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/Restrictions
Applicant's election with traverse of Group I, claims 1-7, 12, and 13, in the reply filed on 03/26/2026 is acknowledged. The traversal is on the ground(s) that there is not an absence of a special technical feature on the groups that KR10-2019-0095790 to Jeon et al. allegedly discloses the polycarbonate of Chemical Formula 1 of the instant claims. This is not found persuasive because Groups I and II lack unity of invention because even though the inventions of these groups require the technical feature of the polycarbonate of claim 1, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Jeon et al. (KR 10-2019-0095790 A, cited in IDS, made of record on 10/17/2025, US 2020/0148818 A1 is English language equivalent, cited in IDS, and is used for citation). Jeon teaches a copolycarbonate including a first repeating unit represented by the following chemical formula
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[0017], wherein in the chemical formula, R1 to R3 are each independently a substituted or unsubstituted C1-60 alkyl, and [0018] a, b, and c are each independently an integer of 1 to 4 [0019], which reads on a polycarbonate comprising a unit represented by the Chemical Formula 1, in Chemical Formula 1, wherein A is one selected from a substituted or unsubstituted arylene, R11 to R14 are the same as or different from each other, and are each an alkyl, o, p, q, and r are each an integer from 1 to 4, n and m are each an integer that is 0, when o is 2 or greater, R1’s are the same as or different from each other, when p or n is 2 or greater, R12’s are the same as or different from each other, when r is 2 or greater, R14’s are the same as or different from each other, units of Chemical Formula 1 included in the polycarbonate are the same as or different from each other, and * means a site linked to the main chain of the polycarbonate as claimed.
The traversal is also on the ground that given the relationship of the claimed subject matter, the examination of all 13 claims together in a single application does not pose a serious burden in the Patent Office. This is not found persuasive because the instant application is a National Stage Application of a PCT Application, and PCT Rule 13.1 and 13.2 therefore govern restriction practice for the instant application, which does not require that there would need to have been a serious search and examination burden on the Examiner if restriction were not required.
The requirement is still deemed proper and is therefore made FINAL.
Claims 8-11 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 03/26/2026
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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 5 and 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 5 recites the limitation “
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in Chemical Formulae 1-A and 1-B,” “o, p, q and r are each an integer from 1 to 4” in lines 3-6 and 15, which is indefinite because “Chemical Formulae 1-A and 1-B” do not recite “o, p, q and r”. Based on the specification of the instant application (p. 15-16), for further examination of the claims, this limitation is interpreted as limitation “
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in Chemical Formulae 1-A and 1-B”.
Claim 13 recites the limitation “the polycarbonate according to any one of claim 1” in lines 1-2, which is indefinite because it is unclear what is being referenced by “any one of claim 1” since claim 1 is one claim. For further examination of the claims, this limitation is interpreted as “the polycarbonate according to claim 1”.
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 (i.e., changing from AIA to pre-AIA ) 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, 2, 4, 6, 7, 12, and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jeon et al. (KR 10-2019-0095790 A, cited in IDS, made of record on 10/17/2025, US 2020/0148818 A1 is English language equivalent, cited in IDS, and is used for citation).
Regarding claims 1 and 4, Jeon teaches a copolycarbonate including a first repeating unit represented by the following chemical formula
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[0017], wherein in the chemical formula, R1 to R3 are each independently a substituted or unsubstituted C1-60 alkyl, and [0018] a, b, and c are each independently an integer of 1 to 4 [0019], which reads on a polycarbonate comprising a unit represented by the Chemical Formula 1, in Chemical Formula 1, wherein A is one selected from a substituted or unsubstituted arylene, R11 to R14 are the same as or different from each other, and are each an alkyl, o, p, q, and r are each an integer from 1 to 4, n and m are each an integer that is 0, when o is 2 or greater, R1’s are the same as or different from each other, when p or n is 2 or greater, R12’s are the same as or different from each other, when r is 2 or greater, R14’s are the same as or different from each other, units of Chemical Formula 1 included in the polycarbonate are the same as or different from each other, and * means a site linked to the main chain of the polycarbonate as claimed, wherein A is selected from the following structural formula:
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in the structural formula, wherein Z3 to Z4 are the same as each other, and are each a single bond, R19 are the same as or different from each other, and are each hydrogen, or a straight-chained or branched alkyl, w ais an integer from 0 to 4, when w is 2 or higher, R19’s are the same as or different from each other as claimed.
