DETAILED ACTION
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 .
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1-20) in the reply filed on May 5, 2026 is acknowledged. Claims 21-25 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. The requirement is deemed proper and is therefore made FINAL.
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 1-20 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.
Regarding claims 1 and 3-4, there are occurrences of the phrase “preferably”, “more preferably”, “even more preferably” and “most preferably” which render the claim indefinite because it is unclear if they are positively recited limitations. The examiner suggests deleting these limitations. Below is the example for claim 1, but all the rejected claims have this issue.
PNG
media_image1.png
176
660
media_image1.png
Greyscale
Regarding claim 5, the phrase “obtainable by” renders the claim indefinite because it may not positively recite the limitations that follow it. The examiner suggests amending “obtainable by” to read “obtained by”. For proper Markush group wording, there should be an “and” before the phrase “glycidyl (meth)acrylate”.
Regarding claim 7, the examiner suggest deleting the phrase “preferably selected from the group….sugar alcohols” and amending “biobased polyol derivatives are glycolide” to read “biobased polyol derivatives are selected from the group consisting of glycolide”. Also, there should be an “and” before the phrase “poly(alkyleneoxide) derivatives”.
Regarding claim 8, the phrase “and/or” should be amended to read “and” for proper Markush group wording.
Regarding claim 9, for clarity and in order to fix the indefiniteness issue, the examiner suggests deleting the entire phrase starting from “capable of react with an isocyanate reactive group; whereby the blocking compound preferably generates…..maleic anhydride”.
Regarding claim 10, please amend “obtainable by” to read “obtained by”. Please amend the “and or” to read “and/or”. The two bullet points – are they alternatives (i.e. one or the other) or are the necessarily sequential? Please clarify.
Regarding claim 11, please amend “obtainable by” to read “obtained by”
Regarding claims 12-13, please delete, “such as…KOH/g”. This phrase is indefinite because it is unclear if it is mandatorily present.
Regarding claim 15, please delete the phrase “preferably…1:1”
Regarding claim 17, for proper Markush group wording please amend “or citric acid” to read “and citric acid”.
Regarding claim 18, for proper Markush group wording please amend “or a mono-“ to read “and a mono-“
Regarding claim 19, it is noted that compound (Av) does not have proper antecedent basis – claim 1 does not mention that particular compound. The examiner suggests making it dependent upon claim 2. For proper Markush group wording, please amend “or mixtures thereof” to read “and mixtures thereof”.
Regarding claim 20, it is noted that compound (Avi) does not have proper antecedent basis – claim 1 does not mention that particular compound. The examiner suggests making it dependent upon claim 2. For proper Markush group wording, please amend “or mixtures thereof” to read “and mixtures thereof”.
The remaining claims are rejected for being dependent upon a previously rejected claim.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DORIS L LEE whose telephone number is (571)270-3872. The examiner can normally be reached M-F 8 am - 5 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
DORIS L. LEE
Primary Examiner
Art Unit 1764
/DORIS L LEE/Primary Examiner, Art Unit 1764
Prosecution Insights