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 .
This Office action is in response to the amendment filed 5/11/2026. Claims 1-15 are currently pending in the application.
Information Disclosure Statement
The information disclosure statement filed 8/30/2023 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the information referred to therein has not been considered. Specifically, a copy of the “International Search Report Issued May 17, 2022, in PCT/JP2022/010635 … 4 pages” is not provided.
Election/Restrictions
Applicant's election with traverse of group III, claim 14, in the reply filed on 5/11/2026 is acknowledged.
The traversal is on the ground(s) that
Restriction is only proper if the claims of the restricted groups are independent or patentably distinct and there would be serious burden placed on the Examiner if restriction is not required. The burden is on the Examiner to provide reasons and/or examples to support any conclusion in regard to patentable distinction. If the search and examination of all claims in an application can be made without serious burden, the Examiner must examine them on the merits, even though they include claims to independent or distinct inventions, see MPEP § 803.
Expression “special technical features” is defined in Rule 13.2 as meaning those technical features that defines a contribution which each of the inventions, considered as a whole, makes over the prior art. The determination is made on the contents of the claims as interpreted in light of description and drawings (if any). Examiner has not provided any indication that the content of claims interpreted in light of the description was considered in making the assertion of a lack of unity and therefore has not met the burden necessary to support the assertion.
Unity of invention does exist between groups I-IV because there is a technical relationship that involves the same special technical feature. It is this technical feature that defines contribution which each of the groups, taken as a whole, makes over the prior art.
Office action has not considered the relationship of the inventions of groups I to IV with respect to MPEP § 806.03. Therefore, burden necessary according to MPEP 1893.03(d) to sustain the conclusion that the groups lack of unity of invention has not been met.
This is not found persuasive because
MPEP § 803 deals with restriction in applications filed under 35 U.S.C. 111, while the present application is filed as a national stage entry under 371 PCT. Therefore, MPEP § 803 is not applicable in the current instance.
It is the Office’s position that restriction is made based on what is being claimed, since patent application can include multiple inventions which can claim earlier priority date of parent application when filed either as a divisional or continuation. As seen in the present instance, multiple inventions have been included in one application for examination.
According to PCT rule 13.2, the special technical feature shall mean those technical features that define a contribution which each of the claimed invention, considered as a whole makes over the prior art. If the common matter of the independent claims is well known and the remaining subject matter of each claim differs from that of the others without there being any unifying novel inventive concept common to all, then clearly there is lack of unity, see MPEP § 1850(ii).
MPEP § 1893.03(d) refers to portions of MPEP relating to restriction in applications filed under 35 U.S.C. 111. Those portions relate to double patenting rejections (MPEP § 804), election and reply by applicant (MPEP § 818) and rejoinder of non-elected invention. In the present instance, only MPEP § 818 is relevant and Office addressed the traversal with respect to lack of unity in this Office action.
The requirement is still deemed proper and is therefore made FINAL.
Specification
The abstract of the disclosure is objected to because abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words. Correction is required. See MPEP § 608.01(b). In the current instance, the abstract includes more than one paragraph and more than 150 words.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 14 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ke Kai (CN 110938183 A).
It is noted that CN 110938183 A is in Chinese. A copy of the machine translation into English is provided Office action mailed 3/10/2026. All line/paragraph citations in the body of rejection below are to the English translation unless explicitly stated.
Prior to setting forth the rejection, it is noted that the recitation of "radical polymerization control agent" in the preamble (cf. independent claim 14) is deemed to be a statement of purpose or intended use which is not seen to result in any structural difference between the instantly claimed invention and Ke Kai and hence the preamble fails to limit the claim. MPEP § 2111.02.
Ke Kai teaches in example 5, an ATRP preparation method comprising using cinnamoxyl (paragraphs 095-0106). It is noted that cinnamoxyl is represented by formula:
PNG
media_image1.png
206
114
media_image1.png
Greyscale
(i.e., reads on organic compound represented by formula I in present claim 14, wherein R1 is aryl group, R2 is of formula II and R3 is halogen atom).
Claim 14 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kitagawa et al (US 2015/0291751 A1).
Prior to setting forth the rejection, it is noted that the recitation of "radical polymerization control agent" in the preamble (cf. independent claim 14) is deemed to be a statement of purpose or intended use which is not seen to result in any structural difference between the instantly claimed invention and Kitagawa et al and hence the preamble fails to limit the claim. MPEP § 2111.02.
Kitagawa et al teach a composition comprising ethyl cinnamate (paragraph 0051). It is noted that ethyl cinnamate is represented by formula:
PNG
media_image2.png
98
212
media_image2.png
Greyscale
(i.e., reads on organic compound represented by formula I in present claim 14, wherein R1 is aryl group, R2 is of formula II and R3 is alkoxy group).
Claim 14 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Terrisse (US 2018/0312619 A1).
Prior to setting forth the rejection, it is noted that the recitation of "radical polymerization control agent" in the preamble (cf. independent claim 14) is deemed to be a statement of purpose or intended use which is not seen to result in any structural difference between the instantly claimed invention and Terrisse and hence the preamble fails to limit the claim. MPEP § 2111.02.
Terrisse teaches a monomer composition comprising cinnamic alcohol (paragraph 0161). Cinnamic alcohol refers to a chemical compound with formula:
PNG
media_image3.png
70
176
media_image3.png
Greyscale
(i.e., reads on organic compound represented by formula I in present claim 14, wherein R1 is aryl group, R2 is of formula III and R3 is hydrogen atom).
Claim 14 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Terao et al (Biiomacromolecules, vol. 20(1), pages 1-30, Year: 2018).
Prior to setting forth the rejection, it is noted that the recitation of "radical polymerization control agent" in the preamble (cf. independent claim 14) is deemed to be a statement of purpose or intended use which is not seen to result in any structural difference between the instantly claimed invention and Terao et al and hence the preamble fails to limit the claim. MPEP § 2111.02.
Terao et al teach cinnamic monomers represented by the following:
PNG
media_image4.png
116
512
media_image4.png
Greyscale
(i.e., read on organic compound represented by formula I in present claim 14, wherein R1 is aryl group, R2 is of formula II and R3 is alkoxy group or hydroxyl group or amino group or hydrogen atom.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KARUNA P REDDY whose telephone number is (571)272-6566. The examiner can normally be reached 8:30 AM to 5:00 PM M-F.
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 at 571-270-7026. 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.
/KARUNA P REDDY/Primary Examiner, Art Unit 1764
Prosecution Insights