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 .
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: in Figure 4B and 4C, the number reference number “120” is not described. Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
The drawings are objected to because in Figures 1 and 5, not all ammonium groups are limited with cation “+” and not all sulfonate groups are limited with anion “-”. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1-18 are rejected under 35 U.S.C. 112(a) because the specification, while being enabling for R1, R2, and R4 which are organic sulfonates or phosphates, does not reasonably provide enablement for all R1, R2, and/or R4. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with these claims.
Case law holds that applicant’s specification must be “commensurately enabling [regarding the scope of the claims].” See Ex Parte Kung, 17 USPQ2d 1545, 1547 (Bd. Pat. Appl. Inter. 1989). Otherwise undue experimentation would be involved in determining how to practice and use applicant’s invention. The test for undue experimentation as to whether or not all compounds within the scope of claims 1-18 can be used as claimed and whether claims 1-18 meet the test is stated in Ex parte Forman, 230 USPQ 546, 547 (Bd. Pat. Appl. Inter. 1986) and In re Wands, 8 USPQ2d 1400 (Fed. Cir. 1988). Upon applying this test to claims 1-18, it is believed that undue experimentation would be required because:
(a) The quantity of experimentation necessary is great since claims 1-18 read on any type of R1, R2, and/or R4 such as inorganic acid.
(b) There is no direction or guidance presented for making a photo-hydrogel comprising any type of R1, R2, and/or R4.
(c) There is an absence of working examples concerning making 1-18 comprising any type of acid.
In light of the above factors, it is seen that undue experimentation would be necessary to make and use the invention of claims 1-18.
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.
Claims 1-20 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
With respect to claim 1, “R2” and “R4” are not defined and it is unclear what they represent. Also “z” is not defined and it is unclear whether it is greater than 0. Lastly, there is an inherent inconsistency of x = 100 and x = y < 16 because “x” cannot be 0 and also < 16.
With respect to claim 19, there is an inherent inconsistency of x = 100 and x = y < 16 because “x” cannot be 0 and also < 16.
With respect to claims 2-18 and 20, they are rejected for failing to cure the deficiency of the claim from which they depend.
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.
Claims 2-5, 11, and 12 are rejected under 35 U.S.C. 112(d) 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. R1 and R3 are limited in claim 1 to have a negative and positive net charge, respectively, however R1 and R3 in claims 2-5, 11, and 12 do not include a negative or positive charge, respectively. 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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: US 12,466,836, US 2021/0338905, US 2016/0158754, and US 2008/0311495.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VICKEY NERANGIS whose telephone number is (571)272-2701. The examiner can normally be reached 8:30 am - 5:00 pm EST, Monday - Friday.
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, Joseph Del Sole can be reached at (571)272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Vickey Nerangis/
Primary Examiner, Art Unit 1763
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