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 of Group IV, presently claims 35, 37, and 42, in the reply filed on Jun. 16, 2026 is acknowledged. Because Applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 1-8, 15, 20, 23-25, 27, and 34 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on Jun. 16, 2026.
Priority
The claim of benefit of provisional application 63/162,713 is acknowledged. The disclosure of the prior-filed provisional application 63/162,713 does not include the presently recited genus of silyl-protected compounds comprising (meth)acrylate, styrene, or acetate monomer or of the presently recited chemical Formula A.
The effective filing date of the present claims is Mar. 16, 2022.
Claim Rejections – 35 U.S.C. § 112(b)
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.
Claims 35, 37, and 42 are rejected under 35 U.S.C. § 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Independent claim 35 recites a method that includes a step of “reacting … a silyl-protected compound comprising (meth)acrylate, styrene, or acetate monomer … with a fluoride ion to yield a … polymer”.
The cited step of the claim thus appears to indicate that it is the reaction of a monomer with a fluoride ion that yields a polymer.
In light of the specification (e.g. Spec. p. 21, ¶ [00063]) and well-known procedures in the art (for instance, see Ranu below), one of ordinary skill in the art would have understood that the reaction of a silyl-protected moiety with a fluoride ion would cause deprotection the moiety by reaction of the fluoride with the silicon atom. One of ordinary skill in the art would not have had an understanding that the fluoride ion would cause polymerization, as is indicated by the term “yield” which is recited in the claim.
It is therefore concluded that the claim omits the essential step of performing a polymerization in order to yield a polymer. The claim therefore fails to comply with 35 U.S.C. § 112 because it does not claim subject matter that the inventor or a joint inventor regards as his or her invention. See MPEP § 2172.01.
Claims 37 and 42 are dependent upon independent claim 35, and they fail to comply with 35 U.S.C. § 112 for the same reason.
Further as to claim 35: Independent claim 35 recites a method that includes a step of “reacting … a silyl-protected compound comprising (meth)acrylate, styrene, or acetate monomer … with a fluoride ion to yield a … polymer having dihydroxyphenyl groups”.
In light of the specification (e.g. Spec. p. 21, ¶ [00063]) and well-known procedures in the art (for instance, see Ranu below), one of ordinary skill in the art would have understood that the reaction of a silyl-protected moiety with a fluoride ion would cause deprotection the moiety by reaction of the fluoride with the silicon atom. One of ordinary skill in the art would not have had an understanding that the fluoride ion would cause polymerization, as is indicated by the term “yield” in the claim.
The claim does not set forth with reasonable clarity whether the “reacting” step occurs before, during, or after the polymerization that yields the polymer.
Claims 37 and 42 are dependent upon independent claim 35, and they are indefinite for the same reason.
Applicant is reminded that amendments to the claims must be supported by the original written description for compliance with 35 U.S.C. § 112(a).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RICHARD A. HUHN whose telephone number is (571)270-7345. The examiner can normally be reached Monday through Friday, 9 AM to 6 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie (Lanee) Reuther can be reached at (571) 270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RICHARD A. HUHN/Primary Examiner, Art Unit 1764
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