Detailed Office Action
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Acknowledgement of Response to Unity of Invention Requirements 1-3
2. Applicants’ responses, filed 6 October 2025 and 17 November 2025, to the Unity of Invention Requirement of 8 July 2025 is acknowledged. In response to Unity of Invention Requirement 1, applicants have elected, without traverse, species I, drawn to a rheological additive derived from a monoamine having an aliphatic side chain. In response to Unity of Invention Requirement 2, applicants have elected, without traverse, species I, drawn to a rheological additive having a C1-C20 alkyl end group. In response to Unity of Invention Requirement 3, applicants have elected, without traverse, species I, drawn to a rheological additive derived from a diamine. Regarding applicants’ response, filed 17 November 2025, to Unity of Invention Requirement 3, applicants have stated that the claims readable on the elected species are 2-5, 19-21, and 111; however, claims 19-21 are readable on non-elected species II, the triamine species. Furthermore, it is noted that within the response of 6 October 2025, applicants identified claims 1-5 and 111 as encompassing the elected invention for examination. Accordingly, claims 1-5 and 11 have been examined on the merits, and claims 19-21 and 67-71 have been withdrawn from further consideration, as being drawn to non-elected species.
Claim Rejections - 35 USC § 112
3. 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.
4. Claims 1-5 and 111 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.
Firstly, with respect to primary monoamine (b) of claims 1 and 2, and second primary monoamine (a) of claim 111, it is unclear from the claim language if the specified end groups are required within the side chain, as opposed to the main chain. Regarding claim 111, it is noted that the end group of the first primary monoamine is claimed as being within the side chain.
Secondly, regarding claim 111, with respect to (b), the language within parentheses denoted by “e.g. …” renders the claim indefinite, because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Double Patenting Rejection
5. A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
6. Claims 1-5 and 111 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-5 and 110 of copending Application No. 18/142,358 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Prior Art Rejection
7. 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.
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.
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.
8. Claims 1-5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2020/185450 A1.
WO 2020/185450 A1 discloses polyurea dispersants produced by reacting aliphatic diisocyanates, corresponding to applicants’ formula (D), with polyoxyalkylene monoamines and combinations of polyoxyalkylene monoamines and polyoxyalkylene diamines, wherein the polyoxyalkylene monoamines contain aliphatic side chains when derived from propylene oxide or butylene oxide and further wherein these polyoxyalkylene monoamines correspond to applicants’ elected primary monoamine (b). Also, the polyoxyalkylene diamines correspond to applicants’ elected diamine (c) of claim 2 and formula (A2) of claim 3 and further satisfy the limitations of claims 4 and 5. See abstract and paragraphs [0029] and [0034]-[0044].
9. Claims 2-5 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2020/185450 A1 in view of WO 2016/082058 A1.
WO 2020/185450 A1 discloses polyurea dispersants produced by reacting aliphatic diisocyanates, corresponding to applicants’ formula (D), with polyoxyalkylene monoamines, wherein the polyoxyalkylene monoamines contain aliphatic side chains when derived from propylene oxide or butylene oxide and further wherein these polyoxyalkylene monoamines correspond to applicants’ elected primary monoamine (b). See abstract and paragraphs [0029] and [0034]-[0040].
10. Though the primary reference fails to disclose the use of diamines containing amino-alkylene linker groups, the reaction of these diamines with polyisocyanates to produce dispersants was known at the time of invention, as evidenced by the disclosure within page 11, lines 8+ within WO 2016/082058 A1. Accordingly, since it has been held that it is prima facie obvious to use a known compound for its known function, the position is taken that it would have been obvious to use these diamines as linking compounds, so as to arrive at the instant invention.
11. Claim 111 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2020/185450 A1 as evidenced by Bakhshi et al. (Dendrons as active clicking tool for generating non-leaching antibacterial material (page 5323).
WO 2020/185450 A1 discloses polyurea dispersants produced by reacting uretdione diisocyanates, corresponding to applicants’ formula (J), with polyoxyalkylene monoamines and combinations of polyoxyalkylene monoamines and polyoxyalkylene diamines, wherein the polyoxyalkylene monoamines contain aliphatic side chains when derived from propylene oxide or butylene oxide and further wherein these polyoxyalkylene monoamines correspond to applicants’ elected first and second primary monoamines. Also, the polyoxyalkylene diamines correspond to applicants’ elected diamine (b). See abstract and paragraphs [0033]-[0044]. The disclosure within page 5323, second paragraph of Bakhshi et al that primary amines react with uretdione rings to open the uretdione ring supports the production of the rheological additive as claimed.
12. Claim 111 is rejected under 35 U.S.C. 103 as being unpatentable over WO 2020/185450 A1 in view of WO 2016/082058 A1 and Bakhshi et al. (Dendrons as active clicking tool for generating non-leaching antibacterial material (page 5323).
WO 2020/185450 A1 discloses polyurea dispersants produced by reacting uretdione diisocvanates, corresponding to applicants’ formula (J), with polyoxyalkylene monoamines, wherein the polyoxyalkylene monoamines contain aliphatic side chains when derived from propylene oxide or butylene oxide and further wherein these polyoxyalkylene monoamines correspond to applicants’ elected primary monoamine (b). See abstract and paragraphs [0033]-[0040].
13. Though the primary reference fails to specifically disclose the reaction/ring opening of the uretdione ring, the position is taken that it was known at the time of invention that the uretdione ring opens to yield further chain extension/crosslinking through reaction with primary amines, as evidenced by the disclosure within page 5323, second paragraph of Bakhshi et al. Bearing this in mind, though the primary reference fails to disclose the use of diamines containing amino-alkylene linker groups, the reaction of these diamines with polyisocyanates to produce dispersants was known at the time of invention, as evidenced by the disclosure within page 11, lines 8+ within WO 2016/082058 A1. Accordingly, since it has been held that it is prima facie obvious to use a known compound for its known function, the position is taken that it would have been obvious to use these diamines as linking compounds, including as linking compounds to react with the uretdione groups, so as to arrive at the instant invention.
Conclusion
14. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Rabon A Sergent whose telephone number is (571)272-1079. The examiner can normally be reached on Monday through Friday from 9:00 AM until 5:00 PM, ET.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Riviere Kelley, can be reached at telephone number 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RABON A SERGENT/Primary Examiner, Art Unit 1765