DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
Election/Restrictions
Applicant’s election of Group III and the species shown below in the reply filed on 7/21/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
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214
147
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Greyscale
(1st monomer)
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195
94
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Greyscale
(2nd monomer)
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148
123
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Greyscale
(3rd monomer) wherein RX is
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57
128
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RF is Me and n is 30 to 100.
Claims 1, 2, 4, 14-16, 24, 39, 87, and 91-95 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention (claims 1, 2, 4, 87, 91-95) or a nonelected species (claims 14-16, 24, 39), there being no allowable generic or linking claim.
Drawings
The drawings are objected to because they recite the label “Figure”. The numbering of figures should be preceded by the expression “Fig.” (MPEP 1825). Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 3, 6, 8, 9, 25, 28, and 81 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.
Regarding claim 3: Claim 3 contains numerous recitations of the phrase “or substituted or unsubstituted,”. See the definitions of variables RQ, RY, RZ, RK1, LK1, RN1, RK2, LK2, RN2 . Note the comma after the word “unsubstituted”. As written, this phrase does not describe a species; rather, it is written as its own separate species. It is unclear what structures are intended to fall within the scope of the species “substituted or unsubstituted.
Furthermore, note that claim 3 states that at least one instance of RK1 and one instance of RK2 that are attached to the same instance of silicon can be joined with the intervening atom to form a (un)substituted carbocyclyl group. There is insufficient antecedent basis for the phrase “the intervening atom” in the claim. It is unclear whether this phase is intended to refer to the silicon atom or some other atom.
Finally, the monomer of formula (B) has the structure shown below.
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151
174
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Greyscale
Note that connecting RK1 and RK2 with one another will result in a ring structure that contains the silicon atom in addition to RK1 and RK2. In contrast, the term carbocyclyl refers to a non-aromatic cyclic hydrocarbon group that has zero heteroatoms in the ring system (see specification page 8: lines 27-29). It is therefore unclear how RK1 and RK2 can be joined to form a carbocyclyl group (i.e., a ring that contains only carbon and zero heteroatoms), as written in the instant claim, when the resulting ring structure would necessarily contain a silicon atom (i.e., a heteroatom).
Claims 6, 8, 9, 25, 28, and 81 depend from claim 3 and do not correct these deficiencies. The claims are therefore indefinite per the same rationale as claim 3.
Regarding claim 6: Similar to claim 3, claim 6 contains multiple recitations of the species “substituted or unsubstituted,”. The claim is therefore indefinite, as it is unclear what structures fall within the scope of this species.
Regarding claim 8: Similar to claim 3, claim 8 contains multiple recitations of the species “substituted or unsubstituted,”. The claim is therefore indefinite, as it is unclear what structures fall within the scope of this species.
Regarding claim 28: Similar to claim 3, claim 8 contains multiple recitations of the species “substituted or unsubstituted,”. The claim is therefore indefinite, as it is unclear what structures fall within the scope of this species.
Allowable Subject Matter
Claims 3, 6, 8, 9, 25, 28, and 81 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
The closest prior art of record is Shieh et al, published in Nature Chemistry vol 11 (2019). Shieh discloses the production of a copolymer having the structure shown below.
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87
226
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Greyscale
This polymer is obtained via polymerization of the monomers shown below in the presence of a metathesis catalyst.
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123
88
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Greyscale
Note that the claimed invention requires that at least one instance of either the first or second monomer comprises a latent fluoride moiety. In contrast, Shieh does not disclose the use of monomer(s) having such fluoride groups. Furthermore, no reference has been found that would provide a motivation to modify the prior art polymer to include a latent fluoride moiety as required. The claims are therefore allowable over the prior art of record.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEFFREY S LENIHAN whose telephone number is (571)270-5452. The examiner can normally be reached Mon.-Fri. 5:30-2:00PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Riviere Kelley can be reached at 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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/JEFFREY S LENIHAN/Primary Examiner, Art Unit 1765
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