DETAILED ACTION
Notice of Pre-AIA or AIA Status
As previously set forth: 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
As previously set forth: Applicant’s election of Group II, monomer E-M1, and the more general structure of M, in the reply filed on 6/20/25 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 12-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group, there being no allowable generic or linking claim.
Applicant's election with traverse of homopolymers of E-M1 in the reply filed on 6/20/25 is acknowledged. See the response to traversal in the office action dated 8/20/25
Claim 11 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 6/20/25.
It is noted, that upon indication of allowance of a species, the search will be broadened to other species (such as the block copolymers)
Priority
As previously set forth: The claims are broader in scope than the provisional applications filed 11/30/21 and 4/26/22, thus the claims have an effective date of the filing of the instant application: 9/30/22
Herein “4.9 kcal/mol or lower” is broader because of the “or lower” limitation. This entire range is not supported by the provisional applications.
Response to Affidavit dated 12/22/25
First: the claimed range of “4.9 kcal/mol or lower” is only supported by the originally filed written description. Applicant can provide the ring strains of the exemplified monomers of the provisional applications, and, make a range with endpoints from there. However, each and every value below 4.9 (e.g. the “or lower” limitation) is not supported by the provisionals. Thus, the claims still have an effective date of 9/30/22. The Sathe reference below having a publication date of Aug 2021 is more than a year prior to the current priority date of the claims and still qualifies as prior art.
Second: it is unclear Chen’s role (the 4th inventor) in the invention vs. prior art. It is unclear if Chen was mistakenly left out of the ‘joint inventors’ of item 4 of the declaration and/or why Chen was included as an inventor whereas the other research assistants were not. Inventor Chen’s role vs. the other non-inventor research assistants roles should be clarified in a new affidavit.
Response to Arguments
Applicant argues the priority date is now 11/30/21 after amending the claims. Applicant argues this, and the affidavit, overcome the prior art.
The Examiner disagrees. The provisional applications do not have support for the range “4.9 or lower”. The provisional applications both have numerous monomers therein, and the Examiner suggests submitting a declaration of the ring strain value of them, and, amending the range to be the high/low endpoints from such a showing. E.G. Applicant has support for those monomers of the provisional applications, though the ring strains thereof are not disclosed. Applicant does not have support for any and all ring strain values below 4.9 kcal/mol. If Applicant limits the range to ring strains supported by the provisional applications, the claims would be given support of the provisional applications. The affidavit is not persuasive for reasons set forth above. As such the rejections stand as previously set forth.
Applicant offers no arguments drawn to the double patenting rejection previously set forth. The filing of a TD cannot be held in abeyance since that filing “is necessary for further consideration of the rejection of the claims” as set forth in MPEP 804 (I) (B) (1) quoted below:
“As filing a terminal disclaimer, or filing a showing that the claims subject to the rejection are patentably distinct from the reference application’s claims, is necessary for further consideration of the rejection of the claims, such a filing should not be held in abeyance. Only objections or requirements as to form not necessary for further consideration of the claims may be held in abeyance until allowable subject matter is indicated.”
Applicant should file a TD or persuasive arguments in the next response.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 2-10 is/are rejected under 35 U.S.C. 102a1 and 102(a)(2) as being anticipated by Sathe et al (Olefin metathesis-based chemically recyclable polymers enabled by fused-ring monomers, Nature Chemistry, vol 13, Aug 2021, 743-750).
Elements of this rejection are as previously set forth, reiterated below in italics. Sathe discloses monomers have a ring strain of 4.9 kcal/mol, see the first monomer of the figure set forth previously (below).
The applied reference has a common inventor with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
Sathe discloses the polymerization of fused ring cycloalkenes, wherein the core monomer may comprise a fused ring of cyclobutane or cyclopentane on trans-cyclooctene (see figure below, Fig 1 of Sathe). Fig 1 shows that these monomers meet the claimed ring strain requirements.
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These monomers enable for depolymerization after polymerization (see title of Fig 1: Identifying the appropriate ring that lowers the RSE for cyclooctene to enable depolymerization of the corresponding polymer).
See the polymers of Fig 2 that meet the generically elected monomer M:
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See the carboxymethyl/carboxylbutyl groups of Fig 5, these being capable of further functionalization, if one so desired.
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Elements above anticipate claims 2-10
Allowable Subject Matter
As previously set forth: Claim 21 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: Sathe et al is the closest prior art to the monomer of claim 21, however it is not suggested or disclosed therein.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 2-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 5, 7 of copending Application No. 18/154957 (reference application).
Elements of this rejection are as previously set forth, reiterated below in its entirety in italics
Although the claims at issue are not identical, they are not patentably distinct from each other because claims 5 and 7 of ‘957 meet all the requirements of instant claims 2-10.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 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 ALICIA BLAND whose telephone number is (571)272-2451. The examiner can normally be reached Mon - Fri 9:00 am -3:00 pm EST.
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/ALICIA BLAND/ Primary Examiner, Art Unit 1759