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 1-7, 14, and 16, in the reply filed on 01/19/2026 is acknowledged.
Claim 18 is new and pertains to the bio-based sulfone copolymer b-PAES of claim 1, and claims 19 and 20 are new and pertain to the polymer solution (SP) of claim 14. Claims 18-20 are therefore placed in Group I.
Claims 8-13, 15, and 17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 01/19/2026.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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 1-7, 14, 16, and 18-20 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.
Claim 1 recites the limitation “each R2 is at each location independently selected from H or an alkyl having from 1 to 5 carbon atoms, preferably an alkyl having from 1 to 5 carbon atoms” in lines 10-11, which is indefinite because the term “preferably” makes it unclear if “an alkyl having from 1 to 5 carbon atoms” is required. For further examination of the claims, this limitation is interpreted as “each R2 is at each location independently selected from H or an alkyl having from 1 to 5 carbon atoms”.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 5 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 5 recites the limitation “wherein the recurring units (Rb) are of formula selected from the group consisting of formulae (Rb-1), (Rb-2), (Rb-3), and any combination thereof:
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wherein R4 and i have the same meaning as defined in Claim 1” in lines 2-7, which fails to further limit the subject matter of the claim upon which it depends because claim 1, from which claim 5 depends, recites the limitation “recurring units (Rb) of formula (II) as shown below :
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wherein :” “each of E, equal to or different from each other and at each occurrence, is selected from the group consisting of those of formulae (E’-1) to (E’-III):
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” in lines 20-22 and 28-30, which means that the limitation in claim 5 is identical in scope to this limitation in claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 1-7, 14, 16, and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Di Nicolo et al. (WO 2019/048652 A1, cited in IDS, made of record on 05/11/2023).
Regarding claims 1 and 5, Di Nicolo teaches a polymer having recurring units RPSI that are those of formula RPSI-1 that is
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wherein each of E’, equal to or different from each other and at reach occurrence, is selected from the group consisting of formulae (E’-1) to (E’-3):
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, each R’ is independently selected from the group consisting of halogen, alkyl, alkenyl, alkynyl, aryl, ether, thioether, carboxylic acid, ester, amide, imide, alkali, or alkaline earth metal sulfonate, alkyl sulfonate, alkali or alkaline earth metal phosphonate, alkyl phosphonate, amine, and quaternary ammonium, j’ is zero or an integer of 1 to 4 [0010], wherein the polymer may comprise, in addition to recurring units (RPSI), recurring units (RS) [0022], wherein recurring units (RS) can be notably selected from
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wherein each of R’, equal to or different from each other, is selected from the group consisting of halogen, alkyl, alkenyl, alkynyl, aryl, ether, thioether, carboxylic acid, ester, amide, imide, alkali or alkaline earth metal sulfonate, alkyl sulfonate, alkali or alkaline earth metal phosphonate, alkyl phosphonate, amine, and quaternary ammonium, j’ is zero or an integer from 0 to 4, and T’, equal to or different from each other are optionally selected from -CH2- and -C(CH3)2- [0023], which reads on a bio-based sulfone copolymer b-PAES, optionally comprising a) recurring units (Ra) of formula (I) wherein each R1 is independently selected from the group consisting of halogen, alkyl, alkenyl, alkynyl, aryl, ether, thioether, carboxylic acid, ester, amide, imide, alkali or alkaline earth metal sulfonate, alkyl sulfonate, alkali or alkaline earth metal phosphonate, alkyl phosphonate, amine, and quaternary ammonium, and j is zero or an integer of 1 to 4, each R2 is at each location independently selected from an alkyl having from 1 to 5 carbon atoms, preferably an alkyl having from 1 to 5 carbon atoms, each R2* is at each location independently selected from an alkyl having from 1 to 5 carbon atoms, and R3 is represented by -CRpRq-, wherein each of Rp and Rq is independently selected from H, and an alkyl having 1 carbon atom, and comprising b) recurring units (Rb) of formula (II) wherein each R4 is independently selected from the group consisting of halogen, alkyl, alkenyl, alkynyl, aryl, ether, thioether, carboxylic acid, ester, amide, imide, alkali, or alkaline earth metal sulfonate, alkyl sulfonate, alkali or alkaline earth metal phosphonate, alkyl phosphonate, amine, and quaternary ammonium, and i is zero or an integer of 1 to 4, and each of E, equal to or different from each other and at each occurrence, is selected from the group consisting of those of formulae (E’-I) to (E’-III), and the bio-based sulfone copolymer b-PAES of claim 1, wherein the recurring units (Rb) are of formula selected from the group consisting of formulae (Rb-1), (Rb-2), (Rb-3), and any combinations thereof, wherein R4 and I have the same meaning as defined in Claim 1.
