Detailed Office Action
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Objection
2. Objection is made to claim 9 in view of the use of the language “comprising: wherein …”, because the language is awkward and not of proper grammatical form.
Claim Rejections - 35 USC § 112
3. The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
4. Claims 14-16 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The examiner has reviewed WO 2022/174895 A1, this document having been published from PCT/EP2021/053905, which is the application from which the instant application is a national stage entry (35 USC 371), and has not found support for new claims 14-16. As drafted, claim 14 is drawn to the copolymerization of the 1,3-dioxolane copolymers with alkyl substituted 1,3-dioxolane; however, this has not been disclosed by applicants within the originally filed application. This subject matter is distinctly different from original claim 6.
5. 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.
6. Claims 9-16 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.
Firstly, with respect to claims 9, 11, and 14, it is unclear how to precisely interpret the multiple uses of the language, “in each case”.
Secondly, with respect to claims 9 and 14, applicants have failed to adequately define the x1, x2, y1, and y2 variables. As drafted, it is unclear if x1+x2 and y1+y2 mandates the presence and/or specifies the number of each segment governed by the single variable. Furthermore, the variable y1+y2 is defined by referencing itself; such a definition precludes conclusively calculating the value of each variable, without additional information, which has not been claimed.
With respect to claim 13, the language, “the graphical evaluation”, lacks antecedence.
Allowable Subject Matter
7. Claims 9-13 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
8. Claim 9-13 are allowable over the prior art of record, the most relevant of which is the non-patent literature reference to Goulart et al. While the reference discloses copolymers of 1,3-dioxolane and 4-methyl-1,3-dioxolane, there is insufficient disclosure establishing the that terminal groups of the disclosed polymers encompass hydroxyl groups, as instantly claimed.
Conclusion
9. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Rabon A Sergent whose telephone number is (571)272-1079. The examiner can normally be reached on Monday through Friday from 9:00 AM until 5:00 PM, ET.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Riviere Kelley, can be reached at telephone number 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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/RABON A SERGENT/ Primary Examiner, Art Unit 1765