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 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.
Claim 10 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 10 recites the limitation “a styrene maleic anhydride,” (see line 3). The scope of this limitation is indefinite as the phrase appears to be incomplete. The scope of the claim is therefore unclear, as this limitation could be interpreted to recite a mixture of the compounds styrene and maleic anhydride, or a (co)polymer of the two.
Claims 2 and 22 are 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.
Regarding claim 2: Claim 2 depends from claim 1, and states that the adamantly group is a monoadamantyl group, diamantyl group, or a polyamantyl group. Note that the phrase “polyamantyl group” reads on structures containing any number of adamantyl ring structures greater than 1 (e.g., trimers, tetramers, hexamers, etc.). Given that claim 2 reads on structures containing one adamantyl ring (see the phrase “monoadamantyl group”) and structures containing any number of adamantyl rings greater than 1 (see the phrase “polyadamantyl group”), there is no structure that would fall within the scope of independent claim 1 that would not also fall within the scope of claim 2. Claim 2 therefore fails to further limit the scope of the parent claim.
Regarding claim 22: Claim 22 depends from claim 1, and recites a process of making the polymer of the parent claim. Note that claim 22 recites the use of “aniline and/or its derivative”; this phrase reads on the use of any aniline derivative. The claimed process therefore reads on the production of a polymer wherein the aniline-derived repeating unit can have any substituents/functionality. In contrast, the copolymer of claim 1 is restricted to structures that would be obtained by using either aniline or an aniline derivative wherein a C1 to C3 alkyl group is present at one or both of positions 2 and 6 of the aniline ring. Claim 22 therefore impermissibly broadens the scope of the parent claim to read on the production of polymers wherein variables R1 to R4 can be groups other than hydrogen or a C1 to C3 alkyl group.
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 1, 3-9, and 11-21 are allowed.
The following is a statement of reasons for the indication of allowable subject matter: The closest prior art of record is Niu et al, published in Journal of Applied Polymer Science vol 139.
Niu discloses the production of the compound bis(4-maleimidophenyl) adamantane, having the structure shown below (abstract; Figure 1).
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Note that the claimed polymer of Formula (1) differs from this compound because of the limitation that n is an integer of 2-50, whereas the structure shown above would correspond to n= 1. Niu therefore does not teach the production of a polymer having multiple repeating units of the structure shown below wherein X is an adamantyl group as required by the instant claims.
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Furthermore, note that the prior art compound is made by reacting the adamantane-based compound 1-adamantol with the aniline-based compound acetanilide, followed by reaction with maleic anhydride. The resulting compound BMA is then modified via reaction with 4,4’-dimethylenedianiline (DMA); this results in reaction between the DMA and the unsaturated bond(s) in the maleimide groups of the compound BMA. No reference has been found that would provide a motivation to modify the teachings of Niu to perform the reaction between the adamantane-based compound and the aniline-based compound under conditions that would form a polymer comprising 2 to 50 repeating units having the structure shown above. The prior art therefore does not teach nor does it fairly suggest the production of a polymer having the claimed structure.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Thompson et al, US3832332, discloses the production of polyamides comprising an adamantyl structure within the polymer’s main chain. Dahl et al, US2002/0177743, and Dahl et al, US2005/0159634, both disclose the production of polymerizable higher diamondoid derivatives. The cited references do not teach the production of a polymer having the structure recited in the instant claims.
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/JEFFREY S LENIHAN/Primary Examiner, Art Unit 1765
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