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 .
Applicant's election with traverse of Group I and the species HexNB, NB-methacrylate, 2,5-NB(CH2-DMMI)2, DCP and EPDM in the reply filed on 6/16/26 is acknowledged. The traversal is on the ground(s) that there is no burden to examine both groups and all species. This is not found persuasive because Group I requires a comonomer and Group II does not. On the other hand, Group II requires a certain catalyst system while Group I does not. The “additives” of Group I’s claim 5 – tackifiers and free radical initiators have nothing in common. Group I’s claim 1 was shown to be clearly unpatentable in the written opinion of the PCT application. The unlimited number of potential amendments mixing and matching species of monomer, comonomer, crosslinker, tackifier and free radical initiator would present a serious burden on the examiner.
The requirement is still deemed proper and is therefore made FINAL.
Claims 14-19 are considered non elected.
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.
Claim 12 and 20 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.
The first listed possibility of claim 12 appears to lack the required crosslinker of claim 5.
Claim 20 calls for mixture of monomers instead of the polymer of claim 1. This claim will be considered nonelected if its dependency is changed to depend from claim 14.
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.
Claims 1-3 rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP2006156821.
The reference exemplifies (paragraph 63) a copolymer of 5-butyl-2-norbornene and norbornene methacrylate. The former is BuNB of applicant’s formula (I) and the latter is NB-methacrylate of applicant’s formula (II).
Polymerization occurs through the unsaturation of the rings (see formula 1 of ref).
Claims 1 and 2 rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mueller 2012/0056183.
Mueller exemplifies (table 5 B54,B55) copolymers of 5-butyl-2-norbornene and dicyclopentadiene. The former is BuNB of applicant’s formula (I). The latter qualifies as applicant’s formula (II) with the R’s forming a C5 unsaturated ring.
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 5-11 and 13 rejected under 35 U.S.C. 103 as being unpatentable over JP2006156821 in view of EP226956.
JP2006156821 applies as explained above.
Peroxides (ie applicant’s “c”) may be included affect crosslinking through the pendant methacrylate group (paragraph 33,34). J’821 does not suggest the inclusion of a multifunctional crosslinker (ie applicant’s “b”).
EP226956 discloses similar polycycloolefins to be crosslinked. EP226956 (page 9 line 15-19) teaches the crosslinking can done with peroxides or peroxides in conjunction with polyfunctional monomers. Such polyfunctional monomers include triallyl isocyanurate (page 8 line 17) or hexanediol dimethacrylate (page 8 line 27) which correspond to applicant’s TAIC and (III).
It would have been obvious to include TAIC or hexanediol dimethacrylate to assist in the intended crosslinking of JP2006156821’s polycycloolefin.
In regards to applicant’s dependent claims:
Note that applicant’s claim 9 does not require the presence of (IV), but merely narrows the possible (IV) in claim 5’s “TAIC, TAC, (IV) or (V)”.
Note that applicant’s claim 10 does not require the presence of tackifier, but merely narrows the possible tackifiers in claim 5’s “tackifier or free radical initiator”.
The peroxide may be dicumyl peroxide (page 10 line 13 of EP’956) – meeting applicant’s claim 11.
Both J’821 (paragraph 58) and EP’956 (abstract) suggest film end uses – meeting applicant’s claim 13.
Claim 4 objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim 4’s copolymers of the four comonomers are not suggested by the art of record.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID J BUTTNER whose telephone number is (571)272-1084. The examiner can normally be reached M-F 9-3pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi 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.
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 about Patent Center 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.
/DAVID J BUTTNER/Primary Examiner, Art Unit 1765 7/8/26
Prosecution Insights