DETAILED ACTION
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 .
Status of Application
Claims 1-20 are pending and presented for examination.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-20 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Specification
The disclosure is objected to because of the following informalities: formulas (II)-(V) are too blurry to read.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
1. Claims 1-20 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 1 newly recites that compound (d) can be a cross-linkable compound. The original disclosure fails to support this newly added limitation. The original disclosure only recites that the compound (d) is a cross-linking compound which is comparable to a crosslinker and includes two functional groups to act as a crosslinker. Whereas a crosslinkable compound would be a compound that has a functional group that can react with a crosslinker to form a crosslinked compound. The original disclosure does not support the inclusion of a compound (d) in the amount as claimed which is cross-linkable. Therefore, claim 1 fails to comply with the written description requirement. Claims 2-19 depend from claim 1 and fail to comply with the written description requirement for the same reasons.
Similarly, claim 20 recites that compound (d) can be a cross-linkable compound. Therefore, claim 20 also fails to comply with the written description requirement.
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.
2. Claims 5, 6 and 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.
Claims 5 and 6 recite the limitation "second compound (d)". There is insufficient antecedent basis for this limitation in the claim. For examination purposes, “second compound (d)” has been interpreted as “compound (d)”.
Claim 20 initially recites (d) being a cross-linking compound or compound and then later recites “the cross-linking compound or cross-linkable compound”. It is unclear if the reference to cross-linkable compound is intended to refer to the earlier recited “compound” or a different type of compound. Therefore, claim 20 is indefinite. For examination purposes, “the cross-linking compound or cross-linkable compound” has been interpreted as “the cross-linking compound or compound comprising a first and a second polymerizable olefinic unsaturation”.
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.
3. Claim 6 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 6 depends from claim 1 and recites that the compound (d) can be present in a range of 0.01 to 3 wt%. However, this is actually outside of the range of parent claim 1 which requires (d) to be present in a range of 0.1 to 8 wt%. Therefore, claim 6 broadens the range to include values not in the parent claim. Therefore, claim 6 fails to correctly further limit the subject matter of the claim upon which it depends. 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.
Pertinent Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Suau (U.S. PGPUB No. 2011/0319561) teaches a copolymer prepared in the absence of methacrylic acid and including the monomers ethyl acrylate, acrylic acid, 2-acrylamido-2-methylpropane sulfonic acid and a crosslinking monomer (0053-0058 and Table 1).
Conclusion
Claims 1-20 are pending.
Claims 1-20 are rejected.
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.
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/ROBERT S WALTERS JR/
May 28, 2026Primary Examiner, Art Unit 1717
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