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 .
FORMALITIES
Applicant’s election without traverse of claims 1-7,20 and 21 in the reply filed on 3/31/26 is acknowledged.
Translations of applicant’s priority documents are not present.
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 7-9 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.
Each of the claims’ “R1 is as defined above” is indefinite as previous claims have different definitions of R1.
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.
Claims 1-12,14-17,20 and 21 rejected under 35 U.S.C. 102(a)(2) as being anticipated by Mori WO2022/163684.
Mori (paragraph 100) exemplifies producing a polycarbonate from example 1’s compound, bisphenoxyethanol fluorene and diphenylcarbonate. Example 1’s compound is an isophthalaldehyde trimethylol ethane diacetal. Such a compound has Mori’s (1a) structure (paragraph 30) which corresponds to applicant’s claim 7’s structure.
In regards to applicant’s dependent claims:
The polycarbonate (paragraph 106) may alternatively be that of Mori’s compound of example 3 which is a terephthalaldehyde trimethylol ethane diacetal. Such a compound has Mori’s (1b) structure (paragraph 36) which corresponds to applicant’s claim 8’s structure.
The polycarbonate (paragraph 108) may alternatively be that of Mori’s compound of example 5 which is an orthophthalaldehyde trimethylol ethane diacetal. Such a compound has Mori’s (1c) structure (paragraph 42) which corresponds to applicant’s claim 9’s structure.
The bisphenoxyethanol fluorene (BPEF) corresponds to applicant’s (3) comonomer of claim 10.
The Mw of the cited example is 34,640 (paragraph 100) – meeting applicant’s claim 14.
The refractive index of the cited example is 1.6919 (paragraph 100) – meeting applicant’s claim 15.
The Abbe number of the cited example is 25.6 (paragraph 100) – meeting applicant’s claim 16.
The Tg of the cited example is 1480C (table 1) – meeting applicant’s claim 17.
The polycarbonate is useful as lenses and films (paragraph 116) – meeting applicant’s claims 20 and 21.
Applicant cannot rely upon the certified copy of the foreign priority application to overcome this rejection because a translation of said application has not been made of record in accordance with 37 CFR 1.55. When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216.
Claims 1,3-6,8 and 14 rejected under 35 U.S.C. 102(a)(1) as being anticipated by the Huang article in BioMacromolecules.
Huang (scheme 2) produces a PEG-PAU-PEG block polymer. The PAU segment is made from TPABTME which is applicant’s (1b) structure of claim 8 with R1 being methyl.
In regards to applicant’s dependent claims:
The Mn (table 2) for these block polymers is ~15,000 to 29,000 with a Mw/Mn of 1.2-1.7. Therefore, the Mw is easily within applicant’s range of claim 14.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim 13 rejected under 35 U.S.C. 103 as being unpatentable over Mori WO2022/163684.
Mori applies as explained above.
The cited example lacks the comonomers of applicant’s claim.
However, Mori (paragraph 62) also suggests these same comonomers as possible comonomers for the diacetal monomer.
It would have been obvious to form copolycarbonates from Mori’s diacetal monomer and any of paragraph 62’s comonomers.
Claims 1,3-6 and 8 rejected under 35 U.S.C. 103 as being unpatentable over Dunlop 3708502.
Dunlop claims (#1) a terephthaldehyde acetal which corresponds to applicant’s (1b) structure of claim 8 when Dunlop’s “R” is methyl or ethyl and n=m=n’=m’= 1.
Dunlop (col 3 line 46-49) teaches this terephthaldehyde acetal can be polymerized with diacids to form a linear polymer. This renders obvious applicant’s “resin”.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID J BUTTNER whose telephone number is (571)272-1084. The examiner can normally be reached M-F 9-3pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Kelley can be reached at 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID J BUTTNER/Primary Examiner, Art Unit 1765 4/15/26
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