DETAILED ACTION
Citation to the Specification will be in the following format: (S. # : ¶/L) where # denotes the page number and ¶/L denotes the paragraph number or line number. Citation to patent literature will be in the form (Inventor # : LL) where # is the column number and LL is the line number. Citation to the pre-grant publication literature will be in the following format (Inventor # : ¶) where # denotes the page number and ¶ denotes the paragraph number.
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 .
Status of Application
The response dated 3/24/2026 has been received and will be entered.
Claim(s) 1-17 and 19-23 is/are pending.
Claim(s) 1, 4, 6, 8, 12, and 13 is/are currently amended.
Claim(s) 18 is/are acknowledged as cancelled.
The action is FINAL.
Response to Arguments
Claim Rejections – 35 U.S.C. §§ 102-103
I. With respect to the rejection of Claim(s) 1, 2, 3, 4, 5, 6, 7, 8, 9, 11, 12, 16, 18, and 20 – or as stated below - is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2016/0280548 to Bao, et al., as understood the traversal relies on narrowing Claim 1 to the Markush group of Claim 18, and canceling the rejected species from previously pending Claim 18. The Remarks (Remarks of 3/24/2026 at 10-11) are noted, but unnecessary to reach in withdrawing the rejection. The rejection is WITHDRAWN.
II. With respect to the rejection of Claim(s) 8, 9, 10, 17, and 18 – or as stated below - is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2016/0280548 to Bao, et al. in view of: (i) US 2018/0346336 to Bao, et al. (“Bao II”), the rejection is WITHDRAWN in view of the discussion above.
Claim Rejections - 35 USC § 112
112(a)
The following is a quotation of the first paragraph 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 the first paragraph of pre-AIA 35 U.S.C. 112:
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.
I. Claims 1-17 and 19-23 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement.
The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 has been amended to require “one or more chemical additives.” MPEP 714.02 states: “Applicant should also specifically point out the support for any amendments made to the disclosure.” The Remarks provide a string cite to certain paragraphs. (Remarks of 3/24/2026 at 9). These have been considered. As understood, they do not support the newly claimed more than one chemical additive.
Claim 1 now requires a new comparison, comparing the selectivity and yield employing a separation mixture with limitations i) and ii) with the selectivity and yield employing a separation mixture with limitations ii) and iii). MPEP 714.02 states: “Applicant should also specifically point out the support for any amendments made to the disclosure.” The Remarks provide a string cite to certain paragraphs. (Remarks of 3/24/2026 at 9). These have been considered. As understood, they do not support the newly claimed comparison generally, or for the myriad specific species combinations (i.e. all permutations and combinations of the chemical structure claimed, all R groups, all X groups, etc. in the infinitely broad “one or more chemical additives”). The same paragraphs and specification as a whole fail to support all plausible constructions of the claim. See 112(b) rejections below.
If Applicants disagree, a claim chart reading the claims onto the Specification would be helpful in withdrawing the rejection.
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.
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.
II. Claims 1-17 and 19-23 – or as stated below – is/are 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 has been amended to require a new comparison, comparing the selectivity and yield employing a separation mixture with limitations i) and ii) with the selectivity and yield employing a separation mixture with limitations ii) and iii). Limitation iii) is optional, yet the new language requires “a mixture comprising ii) and iii).” This suggests limitation iii) is not optional. Claim 23 however makes it mandatory. The doctrine of claim differentiation thus suggests that the presence of limitation iii) is optional. This obscures what is required by the newly claimed comparison.
Claim 1 is separately indefinite as it is unclear whether it requires two separations be carried out: one with a separation mixture comprising i)-ii) and a second with a separation mixture comprising ii)-iii). There is no way to compare the selectivity and yield without carrying out both. Stated differently, could the public carry out the method without regard to whether it increased the selectivity relative to separation mixture ii-iii), and not infringe?
Claim 1 is separately indefinite as it refers to something that is variable: the supramolecular polymer (which can be anything), perhaps the presence of the supramolecular polymer, and the results obtained with said supramolecular polymers, are variable. See MPEP 2173.05(b) II.
Claim 7, Claims 8-10, Claim 11, Claim 12, Claims 13-15, Claim 16, Claim 17, Claim 19, Claim 20, and Claim 22 all recite “the chemical additive. Claim 1 has been amended to recite “one or more chemical additives.” Thus, it is unclear to which additive the afore mentioned claims (and any other claim containing this language that was inadvertently overlooked) are referencing. Stated differently, the claims lack antecedent basis.
Claim 12 requires an “interact[ion]” between the chemical additive and the supramolecular polymer. In addition to lacking antecedent basis, it is unclear what this means in view of the newly claimed optional language and newly claimed comparison noted above.
The claims are separately rejected as prolix. MPEP 2173.05(m). Infinite chemical additives with untold1 permutations/combinations of functional groups, some of which themselves are optionally substituted and optionally comprise “heteroatoms” in one process compared to a process that doesn’t have infinite chemical additives, but does have infinite possibilities of “supramolecular polymers.” The comparison being made is not just based on a type, but a “subset” of a type, which is not defined and is infinitely broad. Breadth is not indefiniteness, but the long recitations of limitations and hypothetical (?) comparisons to variable results/compositions render the scope of the claim indefinite.
If Applicants disagree, an explanation of what is included and excluded from the claims would be helpful in withdrawing the rejection.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
US 2013/0108793 to Sivarajan, et al.
Toshimitsu, et al., Facile Isolation of Adsorbent-Free Long and Highly-Pure Chirality-Selected Semiconducting Single-Walled Carbon Nanotubes Using A Hydrogen-bonding Supramolecular Polymer, Scientific Reports 2015; 5: 18066, pp. 1-8
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL C. MCCRACKEN whose telephone number is (571) 272-6537. The examiner can normally be reached on Monday-Friday (9-6).
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.
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/DANIEL C. MCCRACKEN/Primary Examiner, Art Unit 1736
1 Untold, with the limited time available.
Prosecution Insights