DETAILED ACTION
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 Amendment
The amendment of claims 19, 25, 30-31 are supported by the specification.
Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The new grounds of rejection set forth below are necessitated by applicant's amendment filed on 11/10/2025. Thus, the following action is properly made final.
Claim Objections
Claim 19 objected to because of the following informalities: “consists of repeat units (RU1) and (RU2)” is redundant with “comprises no other repeat units than repeat units (RU1) and (RU2)”. Appropriate correction is required.
Claim 21 objected to because of the following informalities: it should depend on claim 19. Appropriate correction is required.
Claim Rejections - 35 USC § 112
Claim 19 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 pre-AIA the applicant regards as the invention.
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, claim 19 recites the broad recitation “80.1-89 mol% of S1 and 11-19.9 mol% of S2”, and the claim also recites “the number of moles of S1/S2 is 4.05-7.33” which is the narrower statement 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.
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, claim 19 recites the broad recitation “an amorphous polymer comprising S1, S2 and S3”, and the claim also recites “the amorphous polymer consisting of RU1 and RU2” which is the narrower statement 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.
Claim 19 recites “an amorphous polymer” and “does not show a melting point”. However, amorphous or semicrystalline is a feature depending on the sample preparing conditions. Without citing sample preparing conditions, the term “an amorphous polymer” is meaningless from scientific point of view.
Claim Rejections - 35 USC § 102
Claim(s) 19, 21, 25, 28, 30-31, 33 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bhatnagar et al (US 2010/0310804).
Claims 19, 21, 25, 28, 33: Bhatnagar teaches a 85/15 polyphenyl sulfone ketone (table 1). It is 85:15 by mole of segment S1: segment S2. The polymer is translucent [0137].
It is noted that the term “obtainable” limits the structure characteristic of the polymer, it does not limit how the polymer is obtained.
The instant specification defines the term “amorphous” as having a melting enthalpy ΔH.sub.m in the range of 0 to 5 W/g. And the melting enthalpy ΔH.sub.m (if any) and the crystallization enthalpy ΔH.sub.m (if any) are determined via DSC (differential scanning calorimetry) starting at 20° C. heating the a sample of the amorphous polymer (P) with a rate of 20 K/min up to a temperature of 360° C., followed by cooling with a rate of >100 K/min down to 20° C., followed by a second heating with a rate of 20 K/min up to 360° C. followed by a second cooling with a rate of >100 K/min down to 20° C., wherein the melt enthalpy ΔH.sub.m and the crystallization enthalpy ΔH.sub.m are determined during the second heating and the second cooling. While Bhatnagar’s polymer shows a melting temperature, Bhatnagar does not discloses how the Tm is measured.
In a DSC measurement, a slower cooling rate allows more time for polymer chains to re-organize into a crystalline structure, resulting in a higher degree of crystallinity. Conversely, a faster cooling rate gives the chains less time to organize, which leads to a lower degree of crystallinity and a larger amorphous (non-crystalline) phase. Therefore, the value of melting enthalpy is an extrinsic property which depends on the cooling rate, i.e. sample preparing conditions.
Because Bhatnagar teaches the claimed polymer, it is therefore inherent that the polymer has does not show a melting point when measured under the same conditions as disclosed in the instant specification since such a property is evidently dependent upon the nature of the polymer used, see MPEP 2112.01. Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
Claims 30-31: It is noted that claims 30-31 are product-by-process claims. Case law holds 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.” See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Claim Rejections - 35 USC § 103
Claims 23-24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bhatnagar et al (US 2010/0310804).
Claim 23: Bhatnagar discloses a similar process of making. Therefore, the claimed polydispersity would be expected by a polymer obtained from a substantially similar process of making. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients, claimed amounts, and substantially similar process of making.
Claim 24: Bhatnagar teaches the polymer has a number average molecular weight of 10,000-40,000 [0064]. A polydispersity is Mw/Mn, therefore the claimed Mw would be expected considering the claimed polydispersity is expected.
Response to Arguments
Applicant's arguments filed 11/10/2025 have been fully considered but they are not persuasive.
In response to applicant's argument, it is noted that according to Merriam-Webster, the definition of “translucent” is “clear, transparent”. For the rest of the arguments for 102 rejection, applicant is suggested to schedule an interview with the examiner or consult with someone who understands both US patent law and polymer science.
In response to applicant's argument regarding unexpected results, it is noted that 1) secondary consideration does not apply to 102 rejection; 2) unexpected results should be compared to the closest prior art; 3) the experimental data should be commensurate in scope with the scope of claims. Additionally, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Conclusion
Applicant's amendment necessitated 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 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.
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/WENWEN CAI/
Primary Examiner, Art Unit 1763