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 .
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
Claims 12-15 and 19 are objected to because of the following informalities:
In claim 12, line 12: Insert a space between the words “dihydrazide” and “at”.
In claim 13, line 3: Replace the plural verb “become” with the singular form “becomes” to agree with its subject (i.e., “the gelatinous product”).
In claim 14, line 5: Insert a space between the word “for” and 0.05.
In claim 15, line 5: Insert a space between the words “the” and “aqueous” and between the words “dihydrazide” and “at”.
In claim 19, line 7: Insert a space between the words “the” and “acylhydrazone”.
In claim 19, line 9: Insert a space between the words “of” and “azodiisobutyronitrile”.
Appropriate correction is required.
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.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
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.
PNG
media_image1.png
408
583
media_image1.png
Greyscale
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.
PNG
media_image2.png
122
450
media_image2.png
Greyscale
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 convert polymerized (perfluoropentyl)ethyl methacrylate units to (perfluorohexyl)ethyl methacrylate units, 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 is 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.
Additionally, step (i) recites a solid content of 12 to 17% but does not specify the basis for calculating this percentage (i.e., by weight, by volume, etc.), rendering the claimed indefinite.
Regarding claim 13: Claim 13 recites the limitation of immersing the product in “a large amount of acetone”. Note that the phrase “large amount” is subjective terminology that is not defined in the specification. It is therefore unclear what volume of acetone must be used to fall within the scope of the instant claim.
Regarding claim 15: Claim 15 recites the limitation that the concentration of acetic acid is 30 to 40 wt%. As written, it is unclear whether the recited concentration is intended to refer to the concentration of acetic acid in the reaction mixture, or it is intended to require that a solution of 30 to 40 wt% acetic acid is used to regulate the pH.
Regarding claim 16: Claim 16 recites the limitation that the weight average molecular weight of the polymer is in the range of 11000 to 17000. The claim is indefinite because it does not recite the units for the molecular weight (e.g., g/mol, kg/mol, etc.).
Regarding claim 18: Claim 18 states “[T]he amphiphobic reversal agent according to claim 17, comprising the following steps”. The invention of claim 17 is a product defined in product-by-process language, not a process. It is unclear how a product may comprise a series of steps. For the purposes of examination on the merits, claim 18 has been interpreted as being intended to state that the reacting step in line 2 of claim 17 comprises the recited steps.
Regarding claim 20: Claim 20 recites the limitation “the formation core surface” in line 2. There is insufficient antecedent basis for this limitation in the claim. It is unclear what this term is intended to refer to.
Claim 15 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 15 depends from claim 12, and states that step (ii) meets one or more recited conditions. Note that condition (e) says that the solution is stood at room temperature for 20 to 28 hours; in contrast, parent claim 12 states that the standing at room temperature is for 18 to 24 hours. The parent claim therefore states that the maximum amount of time for standing at room temperature in step (ii) is 24 hours. Claim 15 therefore impermissibly broadens the scope of the parent claim to include processes wherein this step is performed at times longer than 24 hours up to 28 hours.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Allowable Subject Matter
Claims 11-14 and 16-20 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.
PNG
media_image3.png
366
430
media_image3.png
Greyscale
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.
PNG
media_image4.png
314
613
media_image4.png
Greyscale
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
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.
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, Heidi Riviere 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JEFFREY S LENIHAN/Primary Examiner, Art Unit 1765
Prosecution Insights