www.uspto.gov
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`15/733,205
`
`06/10/2020
`
`Jerald K. Rasmussen
`
`79799US007
`
`3573
`
`3M INNOVATIVE PROPERTIES COMPANY
`PO BOX 33427
`ST. PAUL, MN 55133-3427
`
`GORDONII, BRADLEY R
`
`ART UNIT
`
`1773
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`12/20/2022
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`Thetime period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`
`LegalUSDocketing @ mmm.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`Application No.
`Applicant(s)
`15/733,205
`Rasmussen et al.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`BRAD GORDON
`1773
`Yes
`
`
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom the mailing
`date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHSfrom the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`1) Responsive to communication(s) filed on 3 November 2022.
`C) A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`2a)[¥) This action is FINAL.
`2b) (J This action is non-final.
`3)02 An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4)\0) Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`
`
`Disposition of Claims*
`1-16 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) 1-6 and 10-12 is/are withdrawn from consideration.
`1) Claim(s)__ is/are allowed.
`Claim(s) 7-9 and 14-16 is/are rejected.
`)
`Claim(s) 13 is/are objectedto.
`O Claim(s
`are subject to restriction and/or election requirement
`)
`* If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http:/Awww.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`Application Papers
`10)L) The specification is objected to by the Examiner.
`11)0) The drawing(s) filedon__ is/are: a)C] accepted or b)C) objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`c)LJ None of the:
`b)L) Some**
`a) All
`1.2 Certified copies of the priority documents have been received.
`2..) Certified copies of the priority documents have beenreceived in Application No.
`3.{%] Copies of the certified copies of the priority documents have been receivedin this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`* See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1)
`
`Notice of References Cited (PTO-892)
`
`2) (J Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`
`3)
`
`(LJ Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) (J Other:
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20221210
`
`

`

`Application/Control Number: 15/733,205
`Art Unit: 17738
`
`Page 2
`
`DETAILED ACTION
`
`1. Notice of Pre-AIA or AIA Status
`
`The present application,filed on or after March 16, 2018, is being examined under
`the first inventorto file provisions of the AIA.
`
`2.
`
`Status of the Claims
`
`Claims 1-16 are pending. Claims 1-6 and 10-12 stand withdrawn. Thus,in total,
`claims 7—9 and 13-16 are the subject of this Office Action.
`
`Claim Rejections - 35 USC § 112
`
`3.1 The following is a quotation of the 35 U.S.C. 112(a):
`
`The specification shall contain a written description of the invention, and of the
`mannerand process of making andusingit, in such full, clear, concise, and
`exact terms as to enable any person skilled in the art. to which it pertains, or
`with which it is most. nearly connected, to make and use the same, andshall set
`forth the best mode contemplated by the inventor of carrying out his invention.
`
`3.2. Claims 7—9 and 18-16 are rejected under 35 U.S.C. 112(a).
`
`3.2.1 With respect to claim 7, the Specification, while being enabling for “[a]n
`article comprising a reaction product of a reaction composition exposed to actinic
`radiation, the reaction composition comprising .
`.
`. a solid polymeric substrate
`having a plurality of thiocarbonylthio-containing groups directly and covalently
`bonded to the solid polymeric substrate”, does not reasonably provide enablementfor
`the limitation “wherein the reaction product comprises grafted polymeric chains
`rather than thiocarbonylthio groups directly and covalently attached to carbon
`atoms in a polymeric backbone of the solid polymeric substrate”. The Specification
`does not enable any person skilled in the art to which it pertains, or with whichit is
`most nearly connected, to make the invention commensurate in scope with these
`claims.
`
`In particular, the Specification is not enabling for at least the following reasons:
`
`