Di Nicolo does not teach a specific embodiment of the bio-based sulfonate copolymer b-PAES further comprising a) recurring units (Ra) of formula (I) as claimed. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to use Di Nicolo’s recurring units (RS) selected from
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, wherein each of R’, equal to or different from each other, is selected from the group consisting of halogen, alkyl, alkenyl, alkynyl, aryl, ether, thioether, carboxylic acid, ester, amide, imide, alkali or alkaline earth metal sulfonate, alkyl sulfonate, alkali or alkaline earth metal phosphonate, alkyl phosphonate, amine, and quaternary ammonium, j’ is zero or an integer from 0 to 4, and T’, equal to or different from each other are selected from -CH2- and -C(CH3)2-, to modify Di Nicolo’s polymer, such that T’ is bonded to
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at the 1 and 1’ positions, O is bonded to
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at the 4 and 4’ positions, R’ in
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is selected from alkyl having from 1 to 5 carbon atoms, j’ in
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is an integer from 2 to 4, and R’ in
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is bonded at the 3 and 3’ positions and optionally at the 5 and/or 5’ positions. The proposed modification would read on the bio-based sulfonate copolymer b-PAES further comprising a) recurring units (Ra) of formula (I) wherein each R1 is independently selected from the group consisting of halogen, alkyl, alkenyl, alkynyl, aryl, ether, thioether, carboxylic acid, ester, amide, imide, alkali or alkaline earth metal sulfonate, alkyl sulfonate, alkali or alkaline earth metal phosphonate, alkyl phosphonate, amine, and quaternary ammonium, and j is zero or an integer of 1 to 4, each R2 is at each location independently selected from an alkyl having from 1 to 5 carbon atoms, preferably an alkyl having from 1 to 5 carbon atoms, each R2* is at each location independently selected from an alkyl having from 1 to 5 carbon atoms, and R3 is represented by -CRpRq-, wherein each of Rp and Rq is independently selected from H, and an alkyl having 1 carbon atom as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for modifying effectiveness of Di Nicolo’s polymer for purification methods for biological fluids comprising at least one filtration step through a membrane obtained from Di Nicolo’s polymer because Di Nicolo teaches that the polymer may comprise, in addition to recurring units (RPSI), recurring units (RS) [0022], wherein recurring units (RS) can be notably selected from
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wherein each of R’, equal to or different from each other, is selected from the group consisting of halogen, alkyl, alkenyl, alkynyl, aryl, ether, thioether, carboxylic acid, ester, amide, imide, alkali or alkaline earth metal sulfonate, alkyl sulfonate, alkali or alkaline earth metal phosphonate, alkyl phosphonate, amine, and quaternary ammonium, j’ is zero or an integer from 0 to 4, T’, equal to or different from each other are optionally selected from -CH2- and -C(CH3)2- [0023], and that the polymer can be used in purification methods for biological fluids comprising at least one filtration step through a membrane obtained from the polymer [0010].
Regarding claim 2, Di Nicolo teaches that more than 50 % moles, with respect to all the recurring units of the polymer, are recurring units RPSI that are those of formula RPSI-1 [0010]. As explained above for claim 1, before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to use Di Nicolo’s recurring units (RS) selected from
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, to modify Di Nicolo’s polymer. Therefore, Di Nicolo renders obvious the bio-based sulfone copolymer b-PAES of claim 1, comprising more than 50 mol% and less than 100 mol% of the recurring units (Rb) with respect to all the recurring units of the copolymer b-PAES as claimed.
Regarding claims 3 and 4, Di Nicolo teaches that more than 50 % moles, with respect to all the recurring units of the polymer, are recurring units RPSI that are those of formula RPSI-1 [0010]. As explained above for claim 1, before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to use Di Nicolo’s recurring units (RS) selected from
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, to modify Di Nicolo’s polymer. Therefore, Di Nicolo renders obvious the bio-based sulfone copolymer b-PAES of claim 1, comprising greater than 0 mol% and less than 50 mol% of the recurring units (Ra) with respect to all the recurring units of the copolymer b-PAES as claimed, and the bio-based sulfone copolymer b-PAES of claim 1, comprising a molar ratio of the recurring units (Rb) to the recurring units (Ra) of greater than 50:50 and less than 100:0 as claimed. The mol% of Ra is based on the calculations 100% - 50% = 50% and 100% - 100% = 0%. The molar ratio of Rb to Ra is based on the calculations 50:(100-50) = 50:50 and 100:(100-100) = 100:0.
