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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 6/11/26 has been entered.
Priority
As previously set forth: The claims have an effective date of the filing of the provisional application: 7/29/20
Response to Arguments
Applicant argues Johnson doesn’t meet the amended claims.
The Examiner agrees and withdraws Johnson, Johnson requires maleic acid anhydride which is excluded by the claims.
Applicant argues a TD was submitted over US 12479945
The Examiner agrees, however that TD was duplicate and Applicant actually needed to also submit a TD over US 12617935 which stems from the ‘201 application previously set forth. The double patenting rejection has been rewritten over ‘935 since it has issued since the first action was written.
Terminal Disclaimer
As previously set forth: The terminal disclaimer filed on 1/20/26 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of US 12269906, US 12479945 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Claim Rejections - 35 USC § 112
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.
Claims 1, 6, and their dependents, 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.
Claims 1 and 6 are missing Formula (I) rendering them indefinite
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.
Rejection over Claim(s) 1, 3, 4, 6-7, 9 under 35 U.S.C. 102a1 as being anticipated by Johnson (US 3393168) is withdrawn Johnson requires maleic anhydride therein which is excluded from the claims.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Rejection over Claim(s) 5, 8, 10 under 35 U.S.C. 103 as being unpatentable over Johnson is withdrawn for reasons set forth above.
Rejection over Claim(s) 2 under 35 U.S.C. 103 as being unpatentable over Johnson in view of Lammens (US 20180244813) is withdrawn for reasons set forth above.
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 6-9, 11 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 8 of U.S. Patent No. 12617935. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1 and 3 of ‘935 meet instant claims 6-8, 11 claim 8 of ‘935 meets instant claim 9.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter: Other than the above ODP and 112 rejections, the claims are free from art. Closest prior art to the bisallylmaleate MFBA of claim 4 is Johnson, as previously set forth. Closest prior art to polymyrcene as a MFBA is US 2021/0009729 however the copolymer therein is formed from ethylene and myrcene (monomers), the myrcene monomer does not have the total reactivity of the claims (see the instant specification Table 1 and calculations of R for polymyrcene and other monomers). It is unclear if a polymyrcene having the total reactivity R would implicitly/inherently be formed from this polymerization, e.g. the product claim 6 requires the product to have MFBA having a R value from 3-40 and since myrcene is a minor component it is unclear if this would be found in the product copolymer. Closest prior art to polyfarnesene as MFBA is US 20150025193, however therein farnesene and ethylene may be reacted together, farnesene itself does not have the total reactivity R required by the claims. Closest prior art to poyisoprene MFBA is US 5883145, however polyisoprene is merely mentioned in passing in Column 7 line 65 with no suggestion or disclosure of the MW (and thus total reactivity) thereof. Closest prior art to tetramethyltetravinylcyclotetrasiloxane includes WO98/33841 however extra components are required therein that would not meet the consisting of requirements of the claim.
Thus, the claimed ethylene based polymer, and method of making, comprising, or using, a MFBA having the claimed total reactivity is not suggested or disclosed by the closest prior art of record.
Conclusion
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
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