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 .
Claim Rejections – 35 U.S.C. § 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.
Claims 1-6 and 10 are rejected under 35 U.S.C. § 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Independent claim 1 recites an additive that has a structure according to a chemical formula. The claim further recites that the formula includes “a cyclic compound A”, and “the cyclic compounds A are connected to each other”. The chemical formula includes an oval in which is written the letter “A”.
The limitations drawn to the illustrated chemical formula and “a cyclic compound A” describe the compound A in the singular, whereas the limitation “the cyclic compounds A are connected to each other” describes compounds A in the plural. Because of this disagreement in number, the claim does not set forth with reasonable clarity whether it requires an additive that includes a singular compound A as illustrated or else if it requires a plurality of compounds A that are connected to each other.
Claims 2-6 and 10 are dependent upon claim 1, and they are indefinite for the same reason.
Independent claim 1 recites a chemical formula which includes pendant groups B and D. The claim subsequently recites definitions of the groups B and D, and the definition includes the following: “wherein a case in which all of B and D are C2 to C10 alkyl acrylate, or C2 to C10 alkyl methacrylate is excluded, wherein p is an integer of 0 or 1 to 10, and each of n and m independently is an integer of 1 to 100.”
This portion of the claim begins with the identification of a subset of the structures according to the chemical formula (a “case” of certain groups B and D), but this portion of the claim does not continue to provide any further limitation of the additive that occurs in such a case. The remainder of the claim begins with “wherein” (“wherein p is…”) and thus does not set forth with reasonable clarity whether or not the subsequent language is a limitation of the additive that occurs in such a “case”.
Alternatively, if the remainder of the claim (“wherein p is…”) is interpreted to be a limitation of the additive that occurs in such a “case”, then the subscripts n, p, and m are not defined for structures outside of such a “case”. In this interpretation, the claim does not set forth the scope of the subscripts n, p, and m with reasonable clarity.
Claims 2-6 and 10 are dependent upon claim 1, and they are indefinite for the same reason.
Claim Rejections – 35 U.S.C. § 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.
Claim 7-9 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by Macromolecules, 2018, 52(1), 81-87 (herein “Teo”).
Teo is cited in an official communication made on Feb. 17, 2025 in the corresponding European patent application no. 21925908.2
Teo describes a polymer (see Scheme 3 and Table 2 on p. 84) comprising a norbornene moiety, corresponding to the presently recited “core”; a backbone formed by the ring opening metathesis polymerization of the norbornene moieties; and side chains comprising units of monomers such as tert-butyl acrylate (e.g. see entry 1 in Table 2), corresponding to the presently recited “shell”.
Because Teo’s polymer has the same constituent monomers and architecture as the presently disclosed materials (c.f. Spec. p. 5, ¶ [0023]), there is a reasonable basis to conclude that Teo’s polymer has a “bottle brush” structure and that the side chain of Teo’s polymer is epoxyphilic for the same reasons that the present polymers have a “bottle brush” structure and the side chains of the present polymers are epoxyphilic. For the same reason, there is a reasonable basis to conclude that Teo’s polymer is capable of being used as an additive for an epoxy adhesive, as is presently recited in the preamble of claim 7.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RICHARD A. HUHN whose telephone number is (571)270-7345. The examiner can normally be reached Monday through Friday, 9 AM to 6 PM EST.
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, Arrie (Lanee) Reuther can be reached at (571) 270-7026. 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.
/RICHARD A. HUHN/Primary Examiner, Art Unit 1764