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 .
Claims 1-15 are pending in the instant application.
Election/Restrictions
Applicant’s election without traverse of Group I, directed to claims 1-12, in the reply filed 20 March 2026 is acknowledged.
Claims 13-15 are withdrawn from further consideration pursuant to 37 CRF 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 3/20/2026.
Priority
This application is a Continuation Application of U.S. Patent Application No. 16/599,260, filed 11 October 2019, now Patent No. 11,724,246.
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. 16/599,260, filed on 11 October 2019.
Information Disclosure Statement
The Information Disclosure Statements (IDS) filed on 21 June 2023 and 8 April 2025 have been reviewed and considered by the examiner.
Claim Objections
Claims 1-2 are objected to because of the following informalities:
In line 11 of claim 1, the limitation “80°C.,” should be corrected to “80°C,”.
In line 2 of claim 2, the limitation “from -30°C. to 80°C.” should be corrected to “from -30°C to 80°C.”
Appropriate correction is required.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
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Claims 1-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 11,724,246. Although the claims at issue are not identical, they are not patentably distinct from each other because the two distinguishing limitations of the instant application, that the reaction temperature in step (iv) of the method is between -30C and 80C (versus 80C in Patent No. 11,724,246), and that the reaction in step (iv) of the method is carried out for 4 or less hours (versus less than 2 hours in Patent No. 11,724,246), are rendered obvious by the claims of US Patent No. 11,724,246.
Claim 1 is rendered obvious by U.S. Patent No. 11,724,246 claim 1. Claim 1 of U.S. Patent No. 11,724,246 teaches every limitation of claim 1 of the instant application except for that the reaction in step (iv) is carried out for a reaction time of 4 hours or less. The instantly claimed reaction time range (0-4 h) overlaps the range of reaction times recited in claim 1 of U.S. Patent No. 11,724,246, which is ≤2 hours. It would have been obvious to one of ordinary skill in the art at the time invention was made to have selected the overlapping portion of the range disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness. In re Malagari, 182 USPQ.
Claim 2 is rendered obvious by U.S. Patent No. 11,724,246 claim 1.
Claim 1 of U.S. Patent No. 11,724,246 teaches every limitation of claim 2 of the instant application except for the specific range of reaction times (instantly claimed 0-4 h vs. 0-2 h; discussed with regard to claim 1), and further that in step (iv) of the method, that the reaction is carried out at a temperature equal to or less than 80°C. The instantly claimed temperature range is encompassed by the temperature range of claim 1 of U.S. Patent No. 11,724,246, which is ≤80°C (i.e. -273°C to 80°C). With respect to the encompassing and overlapping ranges, the subject matter as a whole would have been obvious to one of ordinary skill in the art at the time of invention to select the portion of the U.S. Patent No. 11,724,246’s range which is within the range of the instant claim because it has been held prima facie case of obviousness to select a value in a known range by optimization for the results. In re Aller, 105 USPQ 233. Additionally, the subject matter as a whole would have been obvious to one of ordinary skill in the art at the time invention was made to have selected the overlapping portion of the range disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness. In re Malagari, 182 USPQ.
Claims 3 and 8 of the instant application are rendered obvious by claim 1 of U.S. Patent No. 11,724,246 as discussed with regard to claim 1, and because claim 1 of U.S. Patent No. 11,724,246 discloses the same solvent conditions and inclusion of a Lewis catalyst in step (iv).
Claim 4 of the instant application is rendered obvious by claim 3 of U.S. Patent No. 11,724,246 as discussed with regard to claim 1 and because the claim discloses the same solvents instantly claimed.
Claim 5 of the instant application is rendered obvious by claim 4 of U.S. Patent No. 11,724,246 as discussed with regard to claim 1, and because the claim discloses that the reaction in (iv) is carried out under inert atmosphere.
Claim 6 of the instant application is rendered obvious by claim 5 of U.S. Patent No. 11,724,246 as discussed with regard to claim 1 and because the claim discloses that during the reaction in (iv) an inert gas is streamed through the mixture.
Claim 7 of the instant application is rendered obvious by claim 6 of U.S. Patent No. 11,724,246 as discussed with regard to claim 1, and because the claim discloses that in (iv) the at least one magnetic core (M) is embedded into the matrix.
Claim 9 of the instant application is rendered obvious by claim 7 of U.S. Patent No. 11,724,246 as discussed with regard to claim 1, and because the claim discloses that the reaction in (iv) may be carried out in the presence of FeCl3, ZnCl2, AlCl3, BF3, SbCl5, SnCl4, TiCl4, SiCl4, and mixtures of two or more thereof.
Claim 10 of the instant application is rendered obvious by claim 8 of U.S. Patent No. 11,724,246 as discussed with regard to claim 1 and because the claim further discloses the method comprises the additional step (v) functionalizing the surface of the polymer particle according to step (iv).
Claim 11 of the instant application is rendered obvious by claim 9 of U.S. Patent No. 11,724,246 as discussed with regard to claim 1 and because the claim further discloses that in step (iii) the polymerization is a suspension polymerization.
Claim 12 of the instant application is rendered obvious by claim 1 of U.S. Patent No. 11,724,246. Claim 1 of U.S. Patent. No. 11,724,246 teaches all of the limitations of claim 12 in the instant application except that the reaction in (iv) is carried out for a reaction time of 3 hours or less. The instantly claimed reaction time range (0-3 h) overlaps the range of reaction times recited in claim 1 of U.S. Patent No. 11,724,246, which is ≤2 hours. It would have been obvious to one of ordinary skill in the art at the time invention was made to have selected the overlapping portion of the range disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness. In re Malagari, 182 USPQ.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Azizov et al. (U.S. Patent No. 9,011,695) which discloses a method of producing a magnetic particle comprising magnetite embedded into a porous polymer matrix via ion deposition into a modified industrial rubber.
Tolmacheva et al. (J. Analy. Chem., 2015, 70 (11), pp. 1313-1321) which discloses a magnetic adsorbent made via the post-synthesis adsorption of Fe3O4 nanoparticles into a hypercrosslinked polystyrene matrix.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MORDECAI M LEAVITT whose telephone number is (571)272-6637. The examiner can normally be reached Monday-Friday 8AM-5PM.
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/MORDECAI M LEAVITT/Examiner, Art Unit 1742 /CHRISTINA A JOHNSON/Supervisory Patent Examiner, Art Unit 1742
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