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 .
Election/Restrictions
Applicant’s election without traverse of Group II, claims 21-22 and 24-37 in the reply filed on 6/25/2025 is acknowledged. Claims 1-2, 38-39 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 6/25/2025.
Claim Objections
Claim 22 objected to because of the following informalities: “is a copolymer” should be “is a random copolymer” because a random copolymer is a species of a copolymer. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation 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 35 U.S.C. 112 (pre-AIA ), first paragraph:
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.
Claim 30 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification does not reasonably provide enablement for m bing an integer as instantly claimed. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with these claims. The breadth of the claim, "m is an integer", necessarily includes infinite species. One of ordinary skill in the art would not reasonably be able to select suitable m value to make the invention with a reasonable expectation of success. Furthermore, the predictability of the invention by selecting suitable value from an infinitely large number would be unknown to one of ordinary skill. No teachings, additional direction, and/or comprehensive examples are provided by the inventor to enable one of ordinary skill in the art without undue experimentation to select a number to make the invention. Claim 31 is also rejected for depending from claim 30.
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.
Claim 31 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.
Claim 31 recites “comprises, consists essentially of, or consists of”. 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). 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 Rejections - 35 USC § 102
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.
Claim(s) 21, 32 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Rahobinirina et al (Valorization of Madagascar’s CNSL via the synthesis of one advanced intermediate (3-Pentadecylcyclohexanone), Tetrahedron Letters 58 (2017) 2284-2289).
Rahobinirina teaches monomer pentadecyl caprolactone for the synthesis of polyester (p 2287, section Alkylated caprolactone). The polymer inherently can degrade.
Claim Rejections - 35 USC § 103
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 22, 24-27, 29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rahobinirina et al (Valorization of Madagascar’s CNSL via the synthesis of one advanced intermediate (3-Pentadecylcyclohexanone), Tetrahedron Letters 58 (2017) 2284-2289).
Rahobinirina teaches monomer pentadecyl caprolactone for polyester.
Rahobinirina does not teach a copolymer like claimed.
However, different polymer architectures, such as homopolymer, random copolymer, block copolymer, graft copolymer etc, are well known in polymer filed and the concept can be found from a polymer textbook. For block copolymers, there are diblock AB, triblock ABA ABC, multiblock AB(AB)n, CBABC etc. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to utilize pentadecyl caprolactone to prepare homopolymer, random or block copolymer.
Claims 33-34, 36 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rahobinirina et al (Valorization of Madagascar’s CNSL via the synthesis of one advanced intermediate (3-Pentadecylcyclohexanone), Tetrahedron Letters 58 (2017) 2284-2289) in view of Lee et al (Preparation and Characterization of a Renewable Pressure-Sensitive Adhesive System Derived from ε‑Decalactone, L‑Lactide, Epoxidized Soybean Oil, and Rosin Ester, ACS Sustainable Chem. Eng. 2015, 3, 2309-2320).
Rahobinirina teaches the limitation of claim 24, as discussed above.
Rahobinirina dose not teach the block polymer features like claimed.
However, Lee discloses a block copolymer of PLLA-PDL-PLLA (p 2311), DL is decalactone
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, which is different from pentadecyl caprolactone only on the length of the substituted alkyl group. Lee teaches the block copolymer having higher Tg segment for a hard phase and a lower Tg segment for a soft rubbery phase, and the immiscible property between glassy and rubbery blocks provides copolymers physically crosslinking (p 2309-2310). Given the utility of Lee’s block copolymer, it would have been obvious to one of ordinary skill in the art at the time the invention was made to similarly prepare a pentadecyl caprolactone ABA block copolymer having the same features as Lee’s block copolymer .
Allowable Subject Matter
Claims 28, 30-31, 35, 37 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.
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/WENWEN CAI/
Primary Examiner, Art Unit 1763