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 .
Response to Arguments
1. Applicant’s arguments, see page 8, line 7, filed 03 November 2025, with respect to the rejection of Claim 1 under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement; have been fully considered and, in light of the amendments made, are persuasive. The rejection of Claim 1 under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph has been withdrawn.
2. Applicant’s arguments, see page 8, line 12, filed 03 November 2025, with respect to the rejection of Claims 1-4 and 15-17 under 35 U.S.C. 102(a)(1) as being anticipated by Kunitsky et al. (United States Patent Publication No. US 2008/0167433 A1), hereinafter Kunitsky; and Claims 1-4 and 15-17 under 35 U.S.C. 103 as being unpatentable over Kunitsky et al. (United States Patent Publication No. US 2008/0167433 A1), hereinafter Kunitsky; have been fully considered but they are not persuasive. Applicant argues that "nothing in Kunitsky teaches or suggests selecting the specific groups of the presently claimed invention for each of Rb and Rd and each of Rb0 and Rd0." Then in the next sentence Applicant states "In Example 5 of Kunitsky, one of Rb and Rb or one of Rb0 and Rd0 is methoxyl." Unsaid is that in Example 5 of Kunitsky, all other of Rb, Rd, Rb0, and Rd0 which is not methoxyl is a hydrogen. Thus, not only does Kunitsky teaches or suggest selecting the specific groups of the presently claimed invention for each of Rb and Rd and each of Rb0 and Rd0, but teaches a specific example wherein each of Rb and Rd and each of Rb0 and Rd0 are clearly defined and within the scope of the claims of the present application. Applicant further argues that the intended use of the polymer of Kunitsky differs from the intended use of the polymer of the present application. This is irrelevant as what is claimed by the present application is a polymer, not a process using said polymer, particularly since the intended use of said polymer is not claimed by the present application. Given that all limitations of the claims of the present application are taught by the prior art, the Applicant’s arguments are not persuasive.
Claim Rejections - 35 USC § 102
3. 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.
4. 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.
5. Claims 1-4 and 15-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kunitsky et al. (United States Patent Publication No. US 2008/0167433 A1), hereinafter Kunitsky.
6. Regarding Claims 1-4 and 15-17, Kunitsky teaches (Paragraphs [0121-0122 and 0128]) a polymer of formula (I). Kunitsky teaches (Paragraphs [0121-0122 and 0128]) each of Ra-Rd, each of Ra0-Rd0, each of Ra1-Rd1, and each of Ra2-Rd2 are hydrogen (H) and C1 alkoxy. Kunitsky teaches (Paragraphs [0121-0122 and 0128]) wherein n and n0 of Formula (I) of the present application are each independently a number from 0 to 20 and n + n0 of Formula (I) of the present application is a number from 24 to 36. Kunitsky teaches (Paragraphs [0121-0122 and 0128]) wherein n1 and n2 of Formula (I) of the present application are each independently a number from 0 to 2 and/or n1 + n2 of Formula (I) of the present application is a number from 0 to 3.
Rejections - 35 USC § 103
7. 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:
8. 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.
9. Claims 1-4 and 15-17 are rejected under 35 U.S.C. 103 as being unpatentable over Kunitsky et al. (United States Patent Publication No. US 2008/0167433 A1), hereinafter Kunitsky.
10. Although the claims are deemed to be anticipated by Kunitsky for the reasons above, the following is offered in the interest of compact prosecution in the event the Applicant can demonstrate that Kunitsky is not anticipatory.
11. Regarding Claims 1-4 and 15-17, Kunitsky teaches (Claim 1) a polymer of formula (I). Kunitsky teaches (Claim 1) each of Ra-Rd, each of Ra0-Rd0, each of Ra1-Rd1, and each of Ra2-Rd2 are hydrogen (H) and C1 alkoxy. Kunitsky teaches (Claim 1) wherein n and n0 of Formula (I) of the present application are each independently a number from 0 to 20 and n + n0 of Formula (I) of the present application is a number from 24 to 36. Kunitsky teaches (Claim 1) wherein n1 and n2 of Formula (I) of the present application are each independently a number from 0 to 2 and/or n1 + n2 of Formula (I) of the present application is a number from 0 to 3.
12. If Applicant is able to demonstrate that all limitations of the present claims are not present in a single experimental example of the prior art, all limitations are taught by the prior art and a person having ordinary skill in the art would simply combine prior art elements according to known methods to yield predictable results.
Conclusion
13. 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).
14. 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 extension fee 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 date of this final action.
15. Any inquiry concerning this communication should be directed to RICHARD D CHAMPION at telephone number (571) 272-0750. The examiner can normally be reached on 8 a.m. - 5 p.m. Mon-Fri EST.
16. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, MARK F HUFF can be reached at (571) 272-1385. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
17. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://portal.uspto.gov/external/portal. Should you have questions about access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
18. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
/R.D.C./Examiner, Art Unit 1737
/MARK F. HUFF/Supervisory Patent Examiner, Art Unit 1737
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