CTNF 18/531,833 CTNF 84176 Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia 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 07-30-02 AIA 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. 07-34-01 Claim 2-3 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. The claims as set forth are wholly indefinite as they are drawn to an adsorbent comprising a structure according to Formula (U) (See Claim 2) or Formula (A1) or Formula (A2) (See Claim 3) without setting forth Formula U, A1 or A2. The claims contain a black box where said Formula was likely intended to be. As the claims do not currently set forth the intended formula, they are indefinite as a whole. For the sake of examination, Formula U, A1 and A2 are considered to be the same as Formula U, A1, and A2 as they are shown at paragraphs 6 and 7 of the originally filed disclosure as is shown below: PNG media_image1.png 96 366 media_image1.png Greyscale PNG media_image2.png 230 691 media_image2.png Greyscale Appropriate correction is required. Claim Rejections - 35 USC § 102 07-07-aia AIA 07-07 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 – 07-08-aia AIA (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. 07-15-aia AIA Claim(s) 1-3 and 7-10 is/are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Li in CN112619624 . Regarding Claim 1: Li teaches the creation of an absorbent material comprising a rosin based polymerizable material. Li teaches that the polymerizable rosin may be dehydroabietic acid (β-acryloyloxyethyl) ester (See Paragraph 13). Li shows the creation of a polymer from such a monomer by adding said monomer to a solvent with an initiator (See Paragraph 14) and allowing for reaction (polymerization) for 0.5 to 24 hours (See Paragraph 18). The process of Li necessarily provides an adsorbent containing a skeleton derived from dehydroabietic acid compound in a molecular chain constituting a main chain as claimed. Regarding Claim 2-3: Li teaches that the polymeric material contains the product of polymerizing a dehydroabietic acid (B-acryloyloxyethyl) ester. Polymerized dehydroabietic acid inherently has the structure associated with formula U or A1 as claimed, wherein the linking moiety shown in either claim is associated with the ester of Li. The polymerizable nature of the monomer of Li necessitates that the bonding parts * and ** are at least divalent as claimed. Regarding Claim 7-9: The instant claims are drawn to the intended use of the composition. Intended use is examined based on the capability of the material of the prior art being used for the intended use and not to the actual use or manipulations claimed. The composite material of Li is an adsorbent comprising a polymer having a polymer that contains a skeleton derived from a dehydroabietic acid compound in its main chain as claimed, which is the same material as that which is claimed. As the material of Li is of the same composition as claimed it would be capable of the same use, such as being used in a liquid containing water wherein an adsorbate is an organic substance having a clogD > 0. Regarding Claim 10: Li teaches that the component as set forth above is to be used in an adsorption apparatus, such as in a rosin-bonded silica gel stationary phase in a chromatographic column (See Abstract). Claim(s) 1-3 and 7-9 under 35 U.S.C. 102(a)(1) as being anticipated by Yoshitani in WO2012176840. The instant claims set forth in the preamble that the material is an adsorbent. The original disclosure at paragraph 4 sets forth that polymers that contain a skeleton derived from a dehydroabietic acid compound exhibit an adsorption characteristic. The original disclosure thus establishes that polymers containing dehydroabietic acid are inherently adsorbents (a material being capable of adsorption). Thus any polymer having the claimed dehydroabietic acid skeleton is also considered to be capable of such adsorption and by virtue of this would be considered an adsorbent. The discovery of a previously unappreciated property of a prior art composition does not render the old composition patentably new to the discoverer (See MPEP 2112). Regarding Claim 1: Yoshitani teaches the creation of a polymeric material comprising a skeleton derived from a dehydroabietic acid compound in a molecular chain constituting a main chain (See Paragraph 7-9). As the composition of Yoshitani contains a polymer containing dehydroabietic, it inherently has adsorption properties and would be considered an adsorbent as is discussed above. Regarding Claim 2: Yoshitani teaches that the adsorbent polymer may contain a skeleton derived from a dehydroabietic acid compound having a structure shown in Paragraph 9 and reproduced on the following page: PNG media_image3.png 75 248 media_image3.png Greyscale The variables in Yoshitani’s composition