DETAILED CORRESPONDENCE
This Office action is in response to the election received August 10, 2026.
Applicants’ election with traverse of Group I, claims 1-4, 6, 8, 10-15, 19, 23, 24, and 28-42 in the reply filed on August 10, 2026, is acknowledged. The traversal is on the ground(s) that examination would not impose a serious burden. This is not found persuasive because the claimed random copolymer can be used in many applications and to consider each of the various applications such as injection molding, paints, interlayer, etc. would be a serious burden.
The requirement is still deemed proper and is therefore made FINAL.
Claims 43-46 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 August 10, 2026.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-4, 6, 8, 10-15, 19, 23, 24, and 28-42 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 12,559,644 (BASKARAN et al). Although the claims at issue are not identical, they are not patentably distinct from each other because the current claims are generic to the claimed random copolymer in U.S. Patent 12,559,644, The same three repeating units of formula (I), (II) and (III) are recited wherein the current application recites “comprising” language which would include additional repeating units, thus the if later filed application were to become a patent, the statutory period for the grant of the random copolymer would be extended beyond the statutory 20 years from filing, see the claims below:
Claim 1 of U.S. Patent 12,559,644:
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Claim 1 of the current application 18/554,651:
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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.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 1-4, 6, 8, 10-15, 19, 23, 24, and 28-42 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.
The definition for R4 has a range of C-2 to C-10, however further in the claim R4 is defined as comprising an arene such as a biphenyl which contains 12 carbon atoms (C-12). The inconsistency of the carbon number range needs to be corrected with support from the specification.
Claims 34-36 and 41 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 34-36 and 41 depend from claim 1 where the recited groups for R4 are C-2 to C-10 and the dependent claims recite a biphenyl which is a C-12 aromatic group.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
(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 Rejections - 35 USC § 103
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-4, 6, 8, 10-15, 19, 23, 24, 28-42 are rejected under 35 U.S.C. 103 as being unpatentable over WU et al (8,691,925) in view of KOMATSU et al (2019/0233561 A1) and PARK et al (2015/0210793 A1).
The claimed invention recites the following:
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WU et al report a random copolymer having the same three repeat units, see Example 1 in column 17 below:
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The working example lacks the recited repeat unit (III) being an ethyl methacrylate or greater (discloses methyl methacrylate) and the recited 2-18 mole%, however column 6, lines 40-48 disclose the range of unit (I) in a range from 5 mole% to 90 mole% teaching the claimed range of 2-18 mole%, see below:
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WU et al further disclose that R1 can be any of the alkyl group listed in col. 6, lines 49-64, see below:
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KOMATSU et al disclose composition for random copolymer for DSA, wherein the methacrylate unit includes aromatic methacrylate, see para. [0063] below:
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PARK et al further disclose random copolymer for underlayers in DSA techniques (wherein the (meth)acrylate unit in the copolymer can be aromatic with 1,2 or 3 rings, see page 4, para. [0020] below:
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Claim 2 and 3 for “consisting essentially of” and “consisting of “is met by Example 2.
Claim 4 for the unit (III) being 2.5 mole% to 16 mole % is met by the disclose above in column 6, lines 40-48.
Claim 6 for the range of unit (II) from 6 mole% to 23 mole % is met by the disclosure above in column 6, lines 40-48.
Claim 8 for the range of unit (I) from 62 mole% to 93 mole % is met by the disclosure above in column 6, lines 40-48.
Claim 10 for the range is also met by column 6, lines 40-48.
Claim 11- 15 are met by Example 2 wherein the repeat units do not have substituted groups (m and n =0 of structure (II) and (III).
Claim 19 for the defined group for R4 is met by in col. 6, lines 49-64.
Claims 23 and 24 for the defined group for R4 being n-butyl is met in col. 6, lines 49-64.
Claims 28-42 for the defined group for R4 being n-propyl and ethyl and ring structures are met in col. 6, lines 49-64 and in KOMATSU et al para. [0063].
It would have been prima facie obvious to one of ordinary skill in the art of random copolymers for DSA to use any listed alkyl methacrylate taught above in a content of 5 mole% in place of the methyl methacrylate of Example 2 as well as select aromatic methacrylates such as phenyl methacrylate and/or 2-ring methacrylate units such as naphthyl or biphenylyl containing methacrylates with the reasonable expectation of same or similar results for having an excellent neutral layer which remain neutral and are not damaged by processing steps of the DSA techniques.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
KIM et al (9,574,104) disclose a random copolymer with the same three repeating units with the additional aromatic hydroxyalkyl end group bonded to the polymer.
WU et al (9,052,598) is a divisional application to the WU et al ‘925 reference above.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN S CHU whose telephone number is (571)272-1329. The examiner can normally be reached M-F, IFP-Flex.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Hendricks, can be reached at telephone number 571-272-1401. 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 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.
/John S. Chu/ Primary Examiner, Art Unit 1737
J. Chu
September 30, 2026
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