Regarding claim 6, Di Nicolo teaches that the polymer may comprise, in addition to recurring units (RPSI), recurring units (RS) [0022], wherein recurring units (RS) can be notably selected from
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wherein each of R’, equal to or different from each other, is optionally selected from alkyl, j’ is optionally zero or an integer that is 4, and T’, equal to or different from each other are optionally selected from -CH2- [0023], which optionally reads on wherein the recurring units (Ra) are of formula (I*) wherein each R2 is at each location independently selected from an alkyl having from 1 to 5 carbon atoms claimed.
Di Nicolo does not teach a specific embodiment wherein the recurring units (Ra) are of formula (I*) as claimed. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to use Di Nicolo’s recurring units (RS) selected from
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, wherein T’, equal to each other are -CH2-, to modify Di Nicolo’s polymer, such that T’ is bonded to
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at the 1 and 1’ positions, O is bonded to
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at the 4 and 4’ positions, R’ in
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is selected from alkyl having from 1 to 5 carbon atoms, j’ in
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is an integer that is 4, j’ in
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is zero, and R’ in
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is bonded at the 3, 3’, 5, and 5’ positions. The proposed modification would read on wherein the recurring units (Ra) are of formula (I*) wherein each R2 is at teach location independently selected from an alkyl having from 1 to 5 carbon atoms as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for modifying effectiveness of Di Nicolo’s polymer for purification methods for biological fluids comprising at least one filtration step through a membrane obtained from Di Nicolo’s polymer because Di Nicolo teaches that the polymer may comprise, in addition to recurring units (RPSI), recurring units (RS) [0022], wherein recurring units (RS) can be notably selected from
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wherein each of R’, equal to or different from each other, is optionally selected from alkyl, j’ is optionally zero or an integer that is 4, and T’, equal to or different from each other are optionally selected from -CH2- [0023], and that the polymer can be used in purification methods for biological fluids comprising at least one filtration step through a membrane obtained from the polymer [0010].
Regarding claim 7, Di Nicolo teaches that the polymer [0010] has a weight average molecular weight of at least 20 000, preferably at least 30 000, more preferably at least 40 000 [0026], and that the polymer in an example possesses a Mw of between 94 000 and 99 000 [0125], which reads on the bio-based sulfone copolymer b-PAES of claim 1, having a weight averaged molecular weight (Mw) of at least 20 kDa.
Di Nicolo does not teach with sufficient specificity that the bio-based sulfone copolymer b-PAES has a weight average molecular weight (Mw) of at least 50 kDa, and/or at most 200 kDa. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to select the weight average molecular weight (Mw) of Di Nicolo’s polymer to be between 94 000 and 99 000. The proposed modification would read on the bio-based sulfone copolymer b-PAES of claim 1, having a weight averaged molecular weight (Mw) of greater than 94 kDa and less than 99 kDa as claimed. One of ordinary skill in the art would have been motivated to do so because Di Nicolo teaches that the polymer [0010] has a weight average molecular weight of at least 20 000, preferably at least 30 000, more preferably at least 40 000 [0026], and that the polymer in an example possesses a Mw of between 94 000 and 99 000 [0125], which means that selecting the weight average molecular weight of Di Nicolo’s polymer to be between 94 000 and 99 000 would have been beneficial for providing a weight average molecular weight that is suitable for Di Nicolo’s polymer. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 2144.05(I)).
Regarding claim 14, Di Nicolo teaches preparing a membrane by a phase inversion method occurring in the liquid phase, said method comprising the following steps: preparing a polyaryl ether sulfone polymer solution comprising the polymer and a polar solvent [0056], wherein the solvent is an aromatic hydrocarbon, an aliphatic or aromatic halogenated hydrocarbon, an aliphatic, cycloaliphatic, or aromatic ether oxide, an aromatic amine, a linear or cyclic ester, a linear or cyclic carboxamide, an organic carbonate, a phosphoric ester, dimethylsulfoxide, or a diester [0059], which reads on a polymer solution (SP) for preparing a membrane, which comprises the copolymer b-PAES of claim 1 in a polar organic solvent as claimed.
