Detailed Office Action
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Issues Concerning Information Disclosure Statement of 02 November 2023
2. Foreign Patent Documents Numbers 9, 10, and 11 have not been considered, because the citation of the references does not comply with 37 CFR 1.98(a)(3). Furthermore, Non-Patent Literature Document Numbers 13 and 14 have not been considered, because they have not been received by the Office.
Claim Objection
3. Objection is made to claim 1, because, within line 3, “formulas” should not be plural.
Claim Rejections - 35 USC § 112
4. 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.
5. Claims 1-8, 12-17, 20, 23, 24, and 28-31 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.
Firstly, with respect to claim 1, it is unclear how to interpret the claim in terms of what constitutes the invention. As drafted, claim 1 specifies that the diol component comprises at least one linear aliphatic diol having the general formula HO-(CH₂)x-OH wherein x is an integer from 9 to 18 and one or more cyclic diols having 6 or more carbons, or one or more aromatic diols, wherein … . Accordingly, the claim can be fairly interpreted to be drawn to three embodiments; one wherein a linear aliphatic diol and cyclic diol are required, one wherein an aromatic diol is required, and one wherein a linear aliphatic diol and an aromatic diol are required. This issue precludes determining the metes and bounds of the claim.
Secondly, with respect to claim 1, the language, “cyclic diols”, encompasses the language, “aromatic diols”; therefore, it is unclear exactly what diols are encompassed by the claim language and/or how “cyclic diols” are to be interpreted; accordingly, again, the metes and bounds of the claim cannot be determined.
Thirdly, with respect to claim 1, applicants have failed to specify the type of the percent value associated polymeric diol; it is unclear if the percent is a weight percent.
Fourthly, with respect to claims 3, 4, and 16, applicants have failed to specify the type and basis of the percent values.
Fifthly, with respect to claim 5, the basis for the mole percent values has not been clearly set forth. Furthermore, it is unclear how to interpret the subject matter of the claim, because, as drafted, the claim requires the presence of all of the specified reactants.
Sixthly, with respect to claims 13 and 14, it is unclear to what extent the polymer is amorphous, because it cannot be determined what quantitative value is conveyed by “substantially”; the examiner has reviewed the specification and finds no guidance as to how the language is to interpreted.
Examiner’s Comment
4. The severity of the indefiniteness issues, especially with respect to claim 1, precludes further meaningful search and consideration of the prior art.
Conclusion
5. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Rabon A Sergent whose telephone number is (571)272-1079. The examiner can normally be reached on Monday through Friday from 9:00 AM until 5:00 PM, ET.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Riviere Kelley, can be reached at telephone number 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RABON A SERGENT/ Primary Examiner, Art Unit 1765
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