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 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.
Claim 3, and the claims dependent therefrom, 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.
Addressing an issue that Applicant had apparently deemed a possible source of indefiniteness, but which had not been formally deemed as problematic in the previous Office communication, Applicant has, when incorporating the subject matter of original claim 1 into claim 3, added an additional statement that is supposed to help define the variable “n” as a degree of polymerization. However, the Examiner views this subject matter as being in conflict with the formula where “n” is attached as a subscript because, as one of ordinary skill would appreciate, “n” in the context of the formula indicates that there are between 0 and 5,000 of the triad structures, each one of which, by definition, contains three repeat units. Hence, whereas the subject matter of the final two lines of claim 3 stipulate that there are 0 to 5,000 repeat units in the resin, the formula reflects instead that there are 0 to 15,000 repeat units.
It has also now occurred to the Examiner that, where “n” is indeed to equal zero, than the structure of the resin is indefinite because there is no other structural description besides the makeup of the triads, which would be completely absent when “n” equals zero.
Response to Amendment
Predicated on the Examiner’s indication of allowable subject matter in claim 10, the limitations disclosed therein have been introduced into claim 3. The following is the given reason for concluding the subject matter of claim 10 to be allowable:
“The workup that follows benzocyclobutene modification of polybutadiene summarized in [0156- 0158] includes all of the same operations as in claim 10 except for the acid wash and column chromatography. Whereas the former would be conceived of immediately by one of ordinary skill to neutralize residual triethylamine, it was not clear from the prior art why one of ordinary skill would have been motivated to utilize column chromatography in place of one or more steps of the process defined by WO '980. (U.S. '765 discloses a workup that resembles even less that which is claimed but it does contemplate passing the reaction mixture through a column of neutral alumina but this teaching doesn't explain why a practitioner of the WO '980 invention would have utilized this purification step in lieu of one or more of those already taught.)”
However, paragraph [0156] contemplates, “extracting the concentrate (reaction mixture after solvent removal} with silica gel.” What the Examiner failed to consider is that there are a limited number of ways that the former may be purified with the latter including (i) stirring the product mixture with a slurry of the silica gel or (ii) passing it through a bed, or column, of silica gel. Hence, while Chang does indeed not expressly teach column chromatography, it is now recognized that one of ordinary skill would have envisaged this manipulation of the product mixture as an obvious permutation of the teaching “extracted by silica gel”. The Examiner sincerely regrets that Applicant was not afforded the opportunity to consider this position in initial stage of prosecution.
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.
Claims 3-9 and 12-15 are rejected under 35 U.S.C. 103 as being unpatentable over Chang et al., WO 2023/216980.
Chang is relevant for all of the reasons detailed in the March 19, 2026 Office communication. To reiterate, it is acknowledged that the reference neither teaches the acid wash nor subjecting the product mixture to column chromatography but, as the Examiner articulated above, this step would be regarded as obvious to one of ordinary skill upon seeing that [0156] discloses extraction of the product mixture with silica gel. Also, the Examiner previously held that an acid wash for the removal of residual triethylamine by way of neutralization is, likewise, familiar to the skilled artisan. Indeed, post-reaction neutralization of systems that utilize acids/bases either to promote a reaction, or possibly to scavenge acidic/basic by-products is documented ubiquitously in the literature.
As for claim 15, reaction temperatures within the claimed range are disclosed in [0120].
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARC S ZIMMER whose telephone number is (571)272-1096. The examiner can normally be reached M-F 8:30-5:00.
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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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June 30, 2026
/MARC S ZIMMER/Primary Patent Examiner, Art Unit 1765
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