`

`Application/Control Number: 15/733,205
`Art Unit: 17738
`
`Page 3
`
`(a)
`
`(b)
`
`(c)
`
`(d)
`
`(e)
`
`The Breadth of the Claims. The breadth of the claims covers, inter alia, all
`species of solid polymeric substrate andall species of thiocarbonylthio-
`containing groups.
`
`The Natureof the Invention. The nature of the invention is directed to an
`article comprising a substrate. The substrate initially has thiocarbonylthio-
`containing groups. Polymeric chains are then grafted to the substrate.
`However, the claim appearsto the require that the initial thiocarbonylthio-
`containing groups of the substrate are not directly and covalently attached to
`carbon atomsin a polymeric backboneof the substrate.
`
`The State of the Prior Art. As it pertains to substrates having thiocarbonyl]thio-
`containing groups attached thereto, the prior art suggests that attaching
`functional groups to substrates was known. However, the concept of attaching
`functional groups directly and covalently to a substrate appears to require that
`the functional groups are attached to a polymeric backboneof the substrate—
`as opposed to some other portion of the substrate. In this vein, Examiner was
`unable to located prior art which teaches or suggests that a thiocarbonylthio-
`containing group can bedirectly and covalently attached to some other portion
`of a substrate aside from the substrate’s polymeric backbone.
`
`The Level of One of Ordinary Skill. A person of ordinary skill in this art would
`be required to have knowledge of polymer chemistry and functionalization
`techniques. Such knowledge may require at least a bachelor’s degree in
`chemistry or chemical engineering combined with applied experience in a
`laboratory, factory, or equivalent thereof.
`
`The Level of Predictability in the Art. The level of predictability in the art does
`not appearto be sufficiently high enough that a person having ordinary skill
`would be able to predict how to attach a thiocarbonylthio-containing group can
`directly and covalently to a polymeric substrate—with the constraint of not
`directly and covalently attaching the thiocarbonlythio-containing group to a
`polymeric backbone of the polymeric substrate.
`
`(1)
`
`The Amount of Direction Provided by the Inventor. The Specification appears to
`provide examples of how to graft polymeric chains to a polymeric substrate and
`
`

`

`Application/Control Number: 15/733,205
`Art Unit: 17738
`
`Page 4
`
`also how to attach thiocarbonylthio-containing groups to a substrate. However,
`the Specification does not appear to teach how to attach a thiocarbonyl]thio-
`containing group can directly and covalently to a polymeric substrate—with
`the constraint of not directly and covalently attaching the thiocarbonlythio-
`containing group to a polymeric backbone of the polymeric substrate.
`
`(g)
`
`(h)
`
`The Existence of Working Examples. To Examiner’s knowledge, there are no
`working examples of how to attach a thiocarbonylthio-containing group can
`directly and covalently to a polymeric substrate—with the constraint of not
`directly and covalently attaching the thiocarbonlythio-containing group to a
`polymeric backbone of the polymeric substrate.
`
`The Quantity of Experimentation Needed. In view of the abovefindings, it is
`respectfully submitted that a person having ordinaryskill in the art would be
`required to carry out undue experimentation in order to attach a
`thiocarbonylthio-containing group can directly and covalently to a polymeric
`substrate—with the constraint of not directly and covalently attaching the
`thiocarbonlythio-containing group to a polymeric backboneof the polymeric
`substrate.
`
`For at least these reasons, claim 7 and its dependent claims are not considered
`enabled by the original full disclosure and are therefore rejected under 35
`U.S.C. 112(a).
`
`3.38 The following is a quotation of 85 U.S.C. 112(b):
`
`(b) CONCLUSION.—Thespecification shall conclude with one or more claims
`particularly pointing out anddistinctly claiming the subject matter which the
`inventor or a joint inventor regards as the invention.
`
`3.4 Claims 7—9 and 13-16 are rejected under 35 U.S.C. 112(b)
`as being indefinite
`for failing to particularly point out and distinctly claim the subject matter which the
`inventor or a joint inventor regards as the invention.
`
`3.4.1 Claim 7 recites the limitation “wherein the reaction product comprises
`grafted polymeric chains rather than thiocarbonylthio groups directly and covalently
`attached to carbon atoms in a polymeric backboneof the solid polymeric substrate”.
`Respectfully, it is unclear which object this limitation is requiring to be directly and
`
`

