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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-15, 27, and 28; Species IA, claims 1-5, in the reply filed on 26 May 2026 is acknowledged.
Claims 16, 32, and 33 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 26 May 2026. The Examiner makes note that a search was conducted on the elected Species IA, however prior art applicable to instant compound (I) was not found, thus a search was conducted on Species IB (instant compound (II). The species election has been withdrawn.
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.
Claim(s) 1, 6, 10, 11, 15, 27, and 28 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Weng (CN 111171329A), wherein the machine English translation is used for citation, as cited on the IDS.
Regarding claims 1, 6, 10, 11, and 15; Weng teaches an acrylate polymer prepared from ethyl methacrylate, compound (c), and compound (d) [Ex21].
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Regarding claims 27-28; the claims are directed to product-by-process limitations. The examiner notes that even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) ); see MPEP §2113.
Allowable Subject Matter
Claims 2-5, 7-9, and 12-14 are 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.
The compound of formula (I) was not found in a prior art search, nor compounds similar such at modification would have been obvious to one of ordinary skill in the art.
The prior art of record, with respect to claims 7-9 and 12-14, does not teach, with sufficient specificity, a combination of the monomer of formula (II) with a hydroxyalkyl (meth)acrylate monomer, alkoxyalkyl (meth)acrylate monomer, nor a cycloalkyl (meth)acrylate monomer. Such a reconstruction of the claims would be based on impermissible hindsight.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSICA ROSWELL whose telephone number is (571)270-5453. The examiner can normally be reached M-F 8:00 am to 5:00 pm.
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, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JESSICA M ROSWELL/ Primary Examiner, Art Unit 1767
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