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 .
Election/Restrictions
Applicant’s election without traverse of Group I, Claims 1-16, 19-20, and 22 in the reply filed on 6/23/2026 is acknowledged. Claim 18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claims.
Applicant's election with traverse of species (A) in the reply filed on 6/23/2026 is acknowledged. The traversal is on the ground(s) that the independent claim as presently amended claims set forth species (A) that is generic to the alleged species (b), (C), and (D) species. In light of applicants amendments, the species restriction requirement is withdrawn.
Claim Objections
Applicant is advised that should claim 7 be found allowable, claim 9 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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(s) 1-16, 19, 20, and 22 is/are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as failing to set forth 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 because:
Use of parentheses in Claims 1-5, 10, and 12-13 – e.g. (one or more tertiary carbons), (hydrocarbon polymer), etc.. – renders the scope of the claims indefinite, as it is unclear whether the limitations enclosed in parentheses are optional or required. For the purposes of examination, these limitations will be interpreted as being optional.
Use of “e.g.,”,“i.e.,” and “such as” in Claims 1-5, 7, 9-10, 12-14, 16 and 20 renders the scope of the claims indefinite, as it is unclear whether the limitations following “e.g.,” ,“i.e.,” and “such as” are optional or required. For the purposes of examination, these limitations will be interpreted as being optional.
Claim 1 recites the limitation "the tertiary carbon" in line 1. The scope of this claims is therefore unclear as there is insufficient antecedent basis for this limitation in the claim. For purposes of examination, “the tertiary carbon” will be interpreted as “a tertiary carbon”.
Claim 20 sets forth “a homopolymer or heteropolymer”. The scope of the claims are indefinite as it is unclear whether or not this homopolymer and heteropolymer is required to be one of the specific species recited in Claim 19. For purposes of examination, “A homopolymer or heteropolymer” in Claim 20 will be interpreted as corresponding to one of the specific species of claim 19.
Claims 2-16, 19-20, and 22 are further rejected under 35 U.S.C. 112(b) as being dependent on the rejected independent claim 1.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-6, 10-13, 19-20, and 22 is/are rejected under 35 U.S.C. 102(a)(1) and/or (a)(2) as being anticipated over Different Oxidation Treatments on Polystyrene to Arifin et al. (as found on the IDS dated 9/11/2023).
Regarding Claim(s) 1 and 4-6, Arifin teaches oxidation treatments of polystyrene [title] (polystyrene reading on claims 4-6) wherein using ozone alone, wherein the C-H bond that is linked to the tertiary carbon as the most reactive site [Page 61, right column, second paragraph] (reading on oxidizing the tertiary carbon of a polymer using ozone and exposing the polymer to ozone). The polystyrene microspheres were prepared in an oil-in-water emulsion solvent [page 60, section 2.1] and later washed with NaOH, rinsed, and vacuum filtrated [Page 61, left column, section 2.3] thereby reading on isolating or purifying the resulting product or products.
Regarding Claim(s) 2, Arifin teaches the method of claim 1, Fig 4 shows polystyrene is treated with ozone alone wherein C-H tertiary carbon reactive cites of the polystyrene with ozone give rise to polymer peroxy radicals which subsequently form carbonyls, carboxylic acids.
Regarding Claim(s) 3, Arifin teaches the method according of claim 1, wherein the treatment of polystyrene with ozone give rise to polymer peroxy radicals that subsequently form carbonyls, and carboxylic acids in slow reactions which may involve chain-scissions filtrated [Page 61, right column, second paragraph] (reading on carboxylic acid degradation products).
Regarding Claim(s) 10, Arifin teaches the method of claim 1, wherein the treatment of polystyrene with ozone can be in in the presence of ambient oxygen molecules [Page 61, right column, second paragraph].
Regarding Claim(s) 11 and 12, Arifin teaches the method of claim 1, wherein one of the possible reactions is when polystyrene is treated with ozone alone [Page 61, right column, second paragraph], (reading on a step (1) which is carried out in the absence of any other added oxidants, oxidizing agents, or catalyst).
Regarding Claim(s) 13, Arifin teaches the method of claim 1, may be done by ozone aeration only rather than a combination of both UV and ozone [Page 59, 3rd paragraph].
Regarding Claim(s) 19 and 20, Arifin teaches the method of claim 1, wherein apart from modifications mentioned in the treatment of polystyrene with ozone or UV only, polymer chains are further modified by atomic oxygen O(1D) [page 61, last paragraph] wherein the interaction of O(1D) with the polymer chain produces hydroxyl groups or ether groups, wherein further oxidation results in ketones and esters [page 63, left column, second paragraph]. As such, this results in a polystyrene with ketone and ester groups, thereby reading on a heteropolymer.