`

`Application/Control Number: 15/733,205
`Art Unit: 17738
`
`Page 5
`
`covalently attached to the carbon atoms: (A) the grafted polymeric chains; or
`(B) thiocarbonylthio groups. Put another way, based on the languageof the instant
`limitation, it is unclear which of the following interpretations apply: (1) wherein the
`reaction product comprises grafted polymeric chains (rather than thiocarbonylthio
`groups) directly and covalently attached to carbon atoms in a polymeric backboneof
`the solid polymeric substrate; and (2) wherein the reaction product comprises
`grafted polymeric chains—rather than thiocarbonylthio groups directly and
`covalently attached to carbon atoms in a polymeric backbone of the solid polymeric
`substrate.
`
`Claim 7 recites the limitation “wherein at least some of the grafted polymeric chains
`are terminated by a thiol or a thiocarbonylthio-containing group directly attached to
`a carbon atom of the grafted polymeric chain” (underlining added). Here there are
`twoissues.
`
`First, as it applies to the limitation of “the grafted polymeric chain’, earlier in the
`claim the recitation of “wherein the reaction product comprises grafted polymeric
`chains” appears. As such, the instant recitation conveys that there are multiple
`grafted polymeric chains. That being said, vis-a-vis the limitation of “the grafted
`polymeric chain’, it is unclear which grafted polymeric chain is being referred to.
`
`Second, regarding the limitation “a thiol or a thiocarbonylthio-containing group
`directly attached to a carbon atom of the grafted polymeric chain’, it is unclear
`whetherthe claim is requiring that the thiol is directly attached. In other words,is
`this limitation requiring: (A) a thiol directly attached to a carbon atom of the grafted
`polymeric chain or a thiocarbonylthio-containing group directly attached to a carbon
`atom of the grafted polymeric chain; or (B) (2) a thiol or (4) a thiocarbonylthio-
`containing group directly attached to a carbon atom of the grafted polymeric chain?
`
`For at least these reasons, claim 7 appears to be indefinite. In addition, the claims
`depending from claim 7 are also rejected under 35 U.S.C. 112(b) based on their
`dependence from an indefinite claim.
`
`4,
`
`Claim Rejections - 35 USC § 103
`
`4.1 The following is a quotation of 35 U.S.C. 103 which formsthe basis for all
`obviousnessrejections set forth in this Office Action:
`
`

`

`Application/Control Number: 15/733,205
`Art Unit: 17738
`
`Page 6
`
`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 andtheprior 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 mannerin which the invention was made.
`
`4.2 The factual inquiries set forth in Graham v. John Deere Co., 3883 US 1 (1966),
`that are applied for establishing a background for determining obviousness under
`35 U.S.C. 108 are summarized as follows:
`
`Determining the scope and contents of the prior art.
`Ascertaining the differences between the prior art and the claimsat issue.
`Resolving the level of ordinary skill in the pertinentart.
`
`Pwnr Considering objective evidence present in the application indicating
`
`obviousness or nonobviousness.
`
`4.8 This application currently names joint inventors. In considering patentability
`of the claims Examiner presumes that the subject matter of the various claims was
`commonly owned asofthe effective filing date of the claimed invention(s) absent any
`evidence to the contrary. Applicant is advised of the obligation under 87 CFR 1.56 to
`point out the inventor and effective filing dates of each claim that was not commonly
`owned asof the effective filing date of the later invention in order for 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.
`
`4.4 Claims 7—9 and 14—16 are rejected under 35 U.S.C. 108 as being unpatentable
`over RASMUSSEN! in view of JANSSEN? and NUNEZ.?
`
`4.4.1 With respect to claim 7, the following analysis applies.
`
`(A) Overview of Rasmussen
`
`RASMUSSENdiscloses an article comprising: (1) a porous substrate; and
`(2) a polymer borne on the porous substrate. (Rasmussen, Abstract.)
`
`1US 2016/0231208 Al, published August 11, 2016 (““Rasmussen’).
`2 US 4,968,532 A, issued November6, 1990 (“Janssen”).
`3 WO 2010/147864 A2, published December 238, 2010 (‘Nunez’).
`
`

