DETAILED ACTION
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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 04 September 2026 has been entered.
Claim Rejections - 35 USC § 103
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.
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:
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the 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.
Claim(s) 1, 3-4, and 8-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hui et al. (“Fabricating covalently attached hyperbranched polymers by combining photochemistry with supramolecular polymerization” Polym. Chem., 2014, 5, 1471-1476).
Regarding claims 1, 3-4, and 8-11; Hui et al. teaches a three-armed photosensitive monomer TAZB having the structure below.
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Hui et al. does not explicitly teach a plurality of organic ions and counterions. However, it is prima facie obvious to combine two compositions (in this case compounds) each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose; the idea of combining them flows logically from their having been individually taught in the prior art. See In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980), see MPEP §2144.06.
The Examiner makes note that “wherein the organic ion has self-complementary interactions with a first neighboring organic ion and a second neighboring organic anion that allows for the first polymerizable arm within the ordered arrangement to be positioned to react with a polymerizable arm of the first neighboring organic ion and for the second polymerizable arm with the ordered arrangement to be positioned to react with a polymerizable arm of the second neighboring organic ion” is merely future intended use (i.e. “to be positioned” is a step reciting future intended use). A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim; see MPEP §2111.02, 7.37.09. Furthermore, it is the Examiner’s position that the polymerizable arms of Hui et al. would necessarily possess the capability of interacting with said neighboring ions.
Claim(s) 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lange et al. (“A Two-Dimensional Polymer Synthesized through Topochemical [2+2]-Cycloaddition on the Multigram Scale” J. Am. Chem. Soc. 2017, 139, 2053-2059), as cited on the IDS.
Regarding claim 23; Lange et al. teaches a compound having the following structure, that is an organic ion having a molecular hub, polymerizable arms, and a counter ion (BF4-) [Figure 1].
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Lange et al. does not explicitly teach a plurality of organic ions and counterions. However, it is prima facie obvious to combine two compositions (in this case compounds) each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose; the idea of combining them flows logically from their having been individually taught in the prior art. See In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980), see MPEP §2144.06.
The Examiner makes note that “wherein the organic ion has self-complementary interactions with a first neighboring organic ion and a second neighboring organic anion that allows for the first polymerizable arm within the ordered arrangement to be positioned to react with a polymerizable arm of the first neighboring organic ion and for the second polymerizable arm with the ordered arrangement to be positioned to react with a polymerizable arm of the second neighboring organic ion” is merely future intended use (i.e. “to be positioned” is a step reciting future intended use). A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim; see MPEP §2111.02, 7.37.09. Furthermore, it is the Examiner’s position that the polymerizable arms of Lange et al. would necessarily possess the capability of interacting with said neighboring ions.
Allowable Subject Matter
Claims 5 and 7 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Hui et al. fails to teach the required structural compound of the organic ion, as set forth in claims 5 nor 7. At the time of filing, a person of ordinary skill in the art, would have no motivation to modify the structures of the prior art, to achieve the required structure of claims 5 nor 7.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSICA ROSWELL whose telephone number is (571)270-5453. The examiner can normally be reached M-F 8:00 am to 5:00 pm.
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.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JESSICA M ROSWELL/ Primary Examiner, Art Unit 1767
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