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 .
Priority
This application is a 371 of PCT/US2022/022815 (filed 03/31/22), which application claims priority to 63/168,427 (filed 03/31/21).
Amendment(s)
The Substitute Specification filed 02/29/24 is entered.
The Preliminary Amendment filed 11/04/25 is entered.
Claims 1-11, 16, 17, 19-29, 32, 33, and 35 are pending.
Election/Restrictions
Applicant’s election without traverse of Group I in the Reply filed 11/04/25 is acknowledged.
Drawings
The Drawings filed 08/15/23 are approved by the examiner.
Information Disclosure Statement
The IDS statement filed 08/15/23 has been considered. An initialed copy accompanies this action.
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 3, 5, 7, 16, and 35 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.
Each of the above recited claims contains a formula wherein moieties (e.g. R1, R2) and/or variables (e.g. n, m) are undefined and therefore indefinite.
Claim Rejections - 35 USC § 102 and/or 103
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.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-4, 7-8, 10, and 35 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ocampo et al (Macromol. Mater. Eng. 2007).
Ocampo et al (Macromol. Mater. Eng. 2007) discloses (Abstract):
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The reference specifies insoluble films comprising poly(EDOT-co-3MT) (i.e. EDOT:3MT) and poly(EDOT-co-IN)(indole) (page 86-87 Results and Discussion), such materials having a conductivity as high as 89.3 S/cm (page 88). The reference specifically meets each of the above instant claims with respect to polymer structure and recited chemical and/or physical properties. With respect to independent claim 35, as addressed in the above 112 rejection, the claim fails to recite any moieties or subscript values (for m), which the examiner construes can read on 0 and H.
The reference is anticipatory.
Claim(s) 1-8, 10, and 35 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ponder et al (Macromolecules 2016).
Ponder et al (Macromolecules 2016) discloses (Abstract):
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The reference specifies insoluble films comprising alkoxy-functionalized PPRODOT-EDOT (page 2107 Experimental Section 2.2-2.2), such materials having a conductivity as high as 100 S/cm (Conclusions). The reference specifically meets each of the above instant claims with respect to polymer structure and recited chemical and/or physical properties. With respect to independent claim 35, as addressed in the above 112 rejection, the claim fails to recite any moieties or subscript values (for m), which the examiner construes can read on 0 and H.
The reference is anticipatory.
Claim(s) 1-8, 10, 11, 16, 17, 19 and 35 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Reynolds et al (Optimized Electroactive Polymer Supercapacitors 2015).
Reynolds et al (Optimized Electroactive Polymer Supercapacitors 2015) discloses (Abstract):
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The films comprise PPRODOT-Me-MeOH monomer (Fig 5):
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And copolymer(s) of the formula (Fig 9):
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Each of which specifically meets each of the above instant claims with respect to polymer structure. With respect to independent claim 35, as addressed in the above 112 rejection, the claim fails to recite any moieties or subscript values (for m), which the examiner construes can read on 0 and H.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties, i.e. (insolubility and conductivity) would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
The reference is anticipatory.
Allowable Subject Matter
Claim 9 is allowed. The prior art of record does not suggest the instantly claimed polymer structure having alternating ROH groups and alkyl groups on subsequent PPROdot heterocycles.
Conclusion
In view of the foregoing, the above claims have failed to patentably distinguish over the applied art.
The remaining references listed on forms 892 and 1449 have been reviewed by the examiner and are considered to be cumulative to or less material than the prior art references relied upon in the rejection above.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARK T KOPEC whose telephone number is (571)272-1319. The examiner can normally be reached Monday-Friday 9:00a-5:00p EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones can be reached at 5712707733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARK KOPEC/Primary Examiner, Art Unit 1762
MK
January 17, 2026