Detailed Office Action
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 112
2. 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.
3. Claims 3-5 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.
With respect to claim 3, in view of the deletion of R1 being hydrogen, made in response to the previous indefiniteness rejection, it is unclear how to interpret the claimed reaction formula scheme when oxirane is employed. The claimed reaction scheme only allows for the use of a substituted oxirane.
Prior Art Rejection
4. 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.
5. Claims 1, 8, and 9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP 2010-254893 A.
JP 2010-254893 A discloses the reaction under thermal conditions of a polymer that meets applicant’s Formula (I). Applicant’s attention is directed to general formula (2) within page 3 of the Japanese language reference and pages 2 and 3 of the provided English language translation. When m is 2 to 10 of disclosed general formula (2), general formula (2) is polymeric. Furthermore, specific examples of general formula (2) are disclosed as being 3-ethyl-3-hydroxy-poly(ethyleneoxy) methyl oxetane and 3-ethyl-3-hydroxy-poly(propyleneoxy) methyl oxetane, and when m is 6 to 10 of the disclosed range, these compounds will have molecular weights meeting those claimed. Regarding claim 2, in accordance with In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990), a chemical composition and its properties are inseparable; therefore, since the disclosed exemplified prior art polymer of general formula (2) and instantly claimed Formula (I) are the same for claimed m values of 6 to 10, the claimed viscosity property is necessarily present. See MPEP 2112.01(II).
6. Applicant’s response has been considered; however, though applicant has argued that neither molecular weight nor viscosity is disclosed, it is noted that the molecular weight is easily calculated, depending on the value of m. It is noted that applicant performed such calculations in response to the prior art rejection in view of JP 2019-23256 A. Accordingly, for the aforementioned reasons, the position is maintained that the reference is adequate to anticipate the claimed polymer.
Conclusion
7. Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
8. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Rabon A Sergent whose telephone number is (571)272-1079. The examiner can normally be reached on Monday through Friday from 9:00 AM until 5:00 PM, ET.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Riviere Kelley, can be reached at telephone number (571)270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Examiner interviews are available via a variety of formats. See MPEP § 713.01. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) Form at https://www.uspto.gov/InterviewPractice.
/RABON A SERGENT/Primary Examiner, Art Unit 1765
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