DETAILED ACTION
Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn.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.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 Jun. 26, 2026 has been entered.
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 .
Claim Rejections – 35 U.S.C. § 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.
Claims 1, 3, 6-8, 18, and 21-22 are rejected under 35 U.S.C. § 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Independent claim 1 recites a monomer A and a monomer B, and the claim subsequently recites three ranges of amounts regarding these monomers. The claim recites that “monomer A is contained in at least 30 mol%”; that “monomer B is contained in 20 to 60 mol%”; and that “the molar ratio of the monomers A to monomers B is from 30 to 60:40 to 70”.
These ranges render the claims indefinite for two reasons. The first reason is that the meaning of the recited ratio is unclear; and the second reason is that the latter-recited ratio is inconsistent with the previously recited ranges.
The recited ratio (“the molar ratio of the monomers A to monomers B is from 30 to 60:40 to 70”) does not set forth with reasonable clarity which of the numbers in this ratio are references to monomer A and which are references to monomer B. Put differently, the claim does not set forth with reasonable clarity whether the recited ratio is in the form of Alow to Ahigh : Blow to Bhigh or else of the form of Alow to Blow : Ahigh to Bhigh.
However, neither interpretation of this ratio would be consistent with the previously recited limitations regarding the range of amounts of monomer A (at least 30 mol%) and regarding the range of amounts of monomer B (20 to 60 mol%).
In both interpretations of the ratio, the amount of monomer B encompasses 70 mol%. In contrast, the immediately preceding limitation recites that monomer B is contained in 20 to 60 mol%, which does not encompass 70 mol%. Additionally, the different interpretations of the ratio include the minimum amount of monomer B being either 40 or 60 mol%. In contrast, the immediately preceding limitation recites that monomer B is contained in 20 to 60 mol%, and this range encompasses smaller amounts of B (e.g. 20 mol%) than does the ratio.
Similarly, the limitation “monomer B is contained in 20 to 60 mol%” would, on its own, entail that the minimum amount of monomer B be 40 mol%. However, the ratio recites amounts of monomer A that encompass 30 mol%, and this amount is smaller than the amount permitted by, and thus inconsistent with, the preceding range of amounts of monomer B (20 to 60 mol%).
The claim does not set forth with reasonable clarity which of these amounts of the monomers is controlling and what is the meaning of the other recited ranges of amounts.
Claims 3, 6-8, 18, and 21-22 are dependent upon independent claim 1, and they are indefinite for the same reasons.
Claim Rejections – 35 U.S.C. § 112(d)
The following is a quotation of 35 U.S.C. § 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 18 and 22 are rejected under 35 U.S.C. § 112(d) as being of improper dependent form for failing to further limit the subject matter of a previous claim.
Claim 18 depends upon claim 3 which in turn depends on independent claim 1. Claim 1 recites three limitations regarding amounts of monomers A and B. In particular, claim 1 recites that “monomer A is contained in at least 30 mol%”; that “monomer B is contained in 20 to 60 mol%”; and that “the molar ratio of the monomers A to monomers B is from 30 to 60:40 to 70”.
Claim 18 recites that “the molar ratio of the monomers A to monomers B is from 30 to 60:40 to 70”. This limitation is the same as one of the noted limitations that is present in claim 1.
Because claim 18 already incorporates this limitation via its dependency on independent claim 1, the further recitation of the limitation in claim 18 does not specify a further limitation of the subject matter claimed in its base claims. Claim 18 thereby fails to comply with the first sentence of 35 U.S.C. § 112(d).
Claim 22 depends upon independent claim 1. Claim 1 recites limitations regarding amounts of monomer A. In particular, claim 1 recites that “the molar ratio of the monomers A to monomers B is from 30 to 60:40 to 70”.
Claim 22 recites that “monomer A is contained in 40 to 80 mol%”. This range of amounts of monomer A encompasses 80 mol%. In contrast, the noted limitation of claim 1 may be interpreted alternatively to mean that A encompasses a maximum of either 40 or 60 mol%, neither of which encompasses the presently recited amount of 80 mol%.
Because claim 22 recites an amount of monomer A (80 mol%) that does not fall within the scope of the amounts permitted by base claim 1, the recited amount of 80 mol% of monomer A does not specify a further limitation of the subject matter claimed in base claim 1. Claim 22 thereby fails to comply with the first sentence of 35 U.S.C. § 112(d).
Claim Rejections – 35 U.S.C. § 102
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 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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 6, 8, and 21-22 are rejected under 35 U.S.C. §§ 102(a)(1) and 102(a)(2) as being anticipated by US Patent Application Publication No. 2009/0060859 A1 (herein “Garcia Castro”).
As to claims 1, 6, 8, and 21-22: Garcia Castro describes a process (see Polymer 3 in the table on p. 17) comprising polymerizing 6.7 mL of N-vinylpyrrolidone (VP) and 7 g of 2-(1-imidazolyl)ethyl methacrylate (ImEMA), corresponding to a molar ratio of about 62:38. The polymerization occurs in the presence of the thermal radical initiator 2,2'-azobis(2-amidinopropane)dihydrochloride (V50) with heating (see the table). These amounts fall within the scope of the recited range of amounts of monomer B (20 to 60 mol%) and the implied amount (40 to 80 mol%) of monomer A.
Claims 1, 6, 8, and 22 are rejected under 35 U.S.C. §§ 102(a)(1) and 102(a)(2) as being anticipated by Polymer International (1998), 47(3), 340-344 (herein “Martinez-Pina”).
As to claims 1, 6, 8, and 22: Martinez-Pina describes a process (see Copolymer 1 in Table 1 and the process at the top right of p. 341) comprising polymerizing N-vinylpyrrolidone (VP) and N-vinylimidazole (VI) in a molar ratio of 51.2:48.8 (see Table 1). The polymerization occurs in the presence of the thermal radical initiator AIBN with heating (see the process at the top right of p. 341).
Claim Objections
Claim 24 is objected to because of the following informalities.
Claim 24 recites that “monomer A is contained in at least 30 mol%”; that “monomer B is contained in 20 to 60 mol%”; and that no further monomers are used except for monomers A and B.
The limitation regarding the amount of monomer B implies that the amount of monomer A is 40 to 80 mol%, and all of these values are above the previously recited range of “at least 30 mol%”. For this reason, the range “at least 30 mol%” appears to be superfluous to the claim.
Appropriate correction is required.
Response to Arguments
Applicant’s arguments filed Jun. 26, 2026 (herein “Remarks”) have been fully considered and they are persuasive in part.
The rejection over Garcia Castro that was set forth in the preceding Office action mailed on Mar. 26, 2026 has been maintained above in paragraphs 25-26 along with an explanation of the correspondence of the reference’s disclosure to the amended claim and the limitations pertaining to the amounts of the monomers.
The rejection over Wagner that was set forth in the preceding Office action mailed on Mar. 26, 2026 has been withdrawn in light of the amendment of claim 1 to remove the monomer methyl methacrylate.
A ground of rejection over a newly discovered reference to Martinez-Pina has been set forth above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RICHARD A. HUHN whose telephone number is (571)270-7345. The examiner can normally be reached Monday through Friday, 9 AM to 6 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie (Lanee) Reuther can be reached at (571) 270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RICHARD A. HUHN/Primary Examiner, Art Unit 1764
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