`

`Application/Control Number: 15/733,205
`Art Unit: 17738
`
`Page 7
`
`(A)(1) Solid polymeric substrate
`
`The porous substrate can be a porous polymeric membrane. (/d. 4 10, 93.)
`Additionally, Rasmussen’s disclosure suggests that its substrates are solid. For
`example, Rasmussen teaches that its porous substrate can comprise thermoplastic
`polymeric material—suchaspolyolefins, poly(sulfones), poly(vinyl acetates), etc. (Id.
`4 94-100.) These thermoplastic polymeric materials are interpreted to be solids (as
`opposed to, say, liquids or gases).4 As another example, Rasmussen teaches that the
`substrate can be a nylon membranesubstrate that is coated. This teaching
`reasonably suggests that substrate can be a solid. And, in view of the foregoing,
`Examineris interpreting Rasmussen’s porous substrate as a solid polymeric
`substrate.
`
`(A)(2) Grafted polymeric chains attached directly and covalently to carbon atoms in
`a polymeric backboneof the solid polymeric substrate
`
`Backbone.Asit applies to the claimed “polymeric backbone of the solid polymeric
`substrate” (id.), the substrate can be made of polymeric materials. (Rasmussen
`{{ 94-100) To this end, one or more of Rasmussen’s polymeric materials comprises a
`polymeric backbone. For instance, { 94 of Rasmussen discloses that the polymeric
`material can be a polyolefin (a polymer having a carbon backbone).° In particular,
`the polyolefin can be, inter alia, polypropylene—a polymerconsisting of a carbon
`backbone, each carbon atom being saturated with hydrogen atoms.® (/d. {| 96.)
`
`Grafted polymeric chains attached directly and covalently. As it applies to the
`claimed “grafted polymeric chains attached directly and covalently to carbon atoms”
`of the polymeric backbone, as pointed out above Rasmussen discloses a polymer
`borne on the porous substrate. (Rasmussen, Abstract.) This polymeris formed from
`interpolymerized units of at least one monomer comprising at least one monovalent
`ethylenically unsaturated group. (/d.) Rasmussen suggests that polymerization of
`these monomerscan take place in the presence of the substrate and that the
`
`4 See, e.g., What are amorphous thermoplastics, Simtec-Silicone.com,
`https://www.simtec-silicone.com/what-are-amorphous-thermoplastics/ (last visited
`March 5, 2021) (“Thermoplastics are a broad class of materials which are solid and
`brittle at room temperature but, when heated, becomesoft and pliable.”).
`5 See, e.g., Polyolefin, Brittanica.com, https://www.britannica.com/science/polyolefin
`(last visited March 5, 2021) (showing the chemical structure of a polyolefin).
`8 See, e.g., Polyethylene, Britannica.com,https://www.britannica.com/science/
`polyethylene (last visited March 5, 2021) (showing the chemical structure of
`polyethylene).
`
`

`

`Application/Control Number: 15/733,205
`Art Unit: 17738
`
`Page 8
`
`resulting polymer can be grafted (covalently bonded) to the surface of the substrate.
`(Id. § 107.) Thus, when considering this teaching in light of the fact that Rasmussen
`teaches polyolefins (id. {| 94, 96)—someof which consist entirely of a pure carbon
`backbone and attached hydrogen atoms(e.g., polypropylene)—the only way for the
`polymerto be grafted to the surface of the substrate would be for: (1) a first
`monomerto attach directly and covalently to a carbon atom in the backbone;
`(2) subsequently or simultaneously, additional monomers would have to bind to
`other carbon atomsin the backbone; and (8) these attached monomers would then
`polymerize to form multiple polymeric chains—each attached to the substrate. Ergo,
`in view of these findings, Examiner respectfully submits that “polymeric chains
`attached directly and covalently to carbon atoms in a polymeric backbone of the solid
`polymeric substrate” (clm. 7, ll. 3-4) is within the teaching of the Rasmussen.
`
`(A)(8) First monomer
`
`According to Rasmussen, the polymer borne on the substrate comprises
`interpolymerized units of at least one monomerconsisting of: (1) at least one
`monovalent ethylenically unsaturated group; (2) at least one monovalent ligand
`functional group selected from acidic groups, basic groups other than guanidine, and
`salts thereof; and (8) a multivalent spacer group that is directly bonded to the
`monovalent groups so as to link at least one ethylenically unsaturated group and at
`least one ligand functional group by a chain of at least six catenated atoms.
`(Rasmussen, Abstract; {J 10.)
`
`(B) Claim elements not expressly taught or suggested by Rasmussen
`
`Rasmussen does not appear to specify: (1) that its solid polymeric substrate has a
`plurality of thiocarbonylthio-containing groups directly and covalently bonded to
`said substrate; and (2) that at least some of its grafted polymeric chains are
`terminated by a thiol or a thiocarbonylthio-containing group, the thiol or
`thiocarbonylthio-containing group directly attached to a carbon atom of the grafted
`polymeric chain.
`
`(B)\) Thiocarbonylthio-containing groups directly and covalently bondedto the
`substrate
`
`JANSSEN teaches modifying a substrate with functional groups priorto graft
`polymerizing monomersonto the surface of the substrate. (Janssen col. 2, ll. 14-61.)
`Janssen further teaches that this approach was useful for providing graft
`polymerization of monomers. (Id.col. 2, ll. 54-61.)
`
`

