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 .
Status of the Claims
Claims 1-11 are pending. Claims 4-7 and 10 are withdrawn. Claims 1-3, 8-9 and 11 are rejected.
Information Disclosure Statement
The Information Disclosure Statement (IDS) submitted on 8/30/2023 was considered by the Examiner.
Priority
This is a 35 U.S.C. 371 National Stage Filing of International Application No.
PNG
media_image1.png
22
201
media_image1.png
Greyscale
, which claims priority under 35 U.S.C. 119(a-d) to
PNG
media_image2.png
20
186
media_image2.png
Greyscale
. Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d).
Election/Restrictions
Applicant's election with traverse of Group I and the species of compound (1) of p. 7 of the instant specification:
PNG
media_image3.png
201
176
media_image3.png
Greyscale
in the reply filed on 3/6/2026 is acknowledged. The traversal is on the ground(s) that the prior art used in the restriction requirement of 1/8/2026 is different from the instant claims (hydrogen vs. methyl); see p. 7 of Applicant response:
PNG
media_image4.png
173
662
media_image4.png
Greyscale
. This is not found persuasive because as demonstrated below in the 103 rejection, hydrogen vs. methyl substitutions are obvious variants/analogs.
Claims 1-3, 8-9 and 11 embrace Applicant’s elected species and are therefore under Examination. The elected species is free of the art (even though not specifically claimed). As per MPEP 803.02, “Following election, the Markush claim will be examined fully with respect to the elected species and further to the extent necessary to determine patentability.” A non-elected species has been rejected below in the interest of compact prosecution.
The requirement is still deemed proper and is therefore made FINAL.
Claims 4-7 and 10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 3/6/2026.
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.
Claim 9 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 9 depends from claim 1 and recites the limitation "[t]he polymer" in line 1. There is insufficient antecedent basis for this limitation in the claim. Examiner recommends changing “The” to “A” at the beginning of the claim (claim 9 will still be dependent on claim 1).
Claim Rejections - 35 USC § 103
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.
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.
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.
Claim(s) 1-3, 8-9, and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Montoya et al. (Makromol. Chem. 178, 1221-1228, 1977-listed on the Applicant’s 8/30/2023 IDS).
Determining the scope and contents of the prior art. (See MPEP § 2141.01)
Montoya teaches monomers and copolymers: “These monomers were homopolymerized and copolymerized with N-vinyl-2-pyrrolidone by radical initiation” (see summary, p. 1221). Montoya specifically discloses the compound 3a on p. 1222 (arrow added by Examiner):
PNG
media_image5.png
212
532
media_image5.png
Greyscale
, wherein -R- of the prior art is ethanediyl.
Ascertainment of the differences between the prior art and the claims. (See MPEP § 2141.02)
The prior art compound has a hydrogen where the instant claims have a methyl (at the instant “Q” location).
Finding of prima facie obviousness --- rationale and motivation (See MPEP § 2142-2143)
Regarding instant claims 1-3, 8-9 and 11, the prior art compound is similar to a compound of instant formula (I-1):
PNG
media_image6.png
176
190
media_image6.png
Greyscale
, wherein Y= acrylate; A = ethanediyl; R2 = H; m = 0; Q = H. Without factual evidence of unexpected results, it would have been obvious to a skilled artisan to replace the prior art hydrogen with the instantly claimed methyl. The compounds as taught by the prior art and the compounds in the instant claims are considered structural analogs and hydrogen and methyl are deemed obvious variants. It is well established that the substitution of hydrogen for methyl on a known compound is not a patentable modification absent unexpected or unobvious results. In re Wood, Whittaker, Stirling, and Ohta, 582 F.2d 638, 199 U.S.P.Q 137 (C.C.P.A. 1978). In the instant case, a person having ordinary skill in the art at the time the invention was filed would have been motivated to synthesize the instantly claimed analogs with the reasonable expectation that it would have the same utility as the closest structurally related compounds taught by the prior art and with the motivation of obtaining additional useful compounds. A person of ordinary skill in the art would have expected them to be useful in the same utilities and been motivated to apply them in the same methods.
Specifically, regarding instant claim 9, which has been rejected above under 112(b), this claim is a product-by-process claim wherein “the polymer” is obvious over the prior art above. Additionally, the polymers of the prior art were obtained by radical initiation. ‘"[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)’. See MPEP 2113(I).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MEGHAN C HEASLEY whose telephone number is (571)270-0785. The examiner can normally be reached Monday - Friday 8:30-4:30 PM.
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, Amy Clark can be reached at 571-272-1310. 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.
/MEGHAN C HEASLEY/Examiner, Art Unit 1626