DETAILED ACTION
Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office Action.
The new grounds of rejection set forth below for claims 1-8 and 10 are necessitated by Applicant’s amendment filed on May 15, 2026. In particular, independent claim 1 has been amended to contain a different limitation regarding a compound A and to contain different limitations regarding moieties B and D. Therefore, claim 1 and claims 2-8 and 10 which ultimately depend on amended claim 1 are now different in scope from what they were at the time of the preceding Office action. For this reason, the present action is properly made final.
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 1-8 and 10 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 according to a chemical formula. The chemical formula includes a circle in which is written the letter “A”. The claim further recites that the formula includes “a cyclic compound A”, and “the cyclic compound A is connected via ROMP”.
The claim does not set forth what the cyclic compound A is connected to. This causes the limitations drawn to compound A to be subject to multiple interpretations.
A first interpretation is that the recited connection may refer to internal connections within the compound A (that is, bonds that form a portion of the compound A).
A second interpretation is that the claim may intend to refer to multiple instances of the recited chemical formula which have been bonded together via their respective A moieties.
A third interpretation is that the claim refers to a future intended use of the recited additive (that is, the moiety A is connected to an unrecited chemical in the future in the course of or as a result of the additive’s use).
The claim does not set forth with reasonable clarity the scope of the recited additive, its chemical formula, or the manner in which the recited compound A is “connected”. Claims 2-8 and 10 are ultimately dependent upon independent claim 1, and they are indefinite for the same reason.
Independent claim 1 recites a chemical formula which includes pendant moieties B and D.
The claim further recites a definition of moieties B and D which includes “C2 to C10 alkyl acrylate” and “C2 to C10 alkyl methacrylate”, among others.
The claim further recites provisos that “B and D are both not a C2 to C10 alkyl acrylate” and that “B and D are both not a C2 to C10 alkyl methacrylate”.
The instances of the phrase “both not” indicate that each of the moieties B and D is neither a C2 to C10 alkyl acrylate nor a C2 to C10 alkyl methacrylate.
Because the claim thus recites a definition of moieties B and D that includes such (meth)acrylates, and the claim also recites that moieties B and D are not such (meth)acrylates, the claim does not set forth with reasonable clarity whether or not moieties B and D are permitted to be a C2 to C10 alkyl acrylate nor a C2 to C10 alkyl methacrylate. Claims 2-8 and 10 are ultimately dependent upon independent claim 1, and they are indefinite for the same reason.
Applicant may consider the possibility of reciting the phrase “not both” rather than “both not”, the former of which would permit that one of moieties B and D may be the recited (meth)acrylates as long as the other is not.
Response to Arguments
Applicant’s arguments filed May 15, 2026 (herein “Remarks”) have been fully considered and they are persuasive in part.
The rejection under 35 U.S.C. § 112(b) that was set forth in the preceding Office action has been withdrawn in light of the amendment of claim 1. In light of the amendment of claim 1, a new ground of rejection under 35 U.S.C. § 112(b) has been set forth above.
The rejection of claims 7-9 under 35 U.S.C. § 102 has been withdrawn in light of the amendment of claim 7.
Conclusion
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 extension fee 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.
This action is a final rejection and is intended to close the prosecution of this application. Applicant's reply under 37 CFR § 1.113 to this action is limited either to an appeal to the Patent Trial and Appeal Board or to an amendment complying with the requirements set forth below.
If applicant should desire to appeal any rejection made by the examiner, a Notice of Appeal must be filed within the period for reply identifying the rejected claim or claims appealed. The Notice of Appeal must be accompanied by the required appeal fee.
If applicant should desire to file an amendment, entry of a proposed amendment after final rejection cannot be made as a matter of right unless it merely cancels claims or complies with a formal requirement made earlier. Amendments touching the merits of the application which otherwise might not be proper may be admitted upon a showing of good and sufficient reasons why they are necessary and why they were not presented earlier.
A reply under 37 CFR § 1.113 to a final rejection must include the appeal from, or cancellation of, each rejected claim. The filing of an amendment after final rejection, whether or not it is entered, does not stop the running of the statutory period for reply to the final rejection unless the examiner holds the claims to be in condition for allowance. Accordingly, if a Notice of Appeal has not been filed properly within the period for reply, or any extension of this period obtained under either 37 CFR 1.136(a) or (b), the application will become abandoned.
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
Prosecution Insights