Regarding Claim(s) 22, Arifin teaches the heteropolymer of claim 19, that is used for cell culture [Page 59, introduction, first paragraph].
Claim Rejections - 35 USC § 103
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 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.
Claim(s) 7-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Different Oxidation Treatments on Polystyrene to Arifin et al. (as found on the IDS dated 9/11/2023) in view of WO2019170946 to Urgoitia et al. For the purposes of examination, citations for Urgoitia are taken from a machine translation equivalent of the document obtained from the European Patent Office website in July of 2026.
Regarding Claim(s) 7, Arifin teaches the method of claim 6, wherein the treatment of polystyrene with ozone give rise to polymer peroxy radicals which subsequently form carbonyls which may involve chain-scissions [Page 61, right column, second paragraph]. This is further seen in Figure 4 as shown below.
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Although Arifin does not expressly set forth the structure of instant claim 7, a person of ordinary skill in the art would recognize that polystyrene chain scission creates two terminal groups. Since Afrin teaches the polystyrene with ozone forms carbonyls, one of ordinary skill in the art would further recognize that the carbonyl functional groups would be present at the tertiary carbon scission location, therefore reasonably reading on the dicarboxylic acid structure of claim 7.
Arifin does not expressly teach that n has the value from 0-100,000.
However Urgoitia teaches oxidative degradation of polystyrene [0011] such as the polystyrene polymer comprising the following formula [0042]:
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Wherein n is greater than 1 without a particular upper limit [Urgoitia, 0045] and the tertiary carbon is transformed into a carbonyl group [0032]. Arifin and Urgoitia are analogous art as they are from the same field of endeavor, oxidation and scission of polystyrene.
Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to provide Arifin’s polymer product having the n value taught by Urgoitia thereby arriving at the claimed invention.
The motivation would have been that Urgoitia shows that a n value of greater than 1 is known in the art to be suitable for products of the oxidative degradation of polystyrene.
Regarding Claim(s) 8 and 9, Arifin teaches the method of claim 1, wherein the treatment of polystyrene with ozone give rise to polymer peroxy radicals which subsequently form carbonyls which may involve chain-scissions [Page 3, right column, second paragraph]. This is further seen in Figure 4 as shown below.
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Although Arifin does not expressly set forth the structure of instant claim 9, a person of ordinary skill in the art knows that polystyrene chain scission creates two terminal groups. Since Afrin teaches the polystyrene with ozone forms carbonyls, one of ordinary skill in the art knows the carbonyl functional groups would be present at the tertiary carbon scission location, therefore reasonably reading on the dicarboxylic acid structure of claim 7.
Arifin does not teach that n has the value from 0-100,000.
However Urgoitia teaches oxidative degradation of polystyrene [0011] such as the polystyrene polymer comprising the following formula [0042]:
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Wherein n is greater than 1 without a particular upper limit [Urgoitia, 0045] and the tertiary carbon is transformed into a carbonyl group [0032]. Arifin and Urgoitia are analogous art as they are from the same field of endeavor, oxidation and scission of polystyrene.
Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to provide Arifin’s polymer product having the n value taught by Urgoitia thereby arriving at the claimed invention.
The motivation would have been that it has been held that Urgoitia shows that a n value of greater than 1 is known in the art to be suitable for products of the oxidative degradation of polystyrene.
Claim(s) 14-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Different Oxidation Treatments on Polystyrene to Arifin et al. (as found on the IDS dated 6/23/2026) in view of US 10,071,944 to Foley et al.
Regarding Claim(s) 14-16, Arifin teaches the method of claim 1, as set forth above and incorporated herein by reference.
Arifin does not particularly teach the continuous flow method or specific reactors in claims 14-16.
However, Foley et al. teaches ozone-based oxidation on a liquid or emulsified reagent using a tubular falling film reaction with one or multiple tubes [abstract]. Foley and Arifin are analogous art as they are from the same field of endeavor, namely oxidation via ozone.
Before the effective filing date of the instantly claimed invention, it would have been obvious to one of ordinary skill in the art to use Foley’s tubular falling film reactor to make Arifin’s polymer.
The motivation would have been that performing ozone based oxidation reactions in industrial scale tubular falling film reactors are advantageous for a variety of reasons such as they expose relatively small volumes of liquid reagents to relatively high volume of reactive gaseous reagents, they are efficient and exhibit reasonably high throughput rates, and they handle exothermic processes well [Foley, Col5, lines 35-51].
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner
should be directed to Devin Darling whose telephone number is (703) 756-5411. The examiner can normally be reached M-F 9:00-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie Lanee Reuther can be reached on (571) 270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DEVIN MITCHELL DARLING/Examiner, Art Unit 1764
/MELISSA A RIOJA/Primary Examiner, Art Unit 1764
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