DETAILED ACTION
Specification
The disclosure is objected to because of the following informalities: The status of the related applications in paragraph 1 should be updated. Also, the US patents contain a slash rather than a comma (see for instance 10/174,059) which is confusing and not consistent with accepted patent terminology.
Appropriate correction is required.
Claim Interpretation
Claims 1 to 18 include, as the preparing step, the method that was held to be allowable in 15/705,089 (now 10,422,823). Since this step has been held to patentable over prior art, the instant claims carry the same allowable limitations.
Note that paragraph 26 of the specification provides a clear definition for the term
“long-chain”. This requires the “long-chain fluorinated alkyl” to be directly bonded to the Si atom such that no S atom linkage can be present. This is a key distinction between the claim 19 and the teachings in Cheng et al. (cited in the 16/601,022 application).
Claim Rejections - 35 USC § 112
Claims 1 to 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.
Claim 1 is confusing as it is directed to a process for preparing an article but
does not contain a step by which the article is actually prepared. There is a preparing step for making the compound and a preparing step for making a synthetic blend copolymer but there is no step for making an article. It is unclear if the copolymer per se can be considered “the article”.
Also in claim 1, not all of the R2 groups are polymerizable with a monomer (such as an alkyl group or aryl group) such that it is unclear how the compound of formula I reacts to form the copolymer/article.
In claim 19 the R3 group is not defined.
Claims 2 to 16 are 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. In claim 1, the R2 group does not allow for any substituents. As such all of these claims which embrace optional or required substituent groups are not considered to be further limiting. 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.
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 19 and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 to 15 of U.S. Patent No. 11,702,433.
These claims are directed to an article that is prepared by the same manner as
the claimed article. The only difference is that the R2 group is further elaborated upon but contains many of the same groups as are embraced by the instant R2 groups. As such there is not a patentably distinct difference between these claims.
Claims 1 to 18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 to 15 of U.S. Patent No. 11,702,433.
These claims are directed to a method of making an article. While the claims in
‘433 are directed to an article and not the process, the article in claim 1 of ‘433 is in product by process format and the process is the same as that found in the instant claims. From this the skilled artisan would have found the claimed process to have been obvious over these claims. Compare the limitations of claims 2 to 15 in ‘433 to instant dependent claims 2 to 18.
Conclusion
The instant claims are neither taught nor suggested by the prior art. As noted above, claim 1 contains a process step that has been held to be allowable in US 10,442,823. Claim 19 is distinguished from the Cheng et al. reference at least because of the required presence of the Si—S-alkyl linkage in Cheng et al. that is excluded from the instant claims.
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.
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/MARGARET G MOORE/Primary Examiner, Art Unit 1765