Regarding claim 2, Jeon teaches that the copolycarbonate further includes a second repeating unit represented by the chemical formula [0017]
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[0019], wherein Z is a C1-10 alkylene unsubstituted or substituted with phenyl, a C3-15 cycloalkylene unsubstituted or substituted with a C1-10 alkyl, O, S, SO, SO2, or CO [0020], R4 and R5 are each independently hydrogen or a substituted or unsubstituted C1-69 alkyl, and [0021] d and e are each independently an integer of 1 to 4 [0022], and a terminal capping group represented by the chemical formula [0017]
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[0022], wherein R6 and R7 are each independently hydrogen or a substituted or unsubstituted C1-60 alkyl [0023, m and n are each independently an integer of 1 to 4, and [00024] the asterisk * indicates a bonding pint [0025], that a molar ratio of the first repeating unit and the second repeating unit can be 5:95 to 30:70 [0037], and that the terminal capping group can be included in an amount of 0.0001% by weight to 0.1% by weight with respect to the total amount of the copolycarbonate [0040], which reads on wherein the polycarbonate comprises the unit represented by Chemical Formula 1 in amount of more than 3 wt%, based on a total weight of the polycarbonate as claimed.
Regarding claims 6 and 7, Jeon teaches that the copolycarbonate further includes a second repeating unit represented by the chemical formula [0017]
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[0019], wherein Z is a C1-10 alkylene unsubstituted or substituted with phenyl, a C3-15 cycloalkylene unsubstituted or substituted with a C1-10 alkyl, O, S, SO, SO2, or CO [0020], R4 and R5 are each independently hydrogen or a substituted or unsubstituted C1-60 alkyl, and [0021] d and e are each independently an integer of 1 to 4 [0022], which reads on wherein the polycarbonate further comprises a unit of the Chemical Formula 2, in Chemical Formula 2, wherein X1 and X3 are the same as or different from each other, and are each a substituted arylene, X2 is O, S, SO, SO2, or CO, k1 is 1, provided that when X2 directly bonded to X1 is O, S, SO, SO2, or CO, k1 is 1, l is an integer that is 1, k2 is 1, provided that when X2 directly bonded to X3 is O, S, SO, SO2 or CO, k2 is 1, units of Chemical Formula 2 included in the polycarbonate are the same as or different from each other, and * means a site linked to the main chain of the polycarbonate as claimed, wherein Chemical Formula 2 is represented by one of the Chemical Formula 5, in Chemical Formula 5, Y3 is each O, S, SO, SO2, or CO, R1 to R2 are the same as or different from each other, and are each hydrogen, a substituted or unsubstituted alkyl, g and h are each an integer from 0 to 4, when g and h are each 2 or higher, substituents in the parenthesis are the same as or different from each other, the units of Chemical Formula 5 included in the polycarbonate are the same as or different from each other, and * means a site linked to the main chain of the polycarbonate as claimed.
Regarding claim 12, Jeon teaches that a method of preparing the copolycarbonate includes the step of polymerizing a composition [043], that a solvent usable in the polymerization is not particularly limited, as long as it is a solvent used in the art for the polymerization of a copolycarbonate [0075], that the polymerization is preferably conducted in the presence of an acid binding agent [0076], and that further, to accelerate the polymerization reaction, a reaction accelerator can be further used [0077], which means that the copolycarbonate is in the presence of a solvent and an acid binding agent and/or reaction accelerator, which reads on a composition comprising the polycarbonate according to claim 1. Also, since the only required ingredient of the composition of claim 12 is the polycarbonate according to claim 1, and since Jeon teaches the polycarbonate according to claim 1, Jeon teaches a composition comprising the polycarbonate according to claim 1 as claimed.
Regarding claim 13, Jeon teaches a molded article including the copolycarbonate [0078], which reads on a molded article prepared from a composition comprising the polycarbonate according to any one of claim 1 as claimed.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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 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.
