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 .
DETAILED ACTION
Election/Restrictions
Applicant's election without traverse of species I, claims 1-9, 11-14 and 16-17 in the reply filed on 05/07/2026 is acknowledged. Accordingly, claims 10, 15 and 18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Claims 1-9, 11-14 and 16-17 are currently under examination on the merits.
Claim Objections
Claims 1, 5, 7 are objected to because of the following informalities: “select from … and…” is not a not a proper Markush group or conventional alternative limitation. 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 1-9, 11-14 and 16-17 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 pre-AIA the applicant regards as the invention.
Claims 1, 12 and 14 are rejected as being vague and indefinite when the claims recite “R1 is L1-phthalimide” and “L2-NH-CO-R4”, because it is not clear how these group being chemically connect to the Si atoms in the chemical formula. In this office action, it is taken that the R1 is connect to Si atom from L1 end, where in L1 and L2 each should be a divalent hydrocarbon radical as in “-L1-phthalimide “ and “-L2-NH-CO-R4”. Claims 2-9, 11, 13-14 and 16-17 are also rejected for depending from claim 1 and claim 12, thus inclusion of the indefinite features.
Claims 2, 5 and 9 are rejected as being vague and indefinite when the claims recite “L1 is C1-C6 alkyl” and “L2 is C1-C6 alkyl”, because alkyl is not a divalent group, which should read “alkylene”.
Claim 11 provides for use of silsesquioxane, but the claim does not set forth any steps involved in the method/process. It is unclear what method/process applicant is intending to encompass. A claim is indefinite where it merely recites a use without any active, positive steps delimiting how this use is actually practiced.
Allowable Subject Matter
Claims 1-9, 11-14 and 16-17 would be allowable if rewritten to overcome 112 rejections as set forth above and including all of the limitations of the base claim and any intervening claims. The reason for the allowance is that the claims are allowable over closest prior art Dudzeic et al (Polymers, 1019, 11(504)). Dudzeic discloses a polyhydral oligomeric of silsesquioxane (POSS) having formula as recited in the present claim 1, with R1 being -C3H6-phthalimide, R2 being a butyl group (page 3, Figure 2, compound (2a)). However, the prior art of record does not specifically disclose, teach or fairly suggest a silsesquioxane as recited in the present claim 1, further having a R3 being -L2-NH-CO-R4, with R4 being a C1-C34 alkyl or C8-C34 alkene group.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RUIYUN ZHANG whose telephone number is (571)270-7934. The examiner can normally be reached on 8:00-5:00 PM.
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/RUIYUN ZHANG/Primary Examiner, Art Unit 1782
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