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 1-10 are pending. Claims 1 and 3-4 are rejected. Claims 2 and 5-10 are withdrawn.
Information Disclosure Statement
The Information Disclosure Statement from 8/30/2023 was considered by the Examiner.
Priority
This is a 35 U.S.C. 371 National Stage Filing of International Application No.
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, which claims priority under 35 U.S.C. 119(a-d) to
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**. Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d). **Foreign priority date is later than PCT date, therefore the priority date is 2/21/2022.
Election/Restriction
Applicant's election with traverse of Group I (claims 1-4) and the species of a monomer of formula (I-a):
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, in the reply filed on 2/3/2026 is acknowledged. The traversal is on the ground(s) that the instant claims make a contribution over CAS Registry No. 1222910-85-1. This is not found persuasive because newly presented art (see 102 rejection below over CAS Registry No. 857964-20-6) was discovered that the instant claims do not make a contribution over. Additionally, on p. 6 of the 2/3/2026 response, Applicant argues that the monomers of claim 1 have the ability to react by polycondensation reaction to synthesize polyamide, polyester and polyurethane having 4-thiazolidinone moiety as repeating unit. While claim 1 does not have this specific limitation included, the art utilized in the rejection under 35 USC 102 below is embraced by a monomer of instant claim 1 and would inherently have such functionality.
The requirement is still deemed proper and is therefore made FINAL.
Claims 1 and 3-4 embrace applicant’s elected species and are therefore under examination. Applicant’s elected species is not allowable and has been rejected below under 35 USC 102.
Claims 2 and 5-10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 2/3/2026.
Claim Objections
Claim 1 is objected to because of the following informalities:
Examiner recommends deleting the word “else” on p. 3 line 3.
Examiner recommends deleting the phrase “which contains carbon atoms” on p. 3, line 4.
Appropriate correction is required.
Claim 3 is objected to because of the following informalities:
In line 1: “Claim 1” should be changed to “claim 1”.
Appropriate correction is required.
Claim 4 is objected to because of the following informalities:
In line 1: “Claim 1” should be changed to “claim 1”.
Appropriate correction is required.
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.
Claims 1 and 3-4 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.
Claim 1, line 1 recites: “A monomer, comprising”, wherein “comprising” various elements and monomers is unclear. “Comprising” is an open-ended transitional phrase and the metes and bounds of “comprising” the list of monomers that follow cannot be fully ascertained. Examiner recommends replacing “comprising” with “consisting of”.
Claims 3-4 are additionally rejected for depending from claim 1 and failing to remedy its deficiencies.
Claim Rejections - 35 USC § 102
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 –
(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.
Claim(s) 1 and 3-4 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry No. 857964-20-6 (which entered the STN database on 8/3/2005).
Regarding instant claims 1 and 3-4, CAS Registry No. 857964-20-6 is drawn to the following structure:
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, which is embraced by a monomer of instant claim 1, I-a:
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, wherein Y= hydroxyl; Q = alkyl (methyl); R2 = H.
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.
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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.
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/MEGHAN C HEASLEY/Examiner, Art Unit 1626