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 .
Claim Rejections - 35 USC § 102
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.
Claims 1-4 and 7-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent No. 4,942,213 to Haubennestel et al. (Cited on search reports disclosed in newly cited IDS).
As to claims 1-4, Haubennestel discloses an addition polymer or a salt thereof wherein an monofunctional ester corresponds to formula I-1 in claims 2 and 3 having an Mn of 500 derived from 3 moles of caprolactone and 1 mole of n-decanol (C-10 alkyl alcohol) added to both ends of a polyurethane chain produced by the reaction of isophorone diisocyanate and 2-ethylhexane-1,3-diol. The polymer produced would have a polyurethane backbone and chain ends of that contain an ester group and chain ends containing a non-polar group from the decyl component from the monofunctional ester (Polymer M).
As to claims 7 and 9, Haubennestel discloses a Mn of the addition polymer that ranges from 500 to 3,000 (8:48-50), more preferably 1500 g/mol (Polymer M).
As to claim 8, the addition polymer disclosed in Haubennestel would contain a decyl group from the monofunctional ester reactant.
As to claim 10, Haubennestel discloses an addition polymer or a salt thereof wherein an monofunctional ester corresponds to formula I-1 in claims 2 and 3 having an Mn of 500 derived from 3 moles of caprolactone and 1 mole of n-decanol (C-10 alkyl alcohol) added to both ends of a polyurethane chain produced by the reaction of isophorone diisocyanate and 2-ethylhexane-1,3-diol. The polymer produced would have a polyurethane backbone and chain ends of that contain an ester group and chain ends containing a non-polar group from the decyl component from the monofunctional ester (Polymer M). Because of the similarities in reactants and the polymer produced therein, the claimed properties are presumed inherent.
Allowable Subject Matter
Claims 5-6 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Applicant's submission of an information disclosure statement under 37 CFR 1.97(c) with the timing fee set forth in 37 CFR 1.17(p) on 06/17/2026 prompted the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 609.04(b). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL L LEONARD whose telephone number is (571)270-7450. The examiner can normally be reached M - F 7:00-4:00.
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/MICHAEL L LEONARD/ Primary Examiner, Art Unit 1763