Claims 3 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Jeon et al. (KR 10-2019-0095790 A, cited in IDS, made of record on 10/17/2025, US 2020/0148818 A1 is English language equivalent, cited in IDS, and is used for citation) as applied to claim 1.
Regarding claim 3, Jeon teaches that the copolymer can have a weight average molecular weight of 10,000 g/mol to 100,000 g/mol [0042], which reads on wherein the polycarbonate has a weight average molecular weight of 10,000 g/mol to 100,000 g/mol.
Jeon does not teach with sufficient specificity that the polycarbonate has a weight average molecular weight of 30,000 g/mol to 60,000 g/mol. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to optimize the weight average molecular weight of Jeon’s copolycarbonate to be from 30,000 g/mol to 60,000 g/mol. The proposed modification would read on wherein the polycarbonate has a weight average molecular weight of 30,000 g/mol to 60,000 g/mol as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for optimizing impact resistance and injection moldability of Jeon’s copolycarbonate because Jeon teaches that the copolymer can have a weight average molecular weight of 10,000 g/mol to 100,000 g/mol [0042], that when the copolycarbonate has a weight average molecular weight of less than 10,000 g/mol, there is a problem that impact resistance can be greatly reduced [0042], and that when the copolycarbonate has a weight average molecular weight of more than 100,000 g/mol, injection moldability can be rather deteriorated [0042].
Regarding claim 5, Jeon teaches the polycarbonate of claim 1 as explained above. Jeon teaches that the copolycarbonate includes a first repeating unit represented by the following chemical formula
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[0017], wherein in the chemical formula, R1 to R3 are each independently a substituted or unsubstituted C1-60 alkyl, and [0018] a, b, and c are each independently an integer of optionally 1 [0029], which optionally reads on wherein Chemical Formula 1 is represented by the Chemical Formula 1-A, in Chemical Formula 1-A, R11 to R14 are the same as or different from each other, and are each an alkyl, o, p, q, and r are each an integer from 1 to 4, and n and m are each an integer that is 0 as claimed.
Jeon does not teach a specific embodiment wherein Chemical Formula 1 is represented by the Chemical Formula 1-A or 1-B as claimed. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to select Jeon’s a, b, and c in Jeon’s chemical formula
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to be an integer of 1. The proposed modification would read on wherein Chemical Formula 1 is represented by the Chemical Formula 1-A, in Chemical Formula 1-A, R11 to R14 are the same as or different from each other, and are each an alkyl, o, p, q, and r are each an integer from 1 to 4, and n and m are each an integer that is 0 as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been obvious to try with a reasonable expectation of success because Jeon teaches that the copolycarbonate includes a first repeating unit represented by the following chemical formula
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[0017], wherein in the chemical formula, R1 to R3 are each independently a substituted or unsubstituted C1-60 alkyl, and [0018] a, b, and c are each independently an integer of optionally 1 [0029]. Examples of rationales that may support a conclusion of obviousness include: "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success (MPEP 2143(I)(E)).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-7 and 12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6, and 8 of U.S. Patent No. 11,186,682 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent claims a copolycarbonate comprising a first repeating unit of the following Chemical Formula:
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wherein in the Chemical Formula, R1 to R3 are each independently hydrogen or a substituted or unsubstituted C1-60 alkyl, and a, b, and c are each independently an integer from 1 to 4 (claim 1), which reads on a polycarbonate comprising a unit represented by the Chemical Formula 1, in Chemical Formula 1, wherein A is one selected from a substituted or unsubstituted arylene, R11 to R14 are the same as or different from each other, and are each an alkyl, o, p, q, and r are each an integer from 1 to 4, n and m are each an integer that is 0, when o is 2 or greater, R1’s are the same as or different from each other, when p or n is 2 or greater, R12’s are the same as or different from each other, when r is 2 or greater, R14’s are the same as or different from each other, units of Chemical Formula 1 included in the polycarbonate are the same as or different from each other, and * means a site linked to the main chain of the polycarbonate as claimed.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID KARST whose telephone number is (571)270-7732. The examiner can normally be reached Monday-Friday 8:00 AM-5:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID T KARST/Primary Examiner, Art Unit 1767
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