Regarding claim 16, Di Nicolo teaches that the polymer may comprise, in addition to recurring units (RPSI), recurring units (RS) [0022], wherein recurring units (RS) can be notably selected from
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wherein each of R’, equal to or different from each other, is selected from the group consisting of halogen, alkyl, alkenyl, alkynyl, aryl, ether, thioether, carboxylic acid, ester, amide, imide, alkali or alkaline earth metal sulfonate, alkyl sulfonate, alkali or alkaline earth metal phosphonate, alkyl phosphonate, amine, and quaternary ammonium, j’ is zero or an integer from 0 to 4, and T’, equal to or different from each other are optionally selected from -CH2- and -C(CH3)2- [0023], which optionally reads on wherein in the recurring units (Ra) of formula (I), each R2 is methyl at each location, each R2* is methyl at each location, and the R3 is selected from -CH2- or -C(CH3)2- as claimed.
Di Nicolo does not teach a specific embodiment wherein in the recurring units (Ra) of formula (I), each R2 is methyl at each location, each R2* is methyl at each location, and the R3 is selected from -CH2- or -C(CH3)2-. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to use Di Nicolo’s recurring units (RS) selected from
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, wherein each of R’, equal to or different from each other, is selected from the group consisting of halogen, alkyl, alkenyl, alkynyl, aryl, ether, thioether, carboxylic acid, ester, amide, imide, alkali or alkaline earth metal sulfonate, alkyl sulfonate, alkali or alkaline earth metal phosphonate, alkyl phosphonate, amine, and quaternary ammonium, j’ is zero or an integer from 0 to 4, and T’, equal to or different from each other are selected from -CH2- and -C(CH3)2-, to modify Di Nicolo’s polymer, such that T’ is bonded to
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at the 1 and 1’ positions, O is bonded to
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at the 4 and 4’ positions, R’ in
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is selected from alkyl having 1 carbon atom, j’ in
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is an integer that is 4, and R’ in
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is bonded at the 3, 3’, 5, and 5’ positions. The proposed modification would read on wherein in the recurring units (Ra) of formula (I), each R2 is methyl at each location, each R2* is methyl at each location, and the R3 is selected from -CH2- or -C(CH3)2- as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for modifying effectiveness of Di Nicolo’s polymer for purification methods for biological fluids comprising at least one filtration step through a membrane obtained from Di Nicolo’s polymer because Di Nicolo teaches that the polymer may comprise, in addition to recurring units (RPSI), recurring units (RS) [0022], wherein recurring units (RS) can be notably selected from
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wherein each of R’, equal to or different from each other, is selected from the group consisting of halogen, alkyl, alkenyl, alkynyl, aryl, ether, thioether, carboxylic acid, ester, amide, imide, alkali or alkaline earth metal sulfonate, alkyl sulfonate, alkali or alkaline earth metal phosphonate, alkyl phosphonate, amine, and quaternary ammonium, j’ is zero or an integer from 0 to 4, and T’, equal to or different from each other are optionally selected from -CH2- and -C(CH3)2- [0023], and that the polymer can be used in purification methods for biological fluids comprising at least one filtration step through a membrane obtained from the polymer [0010].
Regarding claims 18 and 19, Di Nicolo teaches that the recurring units RPSI are those of formula RPSI-2 that is
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wherein each of E’, equal to or different from each other and at reach occurrence, is selected from the group consisting of formulae (E’-1) to (E’-3):
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, each R’ is independently selected from the group consisting of halogen, alkyl, alkenyl, alkynyl, aryl, ether, thioether, carboxylic acid, ester, amide, imide, alkali, or alkaline earth metal sulfonate, alkyl sulfonate, alkali or alkaline earth metal phosphonate, alkyl phosphonate, amine, and quaternary ammonium, j’ is zero or an integer of 1 to 4, and T is a bond or a divalent group optionally comprising one or more than one heteroatom [0010], and that more than 50 % moles, with respect to all the recurring units of the polymer, are recurring units RPSI that are those of formula RPSI-2 [0010], which reads on the bio-based sulfone copolymer b-PAES of claim 1, comprising less than 50 mol% of the recurring units (Rb) with respect to all the recurring units of the copolymer b-PAES as claimed, and the polymer solution (SP) of claim 14, wherein the copolymer b-PAES comprises less than 50 mol% of the recurring units (Rb) with respect to all the recurring units of the copolymer b-PAES as claimed.
Regarding claim 20, Di Nicolo teaches that the polymer may comprise, in addition to recurring units (RPSI), recurring units (RS) [0022], wherein recurring units (RS) can be notably selected from
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wherein each of R’, equal to or different from each other, is optionally selected from alkyl, j’ is optionally zero or an integer that is 4, and T’, equal to or different from each other are optionally selected from -CH2- [0023], which optionally reads on wherein in the copolymer b-PAES, the recurring units (Ra) are of formula (I*) wherein each R2 is at each location independently selected from an alkyl having from 1 to 5 carbon atoms claimed.
