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 .
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim 12 is rejected under 35 U.S.C. §101 because the claimed recitation of a use, without setting forth any steps involved in the process results in an improper definition of a process under 35 U.S.C. § 100(b); i.e., the claim language results in a claim which is not a proper process claim under 35 U.S.C. § 101. See MPEP 2173.05(q)
Claim 12 recites "A method of using…comprising using the polyalkylene oxide ester polymer for…” In this case, it is unclear if “using” is an actual step or not. See MPEP 2173.05(q).
This is an improper method claim because the claims do not appear to set forth any steps involved in the method and/or process and as a result, would not be a proper process claim under the definition of a “process” under 35 U.S.C. § 100(b); i.e., the claim language results in a claim which is not a proper process claim under 35 U.S.C. § 101. See MPEP 2173.05(q).
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 12 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.
Claim 12 recites "A method of using…comprising using the polyalkylene oxide ester polymer for…” In this case, it is unclear if “using” is an actual step or not. See MPEP 2173.05(q).
Allowable Subject Matter
Claims 1-11 are allowed.
Claim 12 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. §101 and under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
The following is an examiner’s statement of reasons for allowance: The closest prior art of record are listed in IDS file dated 02/09/2024 and 11/21/2023. However, none of the prior art of record teaches claimed unit of formula (I), (II) and (III), the polydispersity and the claimed range of ether groups and ester groups.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HA S NGUYEN whose telephone number is (571)270-7395. The examiner can normally be reached Mon-Fri, Flex schedule 7:30am-4:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached at (571)272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HA S NGUYEN/Primary Examiner, Art Unit 1766
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