DETAILED ACTION
Election/Restrictions
Applicant’s election of Group II, as now amended into claim 1, in the reply filed on 5/19/26 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)).
The Examiner recognizes that applicants have amended the claims and altered
the grouping of the claims. Currently claims 1 to 5, 7, 9, 20, 22 and 24 are under con-sideration. Claims 10 to 19 are withdrawn as being directed to a non-elected invention.
Claim Interpretation
For claim interpretation purposes, note the following. The claims are directed to a polymer that has many of the same features as the claims in the parent application. As such, for reasons consistent with those given in 16/043,541 the claims are neither taught nor suggested by the prior art.
Note that the squiggly lines (for instance found in the structure of the CTA in
claim 2) represents a single bond. This is consistent with the interpretation given in the parent application.
Also in claims such as claim 4, where a statement refers to something found in a previous statement, it follows that the first statement must be met for the second state-ment to be met and have appropriate antecedent basis. For instance, statement (C) in claim 4 limits the amount of catalyst. This means that statement (B) must occur as this refers to the catalyst and provides antecedent basis.
Claim Rejections - 35 USC § 112
Claims 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.
In claim 7, the language “wherein when the serially and covalently linked to at
least one…” makes no sense.
Also in claim 7, the inclusion of “n” values of 3 and 4 is improper as such a link-age will result in a branched or networked structure which is different from the pearl chain structure claimed.
In claim 9, the language “wherein when the serially and covalently linked to at
least one…” makes no sense.
Also in claim 9 the inclusion of “a” values of 0, 2 and 3 is improper as such a link-age will result in a branched or networked structure which is different from the pearl chain structure claimed.
Also in claim 9, reference to “the multidimensional network” lacks antecedent basis.
In claim 20, the language “the polymer formed of claim 1” is confusing.
In claim 22, it is unclear what is meant by “terminal silane or group”. Specifically the difference between a terminal silane and a group is unclear.
Also in claim 22, the language “free of crosslinking” is confusing since the claim-ed polymer is bonded to other groups, i.e. it is crosslinked.
In claim 22, in section (M)(ii), the period at the end of the line should be removed.
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 to 5, 7, 9, 20, 22 and 24 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 to 25 and 36 to 75 of U.S. Patent No. 11,661,533. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 24 in ‘533 is directed to the polymer of claim 1 (which is a core-shell hyperbranched polymer) which is serially and covalently linked together to form a pearl chain structure. This is consistent with what is found in instant claim 1. Note that the core-shell polymers are essentially the same, such that the pearl chain structure is likewise essentially the same. As for the instant dependent claims, see claims 2 to 23, 25 and 36 to 75 in ‘533 which contain these same limitations. The skilled artisan would thus have found the pearl chain structure in claim 24 of ‘533 having the various properties and features of the core-shell polymer of claim 1 of ‘533 and the claims that depend thereon (2 to 23, 25, 36 to 75) to have been obvious. In this manner each of claims 1 to 5, 7, 9, 20, 22 and 24 are deemed not patentably distinct over the claims in ‘533.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARGARET MOORE whose telephone number is (571)272-1090. The examiner can normally be reached on Monday to Friday, 10 am to 5 pm. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Kelly, can be reached at 571-270-1831.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MARGARET G MOORE/Primary Examiner, Art Unit 1765
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