DETAILED ACTION
Applicant’s reply and request for continued examination (RCE), filed 2 December 2025 in response to the Final Office action mailed 2 June 2025, has been entered and fully considered. As per Applicant’s filed claim amendments claims 1-5, 7 and 13-16 are pending under examination, wherein: claims 1 and 14-15 have been amended, claims 2-7 and 13 are as previously presented, claim 6 has been cancelled, claim 16 is new, and claims 8-12 are withdrawn by previous restriction requirement.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 2 December 2025 has been entered.
Claim Rejections - 35 USC § 112(b)
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.
Claims 1-2, 4-5, 7 and 13-16 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.
Regarding claim 1, the as-amended claim recitation of “R is a residue of an ɑ-hydroxycarboxylic acid” renders the claim indefinite as: a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, the claim recites the broad recitation of ‘R is a residue of an ɑ-hydroxycarboxylic acid’, and the claim also recites a plurality of specific R groups which are the narrower statements of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Amending the claim to recite ‘wherein R is a residue of an ɑ-hydroxycarboxylic acid selected from R=…’ should overcome this rejection. This includes claims 2, 4-5, 7 and 16 as they depend from claim 1.
Regarding claim 14, the as-amended claim recitation of “R is a residue of an ɑ-hydroxycarboxylic acid” renders the claim indefinite as: a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, the claim recites the broad recitation of ‘R is a residue of an ɑ-hydroxycarboxylic acid’, and the claim also recites a plurality of specific R groups which are the narrower statements of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Amending the claim to recite ‘wherein R is a residue of an ɑ-hydroxycarboxylic acid selected from R=…’ should overcome this rejection. This includes claim 15 as it depend from claim 1.
Allowable Subject Matter
Claim 3 is allowed over the prior arts of record.
Response to Arguments/Amendments
The objections to claims 1 and 14-15 are withdrawn as a result of Applicant’s filed claim amendments.
The 35 U.S.C. 112(b) rejections of claims 1-2, 4-7 and 13-15 as set forth previously is withdrawn as a result of Applicant’s filed claim amendments. Note the new grounds of rejection as set forth above as necessitated by said claim amendments.
The 35 U.S.C. 102(a)(1) rejection of claims 1-2, 4-7 and 13-15 as anticipated by Borve (WO 03/080747 A1) and the 35 U.S.C. 103 rejection of claims 14-15 as unpatentable over Passade Boupat (US PGPub 2006/0030685) are withdrawn as a result of Applicant’s filed claim amendments.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JANE L STANLEY whose telephone number is (571)270-3870. The examiner can normally be reached M-F 7:30 AM to 3:30 PM.
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/JANE L STANLEY/Primary Examiner, Art Unit 1767