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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 6/2/2026 has been entered.
The previous prior art rejection under Wang et al (Design and Synthesis of Thermal Contracting Polymer with Unique Eight-Membered Carbocycle Unit, Macromolecules 2018, 51, 1377-1385) in view of Davis (US 10723834), over Inoue et al (Thermal and Gas Adsorption Properties of Tröger's Base/Diazacyclooctane Hybrid Ladder Polymers, ChemNanoMat 2021, 7, 1-8) in view of Davis and Gormley et al (US 20210388138) as evidences by Wang in view of Davis maintained.
Claim Rejections - 35 USC § 112
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.
Claims 1 and 10 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.
In Amendment to claim 1 the word “crosslinked” is replaced by “covalently bonded”.
The amended claim is drawn to a linear non-crosslinked polymer.
However, in original Specification the incorporation of cis-stereoisomer into a polymer structure is disclosed only in connection of crosslinking (see printed publication at 0005 and 0018).
Moreover, by definition cis-trans isomerism relates to a substitute positions around rigid structure, such as double bond.
Thus, for the purpose of examination introduction of benzene ring with functionalities in a cis position in a crosslinker is considered.
Claim Rejections - 35 USC § 103
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 and 6-9 are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al (Design
and Synthesis of Thermal Contracting Polymer with Unique Eight-Membered Carbocycle Unit,
Macromolecules 2018, 51, 1377-1385), cited in IDS and previous Office Action in view of Davis (US
10723834), cited in previous Office Action.
Claims 1-10 are rejected under 35 U.S.C. 103 as obvious over Inoue et al (Thermal and Gas
Adsorption Properties of Tröger's Base/Diazacyclooctane Hybrid Ladder Polymers, ChemNanoMat 2021,
7, 1-8) in view of Davis, all cited in previous Office Action.
Claims 1-5 and 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Gormley et al
(US 20210388138) as evidences by Wang in view of Davis, all cited in previous Office Action.
The rejection can be found in the FINAL office action mailed 3/4/2026 and is herein
incorporated by reference.
Response to Arguments
Applicant's arguments filed 6/2/2026 have been fully considered but they are not persuasive.
Applicant’s submits that in contrary to prior art, the inventive polymer has a linear structure. It is clarified that dibenzebnecyclooctene "covalently bonded through benzene rings through functionalities in a cis position."
However, as explained above, original Specification discloses such incorporation only in connection with crosslinker (see Rejection above).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GREGORY LISTVOYB whose telephone number is (571)272-6105. The examiner can normally be reached 9am-5pm EST M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Riviere Kelley can be reached at (571) 270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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GL
/GREGORY LISTVOYB/Primary Examiner, Art Unit 1765
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