyl, a bis(2-ethanediyl)ether group, 2-hydroxypropane-1,3-diyl, and 4,4’-
bis(methyl)biphenyl (= C4 alkanediyl:
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)
[ρ [0006]; and Foreign Document: page 2, Formula 1].
Regarding claim 11, CN ‘299 teaches wherein m is 0 or an integer from 1 to 200 (= m is
0) [ρ [0006]; and Foreign Document: page 2, Formula 1].
Regarding claim 12, CN ‘299 does not teach wherein the ratio of n:m is at least 50:50.
The subject matter would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention because CN ‘299 teaches that n = 1 and m = 0. The limitation of “m is … an integer of from 1 to 400” is claimed in the alternative, and therefore, is an optional limitation.
Regarding claim 13, CN ‘299 teaches wherein the mass average molecular weight MW
of the polyaminoamide is of from 450 g/mol to 150 000 g/mol (= a n-decyl gemini surfactant
with a structure of Formula I)7 [ρ [0006]; and Foreign Document: page 2, Formula 1].
Regarding claim 17, CN ‘299 does not teach wherein RN3 is H or methyl and RN32 is H or
methyl.
CN ‘299 teaches that RN3 is a C10 alkyl.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify RN3 taught by CN ‘299 with wherein RN3 is H or methyl and RN32 is H or methyl. The person with ordinary skill in the art would have been motivated to make this modification because a methyl and a C10 alkyl are homologs8, and because structural relationships may provide the requisite motivation or suggestion to modify known compounds to obtain new compounds. For example, a prior art compound may suggest its homologs because homologs often have similar properties and therefore the person with ordinary skill in the art would ordinarily contemplate making them to try to obtain compounds with improved properties. See MPEP §2144.09.
Regarding claim 19, CN ‘299 teaches wherein m is 0 or an integer from 2 to 150 (= m is 0) [Foreign Document: page 2, Formula 1].
Regarding claim 20, CN ‘299 does not teach wherein the ratio of n:m is 70:30.
The subject matter would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention because CN ‘299 teaches that n = 1 and
m = 0. The limitation of “m is … an integer of from 1 to 400” is claimed in the alternative, and therefore, is an optional limitation.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter:
As for the elected species:
Claim 5 defines over the prior art of record because the prior art does not contain any
language that teaches or suggests the method according to claim 1, wherein A is a fragment of
formula N3a, wherein DN2 is selected from the group consisting of an ether or polyether group
of formula N2a
-[DN10-O-]oDN10 (N2a),
wherein DN10 is selected from the group consisting of a C1-C4-alkanediyl and o is an integer from 1 to 5.
Claim 6 defines over the prior art of record because the prior art does not contain any language that teaches or suggests the method according to claim 1, wherein the polyaminoamide is
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wherein
DN1 is selected from the group consisting of methanediyl, ethanediyl, propanediyl and butanediyl;
RN3 is selected from the group consisting of H, methyl and ethyl;
RN32 is selected from the group consisting of H, methyl and ethyl; and
Z is -CH2-CH(OH)-CH2-.
Claim 10 defines over the prior art of record because the prior art does not contain any language that teaches or suggests the method according to claim 1, wherein n is an integer from 2 to 200.
Claim 18 defines over the prior art of record because the prior art does not contain any
language that teaches or suggests the method of using the polyaminoamide according to claim
1, wherein n is an integer from 2 to 150.
The prior art does not contain any language that teaches or suggests the above. Therefore, a person skilled in the art would not have been motivated to adopt the above conditions, and a prima facie case of obviousness cannot be established.
Claims 5-6, 10 and 18 are dependent claims rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Citations
The prior art made of record and not relied upon is considered pertinent to applicant's
disclosure.
Kienle et al. (US Patent Application Publication No. 2020/0185224 A1) is cited to teach a
polyaminoamide comprising a polymer fragment of formula I:
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(page 13, claim 1).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EDNA WONG whose telephone number is (571) 272-1349. The examiner can normally be reached Monday-Friday, 7:00 AM- 3:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Luan Van can be reached at (571) 272-8521. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/EDNA WONG/Primary Examiner, Art Unit 1795
1 Are the same is the elected species.
2 N2a is the elected species.
3 N3a is the elected species.
4 CN ‘299 teaches that n = 1 and m = 0. The limitation of “m is … an integer of from 1 to 400” is claimed in the alternative, and therefore, is an optional limitation.
5 A homolog in chemistry is a compound belonging to a series of molecules that share the same functional group and general formula, but differ by a repeating unit, typically a methylene (CH2) group. Homologs possess similar chemical properties but show gradual, consistent trends in physical properties, such as boiling point, as molecular weight increases.
6 A homolog in chemistry is a compound belonging to a series of molecules that share the same functional group and general formula, but differ by a repeating unit, typically a methylene (CH2) group. Homologs possess similar chemical properties but show gradual, consistent trends in physical properties, such as boiling point, as molecular weight increases.
7 The molecular weight of Formula I is ~812.
8 A homolog in chemistry is a compound belonging to a series of molecules that share the same functional group and general formula, but differ by a repeating unit, typically a methylene (CH2) group. Homologs possess similar chemical properties but show gradual, consistent trends in physical properties, such as boiling point, as molecular weight increases.