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 II, claims 13-15 in the reply filed on 3/3/2026 is acknowledged.
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 13-15 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.
In claim 13, line 11, it is not clear if “an initiator” is the same or different as “an initiator” previously cited in line 10. For purposes of examination, it is assumed they are the same.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 13-15 are rejected under 35 U.S.C. 103 as being unpatentable over Gianneschi (WO 2021/163498) in view of Atkins (WO 2014/105493).
Gianneschi teaches the formation of copolymers of a first monomer and a second monomer within the scope of the present invention, wherein the copolymer is formed by emulsion polymerization (0007 and 0011). Gianneschi specifically teaches that one of the monomers comprises a fluorophore within the scope of the present claimed formula (I) (see structure 18 on page 25). Gianneschi fails to teach that the copolymer is formed by the specific emulsion polymerization method disclosed in current claim 13. However, Atkins teaches the formation of copolymers which utilize taggants wherein a water in oil polymerization technique is utilized by disposing the monomers in an aqueous phase along with a pH buffer, mixing an oil phase with a surfactant and adding the aqueous phase to the oil phase (page 21, lines 3-24). Furthermore an initiator is added to the emulsion (page 21, lines 18-20). It would be obvious to one of ordinary skill in the art to utilize the water in oil emulsion tagged polymer synthesis method of Atkins in the synthesis of tagged polymers of Gianneschi, since applying such a known method of emulsion polymerization would lead to the predictable result of successful formation of tagged polymers (KSR D, MPEP 2141). Also, given the teaching of Gianneschi that emulsion polymerization may be used to form the tagged polymers, it would be obvious to try from the limited amount of emulsion types; water in oil, oil in water and dispersion emulsions (KSR E).
Regarding claim 14, it would be obvious to one of ordinary skill in the art to remove excess monomers, since such would only involve purification of a final product. It is noted that no novel removing step is claimed.
Regarding claim 15, Atkins discloses adding an inverting surfactant package (see page 22, lines 1-4).
Claim(s) 13-15 are rejected under 35 U.S.C. 103 as being unpatentable over Nuutinen (WO 2021/113621) in view of Atkins (WO 2014/105493).
The applied reference has a common inventor with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2).
This rejection under 35 U.S.C. 103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C.102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.
Nuutinen teaches the formation of copolymers of a first monomer and a second monomer within the scope of the present invention, wherein the copolymer is formed by emulsion polymerization (pages 17-22 and page 44). Huutinen teaches that the copolymers may be formed by emulsion polymerization (page 54, lines 1-4), but fails to teach that the copolymer is formed by the specific emulsion polymerization method disclosed in current claim 13. However, Atkins teaches the formation of copolymers which utilize taggants wherein a water in oil polymerization technique is utilized by disposing the monomers in an aqueous phase along with a pH buffer, mixing an oil phase with a surfactant and adding the aqueous phase to the oil phase (page 21, lines 3-24). Furthermore an initiator is added to the emulsion (page 21, lines 18-20). It would be obvious to one of ordinary skill in the art to utilize the water in oil emulsion tagged polymer synthesis method of Atkins in the synthesis of tagged polymers of Nuutinen, since applying such a known method of emulsion polymerization would lead to the predictable result of successful formation of tagged polymers (KSR D, MPEP 2141). Also, given the teaching of Nuutinen that emulsion polymerization maty be used to form the tagged polymers, it would be obvious to try from the limited amount of emulsion types; water in oil, oil in water and dispersion emulsions (KSR E).
Regarding claim 14, it would be obvious to one of ordinary skill in the art to remove excess monomers, since such would only involve purification of a final product. It is noted that no novel removing step is claimed.
Regarding claim 15, Atkins discloses adding an inverting surfactant package (see page 22, lines 1-4).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PHILIP C TUCKER whose telephone number is (571)272-1095. The examiner can normally be reached M-F 8-4:30.
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, Alexa Neckel can be reached at 571-272-2450. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PHILIP C TUCKER/Supervisory Patent Examiner, Art Unit 1745
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