DETAILED ACTION
This Office Action is responsive to the amendment filed on 9/23/2026.
The objections and rejections not addressed below are deemed withdrawn.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office Action.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Claim Objections
Claim 18 is objected to because of the following informalities: Delete the letter “c” at the end of line 1; see the phrase “claim 17, c” . Appropriate correction is required.
Claim Rejections - 35 USC § 112
Claims 11-20 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.
Regarding claim 11: Claim 11 recites a polymer having a structure represented by the formula below.
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Applicant’s specification teaches that the claimed copolymer is made via a process comprising the steps of 1) polymerizing a monomer mixture comprising acrylamide, diacetone acrylamide, and 2-(perfluorohexyl)ethyl methacrylate to form an intermediate polymer, followed by 2) crosslinking the intermediate polymer made in step (1) by reacting it with adipic dihydrazide (see specification ¶00015-00017, 00043, 00047, 00049, 00051, 00053, 00055, 00057, 00059); however, an ordinary artisan will recognize that the process recited in the instant specification would not result in the polymer structure recited in claim 11.
One of ordinary skill in the art will recognize that 2-(perfluorohexyl)ethyl methacrylate refers to a compound having the structure shown below.
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Note that the perfluorinated portion of the structure comprises 6 carbon atoms and can be represented as -(CF2)5CF3. The claimed polymer structure, however, does not contain any unit that would correspond to polymerized 2-(perfluorohexyl)ethyl methacrylate. Rather, the third repeating unit in the claimed formula has a structure comprising the group -(CF2)4CF3; this corresponds to the structure that would be obtained by polymerizing 2-(perfluoropentyl)ethyl methacrylate, not 2-(perfluorohexyl)ethyl methacrylate as taught in the specification.
Furthermore, the disclosed process does not include any additional steps that would be expected to result in a conversion between polymerized (perfluoropentyl)ethyl methacrylate units to (perfluorohexyl)ethyl methacrylate units or vice/versa, as the reaction with adipic dihydrazide would crosslink the polymer chains through the diacetone acrylamide units, as depicted in the second repeating unit of the claimed formula.
A claim, although clear on its face, may also be indefinite when a conflict or inconsistency between the claimed subject matter and the specification disclosure renders the scope of the claim uncertain as inconsistency with the specification disclosure or prior art teachings may make an otherwise definite claim take on an unreasonable degree of uncertainty. In re Moore, 439 F.2d 1232, 1235-36, 169 USPQ 236, 239 (CCPA 1971); In re Cohn, 438 F.2d 989, 169 USPQ 95 (CCPA 1971); In re Hammack, 427 F.2d 1378, 166 USPQ 204 (CCPA 1970). As discussed above, the claimed formula depicts a polymer comprising polymerized 2-(perfluoropentyl)ethyl methacrylate, while the disclosure teaches that the claimed polymer is made using 2-(perfluorohexyl)ethyl methacrylate as a monomer. In view of this inconsistency, it is unclear whether the claimed polymer is required to comprise 2-(perfluoropentyl)ethyl methacrylate, as depicted in the claimed formula, or 2-(perfluorohexyl)ethyl methacrylate, as taught in the specification.
Claims 12-20 depend from claim 11 and do not correct this deficiency. The claims are therefore indefinite per the same rationale as claim 11.
Regarding claim 12: Claimed step (i) recites the use of 2-(perfluorohexyl)ethyl methacrylate in the production of the claimed polymer. Similar to the discussion above with respect to claim 1, the claim is indefinite as it is unclear whether the claimed use of 2-(perfluorohexyl)ethyl methacrylate in step (i) is in error or if the structure’s depiction of polymerized 2-(perfluoropentyl)ethyl methacrylate is the error.
Response to Arguments
Applicant's arguments filed 9/23/2026 have been fully considered but they are not persuasive with respect to the rejection of claim 11 under 35 U.S.C. 112(b).
Applicant states that claim 11 has been amended to recite a polymer comprising polymerized 2-(perfluorohexyl)ethyl methacrylate units as taught in the specification, arguing that the claimed invention is no longer indefinite in view of the specification.
In response, claim 11 as currently written does not recite the structure applicant describes in the submitted arguments. The amended claim 11 contains two structures which are reproduced below.
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Note that the first structure, which has not been marked for deletion, depicts a polymer comprising 2-(perfluoropentyl)ethyl methacrylate units, not 2-(perfluorohexyl)ethyl methacrylate units as argued by applicant. In contrast, the second structure appears to comprise 2-(perfluorohexyl)ethyl methacrylate, though there is some blurring that makes some of the subscripts difficult to read (what appears to be a 5 for the group –(CF2)5CF3 for instance could possibly be confused for a 6). Note, however, that this second structure has been struck through for deletion. As currently written, claim 11 therefore recites a polymer structure that conflicts with the teachings of the instant specification. Claim 11 and its dependent claims are therefore indefinite per the rationale outlined earlier in this Action.
Allowable Subject Matter
Claims 11-20 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter: The following references are relevant to the patentability of the claimed invention.
Tan et al, CN113321824, discloses the production of a copolymer having the structure shown below.
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The prior art copolymer is made via a process comprising the steps of copolymerizing acrylamide and diacetone acrylamide, followed by crosslinking the polymer via reaction of the diacetone acrylamide units with adipic hydrazide (page 2: lines 13-27). Note that the structure shown above does not contain the fluorine-containing methacrylate ester required by the claimed formula (I).
Tan et al, CN114230714, discloses the production of a crosslinked polymer having the structure shown below.
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The prior art polymer is made by copolymerizing acrylamide, diacetone acrylamide, and cetyldimethylallyl ammonium chloride, followed by crosslinking the polymer by reacting the diacetone acrylamide units with adipic hydrazide (page 2: lines 23-37). Note that the prior art copolymer 1) contains cetyldimethylallyl ammonium chloride units that are not present in the recited formula (I) and 2) does not contain the fluorine-containing methacrylate ester required by the claimed formula (I). Tan therefore does not teach the production of a copolymer having a structure corresponding to claimed formula (I).
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 JEFFREY S LENIHAN whose telephone number is (571)270-5452. The examiner can normally be reached Mon.-Fri. 5:30-2:00PM.
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/JEFFREY S LENIHAN/Primary Examiner, Art Unit 1765
