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 .
This Office action is in response to the amendment filed 6/30/2026. Claims 3, 5, 7, 11, 13, 15, 17, 19, 21, 23 and 25 are cancelled; claims 2, 4, 10, 12, 14, 16, 18, 20, 22, 24, 26 and 28-31 are amended. Accordingly, claims 1-2, 4, 6, 8-10, 12, 14, 16, 18, 20, 22, 24, and 26-31 are currently pending in the application.
Information Disclosure Statement
It is noted that a US 20110065818 is listed multiple times in the IDS filed on 6/7/2023 and again once in IDS filed on 10/17/2024. Only one of these listing is considered by the Examiner and a line is put through the other two, since they are redundant.
Election/Restrictions
Applicant’s election of group I, drawn to claims 1-2, 4, 6 and 31, in the reply filed on 6/30/2026 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Claims 8-10, 12, 14, 16, 18, 20, 22, 24, and 26-30 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 6/30/2026.
Claim Objections
Claims 2 and 6 are objected to because of the following informalities:
Claim 2 recites “μmmol/g” (lines 2 and 3) and should be “μmol/g” or alternatively “mmol/g”.
Claim 6 recites “10-200nm” (line 2) and should be “10-200 nm”
Appropriate correction and/or clarification to the typographical error are required.
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 2, 4 and 6 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 2 recites the broad recitation 100-1000 μmmol/g, and the claim also recites “preferably, 400-700 μmmol/g “ which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 4 recites the broad recitation “range of 35-200 μm”, and the claim also recites “preferably 50-100 μm” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 6 recites the broad recitation “diameter of 10-200nm”, and the claim also recites “40-100 nm” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Toy (Encyclopedia of Reagents for Organic Synthesis; pages 1-6, Year: 2004).
Toy teaches a polymer Jandajel™ having the following structure:
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(page 1, col. 1) wherein X = NH2, OH (page 1, col. 2, 1st full paragraph) which reads on the polymer skeleton of present claim 1, wherein R1 is -O-(CH2)m-O-, m = 4, R2 = NH2 or OH.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-2, 4, 6, and 31 are rejected under 35 U.S.C. 103 as being unpatentable over Mori et a; (US 2011/0065818 A1) in view of Toy (Encyclopedia of Reagents for Organic Synthesis; pages 1-6, Year: 2004).
Regarding claim 1, Mori et al teach a porous resin bead (abstract) and can be used as a solid-phase synthesis support (paragraph 0058) which reads on solid-phase synthesis carrier in present claim 1. See example 2, wherein the copolymer is formed from styrene, divinylbenzene, acrylonitrile and 4-hydroxystyrene (paragraph 0075) which reads on R2 = -OH in present claim 1.
Mori et al differ with respect to the bridging moiety
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.
However, Toy teaches that JandaJel™ is a member of emerging class of lightly crosslinked polystyrene resin in which the standard crosslinker divinylbenzene is replaced with a more flexible reagent. Due to its novel crosslinker JandaJel™ absorbs more of the typical organic synthesis solvents. This increased swelling means that the molecules attached to this polymer are more readily accessible to the reaction solution compared to the molecules attached to other polymers commonly used in homogeneous polymer assisted organic synthesis. JandaJel™ has the effect of making reactions more homogeneous than more typical solid phase synthesis supports (page 1, bridging paragraph col. 1 to col. 2). The crosslinker in JandaJel™ is 1,4-bis(4-vinylphenoxy)butane represented by formula:
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(page 1, col. 2, 1st full paragraph) which reads on bridging moiety
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of present claim 1, wherein R1 is -O-(CH2)m-O-, m = 4). Therefore, in light of the teachings in Toy in the same field of endeavor, it would have been obvious to one skilled in art prior to the filing of present application, to replace the divinylbenzene in the polymer, of Mori et al, with the crosslinker in JandaJel™, for above mentioned advantages.
Regarding claim 2, see example 2, of Mori et al, wherein the functional group quantity is 0.70 mmol/g (Table 1) and is equivalent to 700 μmol/g (i.e., reads on content of hydroxyl group in present claim 2).
Regarding claim 4, see example 2, of Mori et al, wherein the median particle diameter is 83 μm (Table 1) which reads on the particle size in present claim 4.
Regarding claim 6, see example 2, of Mori et al, wherein the median pore diameter is 30 nm (Table 1) which reads on average pore diameter in present claim 6.
Regarding claim 31, see example 2, of Mori et al, wherein the copolymer is formed from styrene (i.e., reads on the structural unit III in present claim 31 wherein R7 = -H), acrylonitrile (i.e., reads on the structural unit I in present claim 31 wherein R3 and R4 = -H and R- = -CN) and 4-hydroxystyrene (paragraph 0075) which reads on structural unit IV wherein R8 = -OH in present claim 31. Example of the crosslinker in Toy includes 1,4-bis(4-vinylphenoxy)butane (page 1, col. 2, 1st full paragraph) which reads on structural unit II in present claim 31 wherein R6 is -O-(CH2)y-O-, y = 4.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KARUNA P REDDY whose telephone number is (571)272-6566. The examiner can normally be reached 8:30 AM to 5:00 PM M-F.
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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.
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/KARUNA P REDDY/Primary Examiner, Art Unit 1764
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