Di Nicolo does not teach a specific embodiment wherein in the copolymer b-PAES, the recurring units (Ra) are of formula (I*) as claimed. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to use Di Nicolo’s recurring units (RS) selected from
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, wherein T’, equal to each other are -CH2-, to modify Di Nicolo’s polymer, such that T’ is bonded to
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at the 1 and 1’ positions, O is bonded to
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at the 4 and 4’ positions, R’ in
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is selected from alkyl having from 1 to 5 carbon atoms, j’ in
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is an integer that is 4, j’ in
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is zero, and R’ in
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is bonded at the 3, 3’, 5, and 5’ positions. The proposed modification would read on wherein in the copolymer b-PAES, the recurring units (Ra) are of formula (I*) wherein each R2 is at each location independently selected from an alkyl having from 1 to 5 carbon atoms claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for modifying effectiveness of Di Nicolo’s polymer for purification methods for biological fluids comprising at least one filtration step through a membrane obtained from Di Nicolo’s polymer because Di Nicolo teaches that the polymer may comprise, in addition to recurring units (RPSI), recurring units (RS) [0022], wherein recurring units (RS) can be notably selected from
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wherein each of R’, equal to or different from each other, is optionally selected from alkyl, j’ is optionally zero or an integer that is 4, and T’, equal to or different from each other are optionally selected from -CH2- [0023], and that the polymer can be used in purification methods for biological fluids comprising at least one filtration step through a membrane obtained from the polymer [0010].
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 1-6, 16, and 18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of copending Application No. 18/727,710 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending application claims a copolymer (PO) comprising collectively at least 70 mol.% of recurring units (RPO) and (R*PO), based on the total number of moles of recurring units in the copolymer (PO), said recurring units (RPO) being of formula (M):
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, wherein each R1 is independently selected from the group consisting of a halogen, alkyl, alkenyl, alkynyl, aryl, ether, thioether, carboxylic acid, ester, amide, imide, alkali or alkaline earth metal sulfonate, alkyl sulfonate, alkali or alkaline earth metal phosphonate, alkyl phosphonate, amine and quaternary ammonium, each i is independently 0 or an integer from 1 to 4, each of E, equal to or different from each other and at each occurrence, in the formula (M) is selected from the group consisting of those of formulae (E’-1), (E’-II), (E’-III), and (E’-IV):
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, each R3 in formula (E’-IV) is at teach location independently selected from H or an alkyl having from 1 to 5 carbon atoms, preferably an alkyl having from 1 to 5 carbon atoms, more preferably methyl at each location, each R3’ in formula (E’-IV) is at each location independently selected from an alkyl having from 1 to 5 carbon atoms, preferably methyl at each location (claim 1), which reads on a bio-based sulfone copolymer b-PAES, comprising a) recurring units (Ra) of formula (I) wherein each R1 is independently selected from the group consisting of a halogen, alkyl, alkenyl, alkynyl, aryl, ether, thioether, carboxylic acid, ester, amide, imide, alkali or alkaline earth metal sulfonate, alkyl sulfonate, alkali or alkaline earth metal phosphonate, alkyl phosphonate, amine and quaternary ammonium, and j is zero or an integer of 1 to 4, each R2 is at each location independently selected from H or an alkyl having from 1 to 5 carbon atoms, preferably an alkyl having from 1 to 5 carbon atoms, each R2* is at each location independently selected from an alkyl having from 1 to 5 carbon atoms, and R3 is represented by -CRpRq-, wherein each of Rp and Rq is independently selected from H, and b) recurring units (Rb) of formula (II), wherein each R4 is independently selected from the group consisting of a halogen, alkyl, alkenyl, alkynyl, aryl, ether, thioether, carboxylic acid, ester, amide, imide, alkali or alkaline earth metal sulfonate, alkyl sulfonate, alkali or alkaline earth metal phosphonate, alkyl phosphonate, amine and quaternary ammonium, and i is zero or an integer of 1 to 4, and each of E, equal to or different from each other and at each occurrence, is selected from the group consisting of those of formulae (E’-I) to (E’-III) as claimed.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID KARST whose telephone number is (571)270-7732. The examiner can normally be reached Monday-Friday 8:00 AM-5:00 PM.
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/DAVID T KARST/Primary Examiner, Art Unit 1767