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 the species “contains an imine bond” in the reply filed on 8/11/26 is acknowledged.
The species has been incorporated into the independent claim.
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.
Claim 7 is 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.
Claim 7 recites a Markush group “any one selected from” without proper Markush language. Proper Markush language would be “any one selected from the group consisting of”. Without the proper phrasing it is not clear that the group is closed.
Claim Rejections - 35 USC § 102
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.
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) 1-3 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by “Synthesis of Sub-10 nm Two-Dimensional Covalent Organic Thin Film with Sharp Molecular Sieving Nanofiltration” by Gadwal et al as evidenced by US 20180346336 by Bao et al.
Gadwal describes a covalent organic thin film prepared via reaction of a triamine and dialdehyde.
Regarding claims 1 and 2, Gadwal describes a network polymer (p.12296 Scheme 1) formed from two monomers, hexa-alkylated truxene-based triamine and terepthalaldehyde (p.12295 col 2 final paragraph; p.12296 Scheme 1) which are capable of having been recovered from a recyclable conjugated polymer containing an imine bond.
The term “formed from a monomer recovered from a recyclable conjugated polymer [which]…includes an imine bond” is product-by-process language. “[E]ven 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.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). The claim is to a network polymer, not a method of making or starting materials (“recyclable conjugated polymer”; “monomer”) for the method of making. Since either of Gadwal’s monomers – Tru(NH2)3 and TPA- are capable of being recovered from a recyclable conjugated polymer containing an imine bond, they meet the claim.
See US 20180346336 by Bao et al for evidence that amine and aldehyde monomers are recoverable from a conjugated polyimine. Bao paragraph 441 Scheme 1 demonstrates aldehyde/imine reaction to polymer and degradation back to monomers is described in paragraph 451.
Since aldehyde and amine monomers are recoverable from a polymer containing imine bonds, Gadwal’s aldehyde and imine monomers meet the product-by-process language of the claims.
Regarding claim 3, the recyclable polymer is part of the product-by-process language of independent claim 1. Claim 3, like claim 1, is to the network polymer, not the recyclable conjugated polymer. Since Gadwal describes a network polymer and the monomers from which the network polymer are made are capable of having been recovered from a recyclable conjugated polymer according to Formula 1, Gadwal meets the claim. Note for example that the claim describes a recyclable conjugated polymer that “includes” the described repeating unit; the recyclable conjugated polymer can contain other moieties.
Claims 1-3, 6-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by “Synthesis, Hole Mobility, and Photovoltaic Properties of Cross-Linked Polythiophenes with Vinylene-Terthiophene-Vinylene as Conjugated Bridge” by Zhou et al as evidenced by US 20180346336 by Bao et al.
Zhou describes a class of crosslinked polythiophenes.
Regarding claim 1, Zhou describes a network polymer (see p.1832 Scheme 1 final structure) which is formed from a monomer that is capable of having been recovered from a recyclable conjugated polymer containing an imine bond. See the dialdehyde in Scheme 1 upper right.
The term “formed from a monomer recovered from a recyclable conjugated polymer [which]…includes an imine bond” is product-by-process language. “[E]ven 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.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). The claim is to a network polymer, not a method of making or starting materials (“recyclable conjugated polymer”; “monomer”) for the method of making. Since Zhou’s dialdehyde monomer is capable of being recovered from a recyclable conjugated polymer containing an imine bond, they meet the claim.
See US 20180346336 by Bao et al for evidence that amine and aldehyde monomers are recoverable from a conjugated polyimine. Bao paragraph 441 Scheme 1 demonstrates aldehyde/imine reaction to polymer and degradation back to monomers is described in paragraph 451.
Since aldehyde and amine monomers are recoverable from a polymer containing imine bonds, Zhou’s dialdehyde monomer meets the “recovered from…” aspect of the claim.
Regarding claim 2, Zhou describes a dialdehyde (p.1832 Scheme 1 upper right).
Regarding claim 3, the recyclable polymer is part of the product-by-process language of independent claim 1. Claim 3, like claim 1, is to the network polymer, not the recyclable conjugated polymer. Since Zhou describes a network polymer and the monomers from which the network polymer are made are capable of having been recovered from a recyclable conjugated polymer according to Formula 1, Zhou meets the claim. Note for example that the claim describes a recyclable conjugated polymer that “includes” the described repeating unit; the recyclable conjugated polymer can contain other moieties from which the monomer derives.
Regarding claims 6-8, Zhou describes the active layer of a bulk heterojunction solar cell as containing the network polymer (p.1832 Fig.1).
Claim(s) 1-8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by “Chemically Recyclable Conjugated Polymer and One-Shot Preparation of Thermally Stable and Efficient Bulk-Heterojunction from Recycled Monomer” by Jin et al.
This reference was published less than a year before applicant’s priority date of 9/5/23. As such, it may qualify for an exception under First Inventor to File guidelines, 35 USC 102(b)(1)(A). However, applicant must attest to this exception – that the subject matter disclosed in the reference was obtained from the inventive entity- since the reference has authors other than the instant inventors.
Jin describes a recycled conjugated polymer.
Regarding claim 1, Jin describes a network polymer (p.3 Fig.1 item PY-TIPO) which is formed from a monomer (Fig.1 item Y5-TA) recovered from a recyclable conjugated polymer containing imine bonds (Fig.1 item PY-TIP).
Regarding claim 2, Jin describes a dialdehyde (p.3 Fig.1 item Y5-TA).
Regarding claim 3, Jin describes a recyclable conjugated polymer with the repeating unit of formula 1 (p.3 Fig.1 item PY-TIP).
Regarding claim 4, Jin describes the monomer claimed (p.3 Fig.1 item Y5-TA).
Regarding claim 5, Jin describes a network polymer with the claimed structure (p.3 Fig.1 item PY-TIPO).
Regarding claims 6-8 Jin describes creating solar cells using the network polymer as an active layer in a bulk heterojunction cell (p.8 col 1 paragraph 1, p.10 col 1 paragraph 2).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTINA W ROSEBACH whose telephone number is (571)270-7154. The examiner can normally be reached 8am-3:30pm.
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/CHRISTINA H.W. ROSEBACH/Examiner, Art Unit 1766
