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 .
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.
Claims 77-91 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.
Claim 77 includes Formula 6 which includes variable ‘n’. Claim 77 does not define the variable, therefore claim 77 and all dependent claims are indefinite.
Claim 77 recites “the monomer units”. There is improper antecedent basis for this term.
Claims 82, 84-85 depends from claim 1 which is cancelled, therefore, claims 82, 84-85 are indefinite. Claims 86-89 depend from claim 85, which depends from cancelled claims. Therefore, these claims are indefinite.
Claim 83 recites “the monomer units”. There is improper antecedent basis for this term.
Claim 87 recites “a substrate” however claim 87 depends from claim 85 which also recites “a substrate”. This creates an antecedent basis issue where it is unclear whether the two substrates are the same or not.
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.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 77-83 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,555,107. Although the claims at issue are not identical, they are not patentably distinct from each other because US ‘107 claims polymers including Formula 2:
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and species such as
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. Formula 2 of US ‘107 is identical to instant claimed Formula 6 except for the presence of M2 at the right end of the polymer. However, M2 of US ‘107 includes a C1 alkyl group, which is the identity of the right end of the polymer of instant claimed Formula 6. This is further evidenced by the species
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which meets the instant claimed Formula 6. Note, the species in US ‘107 claim 14 are identical to the species present in the instant claims.
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) 77-80 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kobayashi, Polym. Chem. 2013, 4, 1193-1198.
Kobayashi teaches polymers formed from the ring opening of an amine functionalized cyclooctene
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(pg. 1194) giving a polymer having a Mn of 25,7000 (25.7 kg/mol) and a Mw/Mn of 1.94 (pg. 1195). Each monomeric unit has a molecular weight of about 268, giving about 96 repeat groups. Kobayashi teaches polymers were hydrogenated and the amino groups were deprotected to give pendent -CH2-NH-Et groups (pg. 1194, Scheme 1). Kobayashi also teaches terpolymers
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where F includes -CH2-NH-Et groups (pg. 1194, Scheme 1). This meets the claimed Formula 6 when M is an alkyl, X1-X4 are H, Y1-Y6 are each H, a linear alkyl, or -CH2-NH-Et, -CR1R2-NR3R4 is -CH2-NH-Et, no double bonds are present, and q and r are 0. Kobayashi also teaches polymers having the -NH2 group (Table 4).
Claim(s) 77-79, 86 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jacquet (US 4,217,914).
Jacquet teaches di-tertiary diamines of the formula
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(col. 3, ln. 35-46) and provides examples where A1 is
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and R is CH3 and R’ is C8H17 (Table I).
This has the structure
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. This falls in the scope of claimed Formula 2 when n is 2, r and q are 0 and X1, X2, Y1, Y2, Y3, Y4, Y5, Y6, X3 and X4 are H, Y3 is -CH2-N(Me)(C8H17) and M1 is a methyl group. Jacquet teaches using the polymers by applying them to hair or skin (col. 14, ln. 6-15) which corresponds to coating (applying) to a substrate (hair or skin). To the extent that claim 86 recites an alternative embodiment, Jacquet meets claim 86.
Claim(s) 77-81, 85-86, 88-91 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nozaki (US 2012/0116036).
Nozaki teaches an ethylene/N-allylaniline copolymer (¶ 189-190) having the structure
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with an initiation end of
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and a terminal end of
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(Fig. 15). This meets claimed formula 6 when X1-X4 are H, Y1-Y6 are H or -CH2-NH-Ph, and M is an alkyl group.
Nozaki teaches using the copolymer as an adhesive agent or as a film (¶ 98) which necessarily is a coating on a substrate. To the extent that claims 88-89 recite further limitations on alternative embodiments, Nozaki meets the claims.
Allowable Subject Matter
No prior art rejections are presented over claims 82-83.
Claim 82 recites polymer species having a phenyl end group. Kobayashi, Jacquet, and Nozaki do not teach a polymer having a phenyl end group or any of the structures of claim 82.
Claim 83 recites an oligomer of formula XI
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. This oligomer contains a cyclic group that is the result of ring opening a norbornene structure. Kobayashi, Jacquet, and Nozaki do not teach the structure of formula XI and Kobayashi, Jacquet, and Nozaki do not teach using a norbornene in a ring opening polymerization.
Claim 87 recites the substrate is PTFE, glass or metal. Kobayashi, Jacquet, and Nozaki do not teach adhering the polymer to a PTFE, glass or metal substrate.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT C BOYLE whose telephone number is (571)270-7347. The examiner can normally be reached Monday-Thursday, 10am-4pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie (Lanee) Reuther can be reached at (571)270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT C BOYLE/Primary Examiner, Art Unit 1764