DETAILED ACTION
Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office Action.
The new grounds of rejection set forth below for claims 1-5 are necessitated by Applicant’s amendment filed on Sep. 17, 2026. In particular, independent claim 1 has been amended to recite that subscript k is 1 and that subscript p is 3. Therefore, claim 1 and claims 2-5 which ultimately depend on amended claim 1 are now different in scope from what they were at the time of the preceding Office action. For this reason, the present action is properly made final.
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 U.S.C. § 102
Claims 1-2 are rejected under 35 U.S.C. §§ 102(a)(1) and 102(a)(2) as being anticipated by WO 2017/038619 A1 (herein “Tsutsumi”). US 2018/0258279 A1 is referred to herein as an equivalent English publication of Tsutsumi.
Tsutsumi describes a process of making a composition (see Example 6 in Table 1 and ¶¶ [0161]-[0163]) comprising contacting a cyclic olefin polymer which is a copolymer of p-hydroxystyrene and methyl methacrylate (see ¶ [0167]), a silane coupling agent which is γ-glycidoxypropyl trimethoxysilane (see ¶ [0178]), and the solvent diethylene glycol ethyl methyl ether
One of ordinary skill in the art would have reasonably expected the silane coupling agent to react with the hydroxystyrene units of the polymer, thereby producing a resin according to the presently recited Formula (I); a hydroxystyrene unit includes a (singular) aromatic group, corresponding to the presently recited subscript k being 1; and the three methoxy groups of the trimethoxysilane moiety of the coupling agent correspond to the presently recited subscript p being 3.
Claim Rejections – 35 U.S.C. § 103
Claim 3 is rejected under 35 U.S.C. § 103 as being unpatentable over Tsutsumi.
The discussion set forth above regarding Tsutsumi with respect to base claim 1 is incorporated here by reference. As set forth above, Tsutsumi describes a process according to base claim 1. Tsutsumi does not disclose the temperature at which the components of the composition are contacted.
Because Tsutsumi does not disclose any particular modification of the temperature of the composition such as a cooling or heating step, one of ordinary skill in the art would have been motivated by ordinary creativity to make the cited composition at ordinary laboratory temperatures, such as 20-25 °C. It would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to have made Tsutsumi’s compositions at ordinary laboratory temperatures such as 20-25 °C.
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 1-5 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of U.S. Patent No. 11,820,843 B2. Although the claims at issue are not identical, they are not patentably distinct from each other.
Claim 1 of US ‘843 claims a process comprising contacting a phenol modified resin with a silane coupling agent to produce a resin, each of which is according to the presently recited chemical formulas. The corresponding chemical formulas in claim 1 of US ‘843 include subscript k which may be 0 or 1; and subscript p which is 3. The two options for subscript k (0 or 1) are sufficiently few in number as to read on the present subscript k (1) in an anticipatory manner. Claim 1 of US ‘843 thus reads on present claim 1 in an anticipatory manner. The further limitations of present claims 2-5 are adequately set forth in claims 2-5 of US ‘843.
Response to Arguments
Applicant’s arguments filed Sep. 17, 2026 (herein “Remarks”) have been fully considered and they are persuasive in part.
The rejection under 35 U.S.C. § 112(b) that was set forth in the preceding Office action has been withdrawn in light of the amendment of claim 1 to recite that k is 1.
Regarding the rejection of claims 1-2 under 35 U.S.C. § 102 over Tsutsumi: Applicant argues (p. 2 of Remarks) that Tsutsumi does not produce all of the moieties recited in formula (I) “such as linker X”. Applicant argues that an example in the present specification (Example 1.9, Scheme 9) describes a process that “beings with a phenol (or phenoxy) resin that is already functionalized”.
Applicant’s argument is unpersuasive because it does not explain why Tsutsumi’s reaction would not produce such a linker moiety. As set forth in the rejection, Tsutsumi’s process includes contacting a polymer including units of p-hydroxystyrene and a silane coupling agent which is γ-glycidoxypropyl trimethoxysilane (see ¶ [0178]), and one of ordinary skill in the art would have reasonably expected the silane coupling agent to react with the hydroxystyrene units of the polymer. Such a reaction among the coupling agent and a phenol moiety is the same as the reaction that is illustrated in the argued Scheme 9 of the present application, and it produces a product including the argued linker moiety X which includes oxygen groups.
The argument regarding an “already functionalized” resin is unpersuasive because does not explain which limitation of the present claims is not satisfied by Tsutsumi.
The rejection over Tsutsumi has been recast above to reflect the current scope of the claims, but it is otherwise the same as that set forth previously.
Regarding the double patenting rejection over U.S. Patent No. 11,820,843 B2: Applicant argues (p. 4 of Remarks) that claim 1 has been amended to require that subscript k be 1. This argument is unpersuasive because US ‘843 recites a corresponding formula in which subscript k is 0 or 1, and these values for k are sufficiently few in number as to read on the present subscript k (1) in an anticipatory manner.
Applicant further argues that certain moieties must be present in the end product of formula (I). This argument is unpersuasive because it does not identify which moieties of the presently recited formula are alleged to not be present in the product of US ‘843.
Applicant further argues (top of p. 5 of Remarks) that claim 1 of US ‘843 requires a catalyst. This argument is unpersuasive because it does not explain why the present claims would exclude such a catalyst or would otherwise be patentably distinct from the process claimed in US ‘843.
The double patenting rejection has been recast above to reflect the current scope of the claims, but it is otherwise the same as that set forth previously.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR § 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
This action is a final rejection and is intended to close the prosecution of this application. Applicant's reply under 37 CFR § 1.113 to this action is limited either to an appeal to the Patent Trial and Appeal Board or to an amendment complying with the requirements set forth below.
If applicant should desire to appeal any rejection made by the examiner, a Notice of Appeal must be filed within the period for reply identifying the rejected claim or claims appealed. The Notice of Appeal must be accompanied by the required appeal fee.
If applicant should desire to file an amendment, entry of a proposed amendment after final rejection cannot be made as a matter of right unless it merely cancels claims or complies with a formal requirement made earlier. Amendments touching the merits of the application which otherwise might not be proper may be admitted upon a showing of good and sufficient reasons why they are necessary and why they were not presented earlier.
A reply under 37 CFR § 1.113 to a final rejection must include the appeal from, or cancellation of, each rejected claim. The filing of an amendment after final rejection, whether or not it is entered, does not stop the running of the statutory period for reply to the final rejection unless the examiner holds the claims to be in condition for allowance. Accordingly, if a Notice of Appeal has not been filed properly within the period for reply, or any extension of this period obtained under either 37 CFR 1.136(a) or (b), the application will become abandoned.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RICHARD A. HUHN whose telephone number is (571)270-7345. The examiner can normally be reached Monday through Friday, 9 AM to 6 PM EST.
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, Arrie (Lanee) Reuther can be reached on (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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/RICHARD A. HUHN/Primary Examiner, Art Unit 1764