`

`Application/Control Number: 15/733,205
`Art Unit: 17738
`
`Page 9
`
`NUNEZsuggests that including a thiocarbonylthio-containing group on the end of a
`polymer during polymerization provides: slowing polymerization and higher residual
`monomerat the end of polymerization. (Nunez 67.) Nunez further suggests that
`polymers having a thiocarbonylthio-containing group on an end were suitable as
`RAFT agents. Ud. 12.)
`
`Previously the courts have held that “[t]he combination of familiar elements
`according to known methodsis likely to be obvious when it does no more thanyield
`predictable results.” ASR Intl Co. v. Teleflex Inc., 550 U.S. 398, 415-16 (2007).
`Furthermore, the courts have held that the selection of a known material based on
`its suitability for its intended use can support a primafacie obviousness
`determination. See MPEP § 2144.07 (citing In re Leshin, 277 F.2d 197, 200 (CCPA
`1960) (“Mere selection of known plastics to make a container-dispenserof a type
`made of plastics prior to the invention, the selection of the plastics being on the basis
`of suitability for the intended use, would be entirely obvious....”); Sinclair & Carroll
`Co. v. Interchemical Corp., 325 U.S. 327, 335 (1945) (“Reading a list and selecting a
`known compound to meet known requirements is no more ingenious than selecting
`the last piece to put into the last opening in a jig-saw puzzle. It is not invention.”);
`Ryco, Inc. v. Ag-Bag Corp., 857 F.2d 1418, 1425 (Fed. Cir. 1988) (A claimed
`agricultural bagging machine wasfoundto differ from a prior art machine only in
`that brake meansof the claimed machine were hydraulically operated whereasthe
`prior art machine’s brakes were mechanically operated. The claimed machine was
`held to be obvious over the prior art machine in view of references which disclosed
`hydraulic brakes for performing the samefunction, albeit in a different
`environment.)).
`
`With these holdings in mind,it is respectfully submitted that, at the time
`Applicant’s invention waseffectively filed, it would have been obvious to one skilled
`in the art to combine the teachings of Janssen with the teachings of Rasmussen,viz.,
`such that Rasmussen’s solid polymeric substrate has a plurality of functional groups
`directly and covalently bonded to said substrate, in order to yield the predictable
`result of facilitating graft polymerization of monomers. KSR, 550 U.S. at 415-16. In
`addition, it is further submitted that it would have also been obvious to one skilled
`in the art at the time Applicant’s invention waseffectively filed to select a
`thiocarbonylthio group as the functional group of the instant combination, in order
`to: (A) yield the predictable results of slowing polymerization and higher residual
`monomerat the end of polymerization; and (B) provide a suitable RAFT agent for
`forming polymeric chains on the surface of the substrate. Id. see also Leshin, 277
`F.2d at 200; Sinclair, 325 U.S. at 835; Ryco, 857 F.2d at 1425.
`
`

