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 .
Election/Restriction
Applicant’s affirmation of the election without traverse of Group I, claims 1-12 and 17-19, in the reply filed on 3/20/2026 is acknowledged.
Claims 13-16 remain withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
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 1-4, 6, 8-12, 17 and 19-21 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.
Ex parte Markush sanctions claiming a genus expressed as a group consisting of certain specified materials. See Ex parte Head, 214 USPQ 551 (Bd. App. 1981); In re Gaubert, 524 F.2d 1222, 187 USPQ 664 (CCPA 1975); and In re Harnisch, 631 F.2d 716, 206 USPQ 300 (CCPA 1980). One acceptable form of a Markush group, recites members as being “selected from the group consisting of A, B and C.” See Ex parte Markush, 1925 C.D. 126 (Comm'r Pat. 1925). Claims 1, from which the balance of the claim depend, recites “(b) at least one polyelectrolyte (E) selected from the group consisting of sulfonated aromatic-formaldehyde condensation products, polymers (Ar-S)”. However, the phrase recites what appears to be two members, but does not close the group, or even define the relationship between the members of the group. Is the Markush group just the sulfonated aromatic-formaldehyde condensation products and the polymers (Ar-S)”?
See Ex parte Dotter, 12 USPQ 382 (Bd. App. 1931). See MPEP 2173.05(h)
Further, claim 1 defines a variable “Xp”, but does not contain a structure or formula containing “Xp”. Thus, it is unclear what applicant is trying to claim in the structure.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-4, 6, 8-12, 17 and 19-21 is/are rejected under 35 U.S.C. 102((a)(1)/(a)(2)) as being anticipated by Roller et al. (US 2019/0241712).
In ¶’s 15, 23, 55-60 and 135-139 and 190, Roller et al. teach a composition comprising:
a) a poly(arylene sulfide) (PAS) polymer (P) that is preferably a poly(para-phenylene sulfide) (PPS);
b) at least 28% of a water-soluble additive (the present Compound S) of formula (I):
Ra—Ar—Xb (I)
where X is (SO3−)(M+) or (COO−)(M+), and M+ is a metal cation such as alkaline metals, alkaline-earth metals, aluminum, iron, zinc, palladium and silver; and
c) a water-soluble or dispersible polymer additive for benefit of processing and/or optimizing pore morphology and/or porosity (polyelectrolyte), represented by sulfo-polyesters, which is extractable from the final articles by water (See ¶ 170);
wherein the ratio of the polymer (P) and the additive (the present Compound S) is exemplified at 50/50 and 60/40, with the balance of the composition being the extractable polyelectrolyte (¶ 221).
Thus, the requirements for rejection under 35 U.S.C. 102((a)(1)/(a)(2)) are met.
Response to Arguments
Applicant's arguments filed 3/20/2026 have been fully considered but they are not persuasive.
While applicant argues that Roller et al. only discloses a generic "sulfo-polyester", and does not disclose the polymer (Ar-S) which is a sulfonated aromatic-formaldehyde condensation product comprising units of formula (RAPS), it is unclear how this is being claimed in the present claims (see the 112 rejections above). The sulfo-polyester of Roller et al. at least meet the requirements for one of the members of the Markush group in the claims, i.e., the generic sulfonated aromatic-formaldehyde condensation product.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KELECHI CHIDI EGWIM whose telephone number is (571)272-1099. The examiner can normally be reached M-Th 9-7.
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, Robert Jones can be reached at (571) 270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KELECHI C EGWIM/ Primary Examiner, Art Unit 1762 KCE
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