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 .
DETAILED ACTION
Election/Restrictions
Applicant's election with traverse of Group 1, claims 1-13, in the reply filed on 01/16/2026 is acknowledged. The traversal is on the ground that the cited reference does not teach the common technical feature as recited in the amended claim 1. This is not found persuasive because, as set forth in the following rejection part in this office action, the cited reference teaches the common technical features as presently claimed. Therefore, the restriction requirement is still deemed proper and is therefore made FINAL. Accordingly, claims 14-22 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Claims 1-13 are currently under examination on the merits.
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.
Claims 1-13 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 pre-AIA the applicant regards as the invention.
Claim 1 is rejected as being vague and indefinite when these claims recite "reaction material of gasoline, C8 fraction, C9 fraction or coal tar light fraction.” Because “gasoline, C8 fraction, C9 fraction or coal tar light fraction’ each is a mixture having many organic compounds (gasoline may have up to 150 compounds), it is not clear which chemical compound is the reaction material as claimed. In addition, the definition of C8 fraction and C9 fraction as claimed are not clear. In this office action, it is taken that C8 fraction is an organic compound having 8 carbon atoms and C9 fraction is an organic compound having 9 carbon atoms. Claim 2-13 are also rejected for depending from claim 1, thus inclusion of its indefinite technical features.
Claims 2, 5, 9 and 11-12 are rejected as being vague and indefinite when these claims recite “or…% by weight” and "preferably…” to further limit a range or a species, which render more than one range in the same claim. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) is considered indefinite, since the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). Note the explanation given by the Board of Patent Appeals and Interferences in Ex parte Wu, 10 USPQ2d 2031, 2033 (Bd. Pat. App. & Inter. 1989), as to where broad language is followed by "such as" and then narrow language. The Board stated that this can render a claim indefinite by raising a question or doubt as to whether the feature introduced by such language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Note also, for example, the decisions of Ex parte Steigewald, 131 USPQ 74 (Bd. App. 1961); Ex parte Hall, 83 USPQ 38 (Bd. App. 1948); and Ex parte Hasche, 86 USPQ 481 (Bd. App. 1949). In this office action, the narrower ranges or limitations are not considered.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 1-4, 6-10 and 12-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lundquist (US 2007/0077837, ‘837 hereafter).
Regarding claims 1-4, 6-10 and 12-13, ‘837 discloses a binder composition reading upon adhesive, comprising a copolymer A derived from a copolymer B having anhydride group by reacting with ammonia ([0072], Scheme 1), to render the copolymer having at least one repeating unit carrying an amide group and a carboxyl and/or its ammonium salt and at least one other repeating unit being styrene reading upon reaction material of C8 fraction satisfying present claims 3-4 and 10 ([0074], Example 1, or reading upon reaction material of gasoline as in [0075], Example 2, isobutylene is a C4 compound in gasoline ); wherein the amount of repeating unit having an amide group and a carboxyl and/or its ammonium salt can be around 50 wt% falling within instantly claimed range of present claim 2 (Example 1, both maleic anhydride and styrene have molecular weight around 100). ‘837 also discloses that the composition is an aqueous composition having copolymer being 33.3 wt% and does not contain an organic crosslinking agent, satisfying present claims 12-13 (Examples 1 and 2).
Allowable Subject Matter
Claims 5 and 11 would be allowable if rewritten to overcome 112 rejections as set forth above and including all of the limitations of the base claim and any intervening claims. The reason for the allowance is that the prior art of record does not specifically disclose, teach or fairly suggest an adhesive as recited in the present claim 1, wherein the copolymer A further comprises an additional repeating unit derived from at least one monomer having at least two non-conjugated carbon-carbon unsaturated double bonds.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RUIYUN ZHANG whose telephone number is (571)270-7934. The examiner can normally be reached on 8:00-5:00 PM.
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/RUIYUN ZHANG/Primary Examiner, Art Unit 1782
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