Claims 1-5, 7-10, 12-14, and 16-21 are currently pending with claims 6, 11, and 15 being cancelled. Claims 16-18 and 20 have been withdrawn from consideration as being directed to a non-elected invention. Claims 1-5, 7-10, 12-14, 19 and 21 are rejected.
The rejection over LeStarge in view of Devry and Kohlstrung has been withdrawn in view of the present amendment and response. Kohlstrung discloses the thermally expandable composition experiencing an expansion from 462 vol% to 772 vol% at a temperature in the range of 160 to 200oC (paragraph 161). Kohlstrung fails to teach the thermally expandable composition exhibiting a uniform expansion over that temperature range.
The rejection over Kohlstrung in view of Devry and Monnet has been overcome for the same reasons discussed above.
The 112, second paragraph, rejection has been withdrawn in view of present amendment and response.
The 112, first paragraph, rejection has been maintained.
Election/Restrictions
Currently amended claim 20 is directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
This application contains claims directed to the following patentably distinct species:
A binder system comprising:
(i) at least one (meth)acrylate-based polymer wherein the at least one (meth)acrylate-based polymer consisting only of (meth)acrylate ester units; or
(ii) at least one triglyceride fraction having a fatty acid distribution of at least 5 wt% of one or more Ω-3 fatty acids and/or one or more Ω-6 fatty acids; and at least one vulcanizing agent.
The species are independent or distinct because each identified species has mutually exclusive characteristics. In addition, these species are not obvious variants of each other based on the current record.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim 20 is withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
Response to Arguments
Applicant alleges that the office fails to show it would be serious burden to perform a complete search and examination of the species of claim 20 in addition to claims 1-14, 19 and 21.
The examiner respectfully disagrees.
There is a serious search and/or examination burden for the patentably distinct species as set forth above because at least the following reasons apply:
(a) the species require a different field of search (for example, searching different classes/subclasses or electronic resources, or employing different search queries);
(b) the prior art applicable to one species would not likely be applicable to another species, i.e., none of the applied references used in the non-final rejection mailed on 01/16/2026 specific about species (ii).
Accordingly, claim 20 has been withdrawn from the consideration as being directed to a non-elected invention.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, 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, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, 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, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-5, 7-10, 12-14, 19 and 21 are rejected 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. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
As indicated in paragraph 171 of the specification of the claimed invention, the thermally expansion preparation experiences a uniform expansion rate of 80% over a temperature range of 125 to 205oC. However, the presently claimed uniform expansion greater than 40 vol% could refer to a consistent expansion of 100 vol%, 300 vol% or 1000 vol% over that temperature range. However, none of these values are fully supported by the specification of the claimed invention. Accordingly, the limitation of the uniform expansion greater than 40 vol% over that temperature range introduces new matter.
Conclusion
THIS ACTION IS MADE FINAL. 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 Hai Vo whose telephone number is (571)272-1485. The examiner can normally be reached M-F: 9:00 am - 6:00 pm with every other Friday off.
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/Hai Vo/
Primary Examiner
Art Unit 1788
Prosecution Insights