are as follows and meet the limitations as set forth: PNG media_image4.png 126 900 media_image4.png Greyscale Yoshitani teaches a polymer containing the same skeleton derived from dehydroabietic acid as claimed and meets all of the claim limitations. As is set forth above, the polymer of Yoshitani inherently has adsorbent properties and is thus an adsorbent as claimed. Regarding Claim 3: Yoshitani teaches that the adsorbent polymer may contain a skeleton derived from a dehydroabietic acid compound having a structure shown in Paragraph 9 and reproduced below: PNG media_image5.png 205 462 media_image5.png Greyscale Yoshitani teaches that L11, L12, L22, and L23 represent divalent linking groups and * represents a bonding part wherein the constituent is incorporated into the molecular chain. As is set forth above, the polymer of Yoshitani inherently has adsorbent properties and is thus an adsorbent as claimed. Regarding Claims 7-9: The instant claims are drawn to the intended use of the composition. Intended use is examined based on the capability of the material of the prior art being used for the intended use and not to the actual use or manipulations claimed. The composition of Yoshitani is of the same composition and structure as the material claimed and would thus be capable of the same use, such as being used in a liquid containing water wherein an adsorbate is an organic substance having a clogD > 0. The inherent capability of the polymer of Yoshitani for adsorption is discussed above . Claim Rejections - 35 USC § 103 07-20-aia AIA The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action: A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made. 07-23-aia AIA The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows: 1. Determining the scope and contents of the prior art. 2. Ascertaining the differences between the prior art and the claims at issue. 3. Resolving the level of ordinary skill in the pertinent art. 4. Considering objective evidence present in the application indicating obviousness or nonobviousness. 07-20-02-aia AIA This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention. 07-21-aia AIA Claim (s) 4-6 and 11-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yoshitani in WO2012176840 . Regarding Claim 4-5 and 11: Yoshitani teaches the creation of a copolymeric material comprising a skeleton derived from a dehydroabietic acid compound in a molecular chain constituting a main chain (See Paragraph 7-9). As the composition of Yoshitani contains a polymer containing dehydroabietic, it inherently has adsorption properties and would be considered an adsorbent as claimed and discussed above. The polymer of Yoshitani may further comprise, in the molecular chain, a constituent derived from a comonomer of Formula (II): PNG media_image6.png 99 272 media_image6.png Greyscale Yoshitani teaches that the variables X,Y,Z may be chosen from a variety of functional groups such as O, S, NR, C=O, O(C=O), (C=O)O, (C=O)NR, amongst others. When X, Y and Z are N and R represents a hydrogen atom, the comonomer (II) of Yoshitani is a polyamine (See Paragraph 6) and the polymer contains in its molecular chain a constituent derived from a polyamine. This polyamine may be a secondary amino group of Formula (II-3) (See Paragraph 41). PNG media_image7.png 80 244 media_image7.png Greyscale Yoshitani thus teaches an overlapping range of copolymer compositions. Overlapping ranges have been held to present a prima facie case of obviousness over the prior art. Those of ordinary skill would only have to select from the overlapping portion of the range (selecting X,Y, and Z as N) to arrive at the invention as claimed. Regarding Claim 6 and 12: Yoshitani teaches that the amine component discussed above may include a ring structure, which may be a heterocyclic structure. Such a ring system may be present as G 1 (See Paragraph 46). Yoshitani thus teaches a polymer and adsorbent meeting the claim limitations as set forth. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW E HOBAN whose telephone number is (571)270-3585. The examiner can normally be reached M-F 9:30am-6:00pm. 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, Jonathan Johnson can be reached at 571-272-1177. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /Matthew E. Hoban/Primary Examiner, Art Unit 1734 Application/Control Number: 18/531,833 Page 2 Art Unit: 1734 Application/Control Number: 18/531,833 Page 3 Art Unit: 1734 Application/Control Number: 18/531,833 Page 4 Art Unit: 1734 Application/Control Number: 18/531,833 Page 5 Art Unit: 1734 Application/Control Number: 18/531,833 Page 6 Art Unit: 1734 Application/Control Number: 18/531,833 Page 7 Art Unit: 1734 Application/Control Number: 18/531,833 Page 8 Art Unit: 1734
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