`

`Application/Control Number: 15/733,205
`Art Unit: 17738
`
`Page 10
`
`(B)\(2) Thiocarbonylthio-terminated polymer chains; Thiocarbonylthio-containing
`group directly attached to a carbon atom of the grafted polymeric chain
`
`As conveyed above, Nunez teaches including a thiocarbonylthio-containing group on
`the end of a polymer during polymerization provides: slowing polymerization and
`higher residual monomerat the end of polymerization. (Nunez 67.) Nunez further
`teaches that polymers having a thiocarbonylthio-containing group on the end of a
`polymer were suitable as RAFT agents. (/d. 12.) These polymers can have
`thiocarbonylthio-containing groups directly attached to a carbon atom of a polymeric
`chain. (/d.) In view of these findings, it is respectfully submitted that, at the time
`Applicant’s invention waseffectively filed, it would have been obvious to one skilled
`in the art to arrive at the presently claimed grafted polymeric chains,viz., by
`modifying the monomerof the instant combination such that it is terminated by a
`thiocarbonylthio-containing group, the thiocarbonylthio-containing group being
`directly attached to a carbon of the monomer, in orderto: (A) yield the predictable
`results of slowing polymerization and higher residual monomerat the end of
`polymerization; and (B) provide a suitable RAFT agent for forming a polymer. ASR,
`550 U.S. at 415-16; Leshin, 277 F.2d at 200; Sinclair, 325 U.S. at 335; Ryco, 857
`F.2d at 1425.
`
`4.4.2. With respect to claim 8, the instant combination does not appear to specify
`the thiocarbonylthio-containing group of the instant claim. Nunez suggests that
`thiocarbonylthio-containing groups having the general structure shown on page 6
`can be used in its invention. Nunez’s structure includes the formula —S—C(=S)-R}.
`Ud.) In this same vein, as conveyed above, Nunez suggests that including a
`thiocarbonylthio-containing group on the endof a polymer during polymerization
`provides: slowing polymerization and higher residual monomerat the end of
`polymerization. (/d. at 67.) It is respectfully submitted that at the time Applicant’s
`invention was made, Nunez’s disclosure would have reasonably suggested to those
`skilled in the art that it thiocarbonylthio-containing groups were suitable for slowing
`polymerization and providing higher residual monomerat the end of polymerization.
`Assuch,it is further submitted that, at the time Applicant’s invention was
`effectively filed, it would have been obvious to one skilled in the art to use Nunez’s
`thiocarbonylthio-containing group in the invention of the instant combination, in
`order to: (A) yield the predictable results of slowing polymerization and higher
`residual monomerat the end of polymerization; and (B) provide a suitable RAFT
`agent for forming a polymer. ASR, 550 U.S. at 415-16; Leshin, 277 F.2d at 200;
`Sinclair, 325 U.S. at 835; Ryco, 857 F.2d at 1425.
`
`

`

`Application/Control Number: 15/733,205
`Art Unit: 17738
`
`Page 11
`
`4.4.8 With respect to claim 9, the instant claim is directed to a first monomer
`represented by the claimed “Formula (1V)” (hereinafter “formula ([V)’). With this in
`mind, Examinerfinds that Rasmussen discloses monomers having the following
`formula (hereinafter “formula (I)”):
`
`f ne
`
`-_—
`
`ora,
`
`bea, oe
`
`i iL
`
`io
`
`a, “ei
`
`5at
`
`bey
`
`7
`
`bapvo
`
`fo
`
`a
`
`- kore
`
`(Rasmussen § 65.) As shown in Rasmussen’s formula (I) supra, the monomer
`includes several variables: R', X, R?, Z, n, and L. Regarding these variables,
`Rasmussen suggests that:
`
`(1) R'can be a hydrogen,alkyl, cycloalkyl, aryl, and combinations thereof
`(Rasmussen 4 66);
`
`(2)
`
`R?%can a heterohydrocarbylene(id. {| 67);
`
`(3) Xcan be O or NR,
`
`(4)
`
`R®is a hydrogen or hydrocarbyl (id. 4 68);
`
`(5) Zcan be heterohydrocarbylene comprising at least one hydrogen bond donor, at
`least one hydrogen bond acceptor, or a combination thereof(id. § 69);
`
`(6)
`
`nis an integer of 0 or 1 (id. { 70); and
`
`(7) Lisa heteroatom-containing group comprising at least one monovalentligand
`functional group selected from acidic groups, basic groups other than
`guanidino, and salts thereof (id. § 71).
`
`When comparing the above variables with the variable presented in the claimed
`formula (IV), Examinerfinds that Rasmussen’s variables read on the claimed
`variables. That is, Rasmussen’s R!, R?, X, R°, Z, n, and L read—respectively—on the
`claimed R?!, R22, X1, R28, Z, n, and L. Additionally, the general structure for
`Rasmussen’s formula (1) and the claimed formula (IV) appear to be the same. For
`instance, both formulas begin with a CHz double-bonded to a CR followed by a
`carbonyl moiety, end with an L,etc. In view of these findings, Rasmussen’s
`formula (I) reads on the claimed formula ([V)—viz., because both formulas have the
`same structural features.
`
`4.4.4 With respect to claim 14, Rasmussen suggests that its solid polymeric
`substrate can be porous. (Rasmussen, Abstract (reciting “porous substrate”).)
`
`

