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 .
DETAILED ACTION
Claims 1-30 are pending in the application. Claims 1-3, 5 and 26-30 are rejected. Claims 4 and 6-25 are withdrawn from further consideration.
Response to Amendment / Argument
On pages 19-21 of the response filed April 14th, 2026, Applicant traverses the improper Markush grouping rejection. Applicant asserts that the formulas have “a conjugated diene formula and, thus, the formulae share structural similarity.” Applicant asserts that such compounds share chemical behavior. This is not found persuasive since even the three monomers of the instant claims do not polymerize in the same manner since formula III requires three double bonds and formation of an aromatic ring during polymerization. Furthermore, the scope of dienes is incredibly diverse and there is no expectation that one member is replaceable with another. On pages 20 and 21, Applicant refers to a common use, which is not the subject of the rejection.
On page 21 of the response, Applicant traverses the rejection of claims under 35 USC 112(b) based on amendment. Applicant’s amendment is not found persuasive since it does not clarify how a single polymer can have multiple depolymerization temperatures and does not clarify whether the limitation requires: (1) a lowest depolymerization temperature within the recited range, (2) a depolymerization temperature within the recited range using some undefined standard conditions, or (3) at least one set of conditions in which the depolymerization occurs within the recited range.
On pages 21 and 22 of the response, Applicant traverses the rejection of claims under 35 USC 102(a)(1). Applicant discusses the scope of the prior art in relation to the elected species. First, the rejection is made over the instant claims. Applicant’s discussion of the elected species, even if accurate, would not necessarily mean the instant claims are not anticipated. Regardless, the formula depicted on page 22 of the remarks does not recite any stereochemistry and “n” is not defined (and the corresponding structure in instant claim 30 only requires “n” to be at least 1). The structure as drawn in the prior art contains two units such that the instant variable “n” is merely twice the corresponding “n” in the prior art.
All other objections and rejections made in the previous Office Action that do not appear below have been overcome by Applicant's amendments to the claims. Therefore, arguments pertaining to these objections and rejections will not be addressed.
Improper Markush Grouping
The nonstatutory Markush grouping rejection is based on a judicially approved “improper Markush grouping” doctrine. A Markush claim contains an “improper Markush grouping” if: (1) The species of the Markush group do not share a “single structural similarity,” or (2) the species do not share a common use. Members of a Markush group share a “single structural similarity” when they belong to the same recognized physical or chemical class or to the same art-recognized class. Members of a Markush group share a common use when they are disclosed in the specification or known in the art to be functionally equivalent. When an examiner determines that the species of a Markush group do not share a single structural similarity or do not share a common use, then a rejection on the basis that the claim contains an “improper Markush grouping” is appropriate. See the Federal Register, Vol. 76, No. 27, dated February 9, 2011, page 7166.
Claims 1-3, 5 and 26-29 are rejected under improper Markush grouping as the claims contain an improper grouping of alternatively useable species. In the present case, at least (1) applies. It cannot be said that all members of the Markush group have a single structural similarity. The instant claims are drawn to polymers containing monomers where the only commonality between formulae I, II and III is that the monomers contain multiple double bonds, which does not correspond to the same recognized physical or chemical class or to the same art-recognized class. The following three options would correspond to proper Markush groupings, along with their corresponding classifications in CPC that demonstrate they belong to different recognized chemical classes:
Crystalline polymers comprising monomers of Formula I, classified in C08F 132/06;
Crystalline polymers comprising monomers of Formula II, classified in C08F 132/08; and
Crystalline polymers comprising monomers of Formula III, classified in C08F 136/06.
Therefore, it cannot be said that all members of the Markush group have a single structural similarity with respect to the monomers present and the claims therefore are considered to contain an “improper Markush grouping”.
Claim Rejections - 35 USC § 112(b)
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 3 and 26-28 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 3 and 26-28 are rejected as indefinite based on the limitation of “a depolymerization temperature” within a certain range. The specification (for the elected species) discloses the following transformation on pages 55 and 56:
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The specification teaches that depolymerization was performed at ~258 °C in paragraph [00086] and notes in paragraph [00087] that “depolymerization also occurred at lower temperature in a boiling 2:1 solvent mixture of diphenyl ether and trichlorobenzene (~228 °C), but with longer reaction time of 3 H, affording 60% recovery yield (60 mg) of ME-OMeB monomers.” The specification therefore provides at least two different conditions in which a depolymerization can occur and that yield different temperatures. In this situation, it is unclear if Applicant’s claims require a particular polymer to have (1) a lowest depolymerization temperature within the recited range, (2) a depolymerization temperature within the recited range using some undefined standard conditions, or (3) at least one set of conditions in which the depolymerization occurs within the recited range. The remarks filed December 8th, 2025 state that claims 1-3 and 26-30 read on the elected species where claims 26, 27 and 28 recite ranges that only overlap (for claims 26 and 27) at 220 °C. The specification; however, refers to plotting singular depolymerization temperatures in paragraph [00050] relative to bond length, which are presumably obtained using the same conditions for the different polymers discussed in paragraph [00050]. Applicant has amended the instant claims to recite that “depolymerization comprises mixing the crystalline polymer with a solvent and heating to the depolymerization temperature.” The recited condition does not clarify which of the three above possibilities applies. For these reasons, it is unclear how to determine which polymers fall within the scope of the claims.
Claim Rejections - 35 USC § 112(d)
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 30 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 30 recites a polymer having a structure where n can be 1 that would correspond to only one monomer recited in claim 1. Claim 1, however, requires at least two monomers. 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 § 102
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(s) 1-3, 5 and 26-30 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Matsumoto et al. Synthesis 2005, 9, 1479-1490.
Matsumoto et al. teach the following muconate monomer on page 1480:
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The monomer above is embraced by instant formula II of instant claims 1 and 29 where A and B are both the third option recited in claim 1, n is 1, two instances of R are hydrogen and the other is C1 alkyl substituted by -O- (where the Examiner has interpreted optional substitution by divalent radicals to mean insertion at any point in the alkyl group), and C and D are hydrogen. The authors further teach Table 2 on page 1482 where the (E,E)-4-MeO monomer was treated with UV irradiation and γ-radiation where both treatments resulted in a polymeric product and where Table 2 notes refers to “in the Crystalline Statea”. The authors further teach the general type of polymers on page 1479 where the backbone involves carbon-carbon bond formation.
Regarding instant claim 5, this claim defines the organic cation but does not require that the organic cation be present. Regarding claim 30, the polymer as depicted has the same backbone that would be obtained by Matsumoto et al.
Regarding instant claims 2, 3 and 26-28, these claims recite certain properties of carbon-carbon bond length and depolymerization temperatures. The limitations of depolymerization temperatures are considered indefinite as discussed above. Nevertheless, MPEP 2112.01(II) states: “"Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable.” MPEP 2112.01(I) further states: “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).” In this situation, the prior art teaches irradiation using UV or γ-radiation where the instant specification discloses the use of a UVA lamp in Example 11. Both methods are performed using crystalline (E,E)-monomer starting material. Accordingly, the recited properties are considered anticipated in view of the MPEP guidance. Regardless, the instant claims regarding bond length recite a lower limit of “about 1.57 Å” where the specification refers “standard lengths of 1.53-1.54 Å” on page 2 (paragraph [0004]). Therefore the lower limit would still appear to overlap with standard bond lengths.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW P COUGHLIN whose telephone number is (571)270-1311. The examiner can normally be reached Monday - Friday, 10 am - 6 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Renee Claytor can be reached at 571-272-8394. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MATTHEW P COUGHLIN/Primary Examiner, Art Unit 1626
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