DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of the Claims
2. Claims 1-20 are currently pending. This office action is the first office action on the merits of the claims.
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.
3. 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.
Concerning claims 1-3 each recite “L-(S)-malic acid” which renders the claim indefinite as it is not clear what the “L-(S)” as malic acid has both L and D isomer which are alternatively labeled the (S) and (R) conformations. As such it is not clear if this is attempting to say that the L isomer is also known as the (S) isomer or if it is trying to define a L-(S) group or isomer. For the purpose of examination the “L-(S)-malic acid” is interpreted to have the structure indicated on pg 13 of applicants specification.
Concerning claims 2 and 4 the claims recite “lactone compound 12” which renders the claim indefinite as it is not clear what lactone compound 12 is, and any particular structure which is claimed must be present or clearly recited in the claim.
Concerning claim 5 the claim recites “a C3 substituted chiral vinyl lactam compound (-)-13” which renders the claim indefinite as it is not clear what the structure of compound (-)-13 is as it is not in the claim. Moreover the indication of a compound (-)-13 in the scheme 3 of pg 13 of the applicant specification indicates a vinyl lactam substituted with -O-CH2-O-CH3 which is not a C3 substituent so it is not clear what the structure that is claimed actually is.
Concerning claims 6-7 the claims recite a formula of
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174
336
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Which renders the claims indefinite as it is not clear the star at the attachment to the backbone is.
Concerning claim 9 the claim recites “a molecular weight” which renders the claim indefinite as it is not clear what kind of molecular weight it is as there are multiple different kinds of molecular weight which this value could be such as number average, weight average, viscosity average and more.
Claims 8 and 10-20 are rejected as being dependent from a rejected base claim.
Allowable Subject Matter
4. Claims 1-20 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter: The claims are allowable over the closest prior art of record of Hua (WO 2017/172763 A1).
Hua teaches a method of synthesis of chiral polymers from substituted 1-vinylpyrrolidinones (pg 4 lines 25-30).
Hua does not teach or fairly suggest the claimed method which comprises reacting a malic acid to produce a chiral vinyl lactam, Hua indicates that the substituted pyrrolidinone is made from chiral amino acids (pg 6 scheme 1) which do not have the structure of the claimed malic acid.
Conclusion
5. Claims 1-20 are allowable over the prior art of record but are rejected over 112(b).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID L MILLER whose telephone number is (571)270-1297. The examiner can normally be reached M-F 9:30-6:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached at 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID L MILLER/Examiner, Art Unit 1763
/JOSEPH S DEL SOLE/Supervisory Patent Examiner, Art Unit 1763