`

`Application/Control Number: 15/733,205
`Art Unit: 17738
`
`Page 12
`
`4.4.5 With respect to claim 15, Rasmussen suggests that its solid polymeric
`substrate can be a membrane. (Rasmussen 4 10, 93.) Rasmussen also suggests that
`its solid polymeric substrate can be a nonwoven substrate. (/d. 4] 104-105.)
`
`4.4.6 With respect to claim 16, this claim is directed to process limitations.
`Previously it has been held that “even though product-by-process claims are limited
`by and defined by the process, determination of patentability is based on the product
`itself. The patentability of a product does not depend on its method of production.If
`the product in the product-by-process claim is the same as or obvious from a product
`of the prior art, the claim is unpatentable even though the prior product was made
`by a different process.” In re Thorpe, 777 F.2d 695, 698 (Fed. Cir. 1985) (citations
`omitted); see also MPEP § 2113. Thus,in accordance with Thorpe and MPEP§ 2118,
`it is respectfully submitted that the instant claim cannot be given patentable weight:
`since determination of patentability is based on the product itself—as opposed to its
`method of production.
`
`5.
`
`Response to Remarks’
`
`In view of the amendments, the previous rejections under 35 U.S.C. § 112 have been
`withdrawn and the remarks thereto are moot. Applicant’s remarksdirected to the
`rejections under 35 U.S.C. § 108 (Remarks 7-10) are respectfully acknowledged but
`are not persuasive.
`
`First, Applicant argues that Janssen does not mention the use of thiocarbonylthio-
`containing groups. (Remarks 8-9.) Respectfully, such arguments are unpersuasive
`as the test for obviousnessis not whether the features of a secondary reference may
`be bodily incorporated into the structure of the primary reference; noris it that the
`claimed invention must be expressly suggested in any oneorall of the references.
`Rather, the test is what the combined teachings of the references would have
`suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208
`USPQ 871 (CCPA 1981). Second, Examinerfinds Applicant’s rationale andits
`instant arguments (Remarks 8—9) unpersuasive because they do not address, or
`squarely meet, Examiner’s rationale for combining Rasmussen and Janssen.
`
`Second, Applicant appears to argue against the references using features from the
`Specification. (Remarks 9). Previously it has been held that “limitations are not to be
`
`7 Remarks filed November3, 2022.
`
`

`

`Application/Control Number: 15/733,205
`Art Unit: 17738
`
`Page 138
`
`read into the claims from the specification”. In re Van Geuns, 988 F.2d 1181, 1184,
`(Fed. Cir. 1998) Citing Jn re Zletz, 893 F.2d 319, 321, (Fed.Cir.1989)); see In re
`Prater, 415 F.2d 1398, 1404-05 (CCPA 1969) (“We are not persuaded by any sound
`reason why, at any time before the patent is granted, an applicant should have
`limitations of the specifications read into a claim where no express statement of the
`limitation is included in the claim.”)
`
`For at least these reasons, the rejections under 35 U.S.C. § 108 are maintained.
`
`6.
`
`Conclusion
`
`Applicant’s amendmentnecessitated the new ground(s) of rejection presented in this
`Office Action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP
`§ 706.07(a). 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
`MONTHSfrom the mailing date of this action. In the event a first reply is filed
`within TWO MONTHSof the mailing date of this final action and the advisory
`action is not mailed until after the end of the THREE-MONTHshortened statutory
`period, then the shortened statutory period will expire on the date the advisory
`action is mailed, and any extension fee pursuant to 37 CFR 1.186 (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 MONTHSfrom the date of this
`final action.
`
`Any inquiry concerning this communication or earlier communications from the
`examiner should be directed to BRAD GORDON w