DETAILED ACTION
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior office action.
All outstanding objections and rejections made in the previous Office Action, and not repeated below, are hereby withdrawn.
No new grounds of rejection are set forth below. Thus, the following action is properly made final.
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
Claims 1-8 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 1, which all dependent claims depend upon, the limitation “branched olefin copolymer” has two interpretations because it is unclear what “branched” is modifying. It can be interpreted as 1) a branched olefin (e.g. isobutylene) is a monomer unit in the copolymer or 2) it can be interpreted as an olefin copolymer with branches (e.g. having a main polymerized chain with polymerized side chains as seen in e.g. LDPE). The specification gives no guidance on which interpretation is correct. Thus, the claim limitation is indefinite.
Response to Arguments
Applicant's arguments with respect to the indefinite rejection over claim 1 pertaining to what branched is modifying have been fully considered but they are not persuasive. Note that all other reasons for rejections have been withdrawn in light of applicant’s amendments/arguments.
Specifically, applicant argues that “those skilled in the art would understand that the claim language can refer to either a branched olefin (e.g. isobutylene) that is a monomer unit in the copolymer or an olefin copolymer with branches (e.g. having a main polymerized chain with polymerized side chains as seen in e.g., LDPE), and therefore, Claim 1 is not indefinite.”
In response, the examiner disagrees that the claims aren’t indefinite. The fact that the claim has multiple interpretations, as acknowledged by applicant, is precisely why the claims are indefinite. It is unclear which of the divergent interpretations is intended. If a claim is amenable to two or more plausible constructions, applicant is required to amend the claim to more precisely define the metes and bounds of the claimed invention or the claim is indefinite 35 U.S.C. 112(b). See Ex parte Miyazaki, 89 USPQ2d 1207 (BPAI 2008) and MPEP 2173.05.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARK S KAUCHER whose telephone number is (571)270-7340. The examiner can normally be reached M-F 8-6 PM EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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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/MARK S KAUCHER/Primary Examiner, Art Unit 1764
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