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 .
DETAILED ACTION
CLAIM OBJECTION
The recited “claim 1 as a as” in line 2 of claim 9 is objected and deletion of a second “as’ is suggested.
EXAMINER’S COMMENT
Regarding the recited “configured to” of claims 14 and 15, the instant specification teaches that weak thioester linkages of copolymers would make the resulating copolymers useful for degradation in lines 27-30 of page 8. Thus, no objection is made.
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 1-5 and 7-20 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.
The recited “optionally in the form of a cycle, aromatic or not” in a third line from bottom of claim 1 would be indefinite since a nature of the “or not” is unclear.
The recited “selected in the group consisting of” in lines 2-3 of claim 3 would be an improper format and it should be “selected from the group consisting of” as recited in claim 2.
The recited “a thionolactone of formula I” in line 1 of claim 7, line 2 of claim 9 and lines 1-2 of claim 20 should be “the thionolactone of formula I” for a proper antecedent basis.
The recited “polymer supported thionation agent and in situ thionation agent, P2S5” of claim 8 should be the “polymer supported thionation agent and in situ thionation agent and P2S5” for a proper Markush format.
The recited “the repeating unit of formula III” in lines 1 of claim 10 would lack an antecedent basis and it should be “a repeating unit of formula III”. Claim 10 reciting a copolymer comprising the repeating unit of formula III would be an independent claim and thus definitions for variables recited for the thionolactone of formula I would be improper.
Claim 13 recites “a thionolactone of formula I” in lines 2-3 of claim 13, but failed to recite a structure for the thionolactone of formula I.
Claim 13 recites a thionolactone of formula I and at least one other comonomer as defined in claim 11 which would be indefinite since a copolymer of claim 11 comprises the repeating unit of formula III as recited in claim 10 and thus the comonomer recited for the copolymer of claim 11 comprising the repeating unit of formula III would be improper. Further recitation of comonomers recited in claim 11 in lieu of the at least one other comonomer as defined in claim 11 is suggested since the claim 13 would be an independent claim. The same reasoning would be applied to claim 20.
With respect to “obtainable” of claims 18 and 19, see Atlantic Thermoplastics Co. Inc. v Faytex Corp. 23 USPQ 2nd 1481 (footnote 6 on page 1486), Ex parte Tanksley 26 USPQ 2nd 1389, and Purdue Research v Watson 1959 CD 124 (Dist. Ct.) affirmed by CCPA 120 USPQ 521. It is unclear what is encompassed by “obtainable”. One does not exactly and precisely know what a given polymer is particularly considering the lack of recitation of a myriad of parameters which affect the polymer identity. MPEP 2133.03 (C). Thus, the examiner suggests “obtained” instead.
Other claims depend from the indefinite claim would be also indefinite.
Claim Rejections - 35 USC § 102
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.
Claims 18 and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Machine translated 2004148672 A (May 27, 2004).
Note that an invention in a product-by-process is a product, not a process. See In re Brown, 459 F2d 531, 173 USPQ 685 (CCPA 1972) and In re Thorpe, 777 F2d 695, 697, 227 USPQ 964 (Fed. Cir. 1985). MPEP 2113.
Although a nature of the claimed oligomer is not clear since a copolymer of claim 10 recites the repeating unit of Formula III and at least another repeating unit which is not defined, the instant example 3 teaches PDMA (poly(-,N-dimethylacrylamide) as the oligomer after degradation of the copolymer.
Machine translated JP teaches oligomeric N,N-dimethylacrylamide in [0028] of page 6 and the oligomeric N,N-dimethylacrylamide would fall within scope of the instant claims.
Thus, the instant invention lacks novelty.
Claims 18 and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Li et al. (Synthesis of Poly(N,N-dimethylacrylamide) via Nitroxide-mediated Radical Polymerization, Macromolecules, vol. 31, no. 12, 16 June 1998, pages 3852-3955) with a teaching reference of Machine translated 2004148672 A (May 27, 2004)..
Note that an invention in a product-by-process is a product, not a process. See In re Brown, 459 F2d 531, 173 USPQ 685 (CCPA 1972) and In re Thorpe, 777 F2d 695, 697, 227 USPQ 964 (Fed. Cir. 1985). MPEP 2113.
Li et al. teach Poly(N,N-dimethylacrylamide) having a number average molecular weight of 6540 in table 1.
Machine translated JP teaches that oligomers have a number average molecular weight of 1,000 to 20,000 or 2,000 to 9.000 in [0027].
Thus, the Poly(N,N-dimethylacrylamide) having a number average molecular weight of 6540 taught by Li et al. would meet the recited oligomer of claims 18 and 19.
CLAIM OBJECTION
Claim 6 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Examiner’s Comment
Bingham et al. (Thioester-Functional Polyacrylamdies: Rapid Selective Backbone Degradation Triggers Solubility Switch Based on Aqueous Lower Critical Solution Temperature/Upper Critical Solution Temperature, ACS Appl. Polym. Mater. 2020, 2, 3440-3449) are considered a closest prior art. Bingham et al. teach a degradable acrylamide copolymer in abstract, but fail to teach or suggest at least the recited X moiety of Formula III for a copolymer of the instant claim 10. Further, Bingham et al. teach a monomer comprising a 7-member lactone ring as opposed to the instant Formula I of claim 1 having 6-member lactone ring.
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/TAE H YOON/ Primary Examiner, Art Unit 1762
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