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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Objections
Claims 12-19 are objected to because of the following informalities: “polymers (P)” should be “polymer (P)”. Appropriate correction is required.
Claims 20 and 23 are objected to because of the following informalities: “polymer (P)” should be “polymers (P)”. Appropriate correction is required.
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 11-23 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.
Claims 11-19: The definitions for x1, x2, y1 and y2 in formula (II) are not provided. It is unclear which values for x1 and x2 correspond to a sum of 10-2000 and which values for y1 and y2 correspond to y1+y2 of 3*(x1+x2+y1+y2)/100 to 90*(x1+x2+y1+y2)/100. Additionally, it is unclear if one of x1 or x2 and one of y1 or y2 can be zero (i.e. not present). Therefore claim 11 and dependent claims 12-19 are indefinite
Claims 20-22: It is unclear what the process is for producing organyloxysilyl-terminated polymers (P), wherein the first process step is providing the organyloxysilyl-terminated polymers (P) (i.e. first step is for providing the polymers (P) that are intended to be produced by the process). The definitions for x1, x2, y1 and y2 in formulas (II-III) are not provided. It is unclear which values for x1 and x2 correspond to a sum of 10-2000 and which values for y1 and y2 correspond to y1+y2 of 3*(x1+x2+y1+y2)/100 to 90*(x1+x2+y1+y2)/100. Additionally, it is unclear if one of x1 or x2 and one of y1 or y2 can be zero (i.e. not present). Furthermore, the definitions for a and b in formula (V) are not provided. Accordingly, claim 20 and dependent claims 21-22 are indefinite. For the purpose of examination, a will be interpreted as 0, 1, or 2 and b will be interpreted as 1-10.
Claim 23: The definitions for x1, x2, y1 and y2 in formula (II) are not provided. It is unclear which values for x1 and x2 correspond to a sum of 10-2000 and which values for y1 and y2 correspond to y1+y2 of 3*(x1+x2+y1+y2)/100 to 90*(x1+x2+y1+y2)/100. Additionally, it is unclear if one of x1 or x2 and one of y1 or y2 can be zero (i.e. not present). Therefore claim 23 is indefinite.
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 21-22 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 21 recites a process for producing organyloxysilyl-terminated polymers (P). The organyloxysilyl-terminated polymers (P) further comprising at least one constituent (A)-(H) fails to further limit the process of claim 21. The produced organyloxysilyl-terminated polymers (P) incorporated within an adhesive or sealant fails to further limit the process of claim 21. 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.
Allowable Subject Matter
Claims 11, 20 and 23 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.
Claims 12-19 and would be allowable if rewritten 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 and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Goulart, G.; Sanchez, J.-Y.; Armand, M. Electrochimica Acta, 1992, 37, 1589 discloses copolymers of 1,3-dioxolane (DXL) and 4-methyl-1,3-dioxolane (MXDL) as a host polymer for polymer electrolytes [abstract; §Experimental; Scheme 1], wherein the copolymer has a Mn of 1.0 x 104 [Table 2] and contains 58% MXDL and 42% DXL [§Results and Discussion; Scheme 3]. Goulart et al. (Electrochimica Acta, 1992, 37, 1589) discloses the copolymer does not contain end-groups and has a macromolecular cyclic backbone [§Results and Discussion].
Ziche et al. (US 2005/0119436) discloses the preparation of organyloxysilyl-terminated polymers [abstract], wherein α,ω-dihydroxy-terminated polymers of formula (II) are reacted with isocyanato-functional silanes of formula (III) [0008-0017]. Ziche et al. (US ‘436) does not disclose polymers of formula (II) having A corresponding to instant formula (II). There would be no motivation to react the DXL-MDXL copolymer of Goulart et al. (Electrochimica Acta, 1992, 37, 1589) in the process of Ziche et al. (US ‘436), as the DXL-MDXL copolymer is not α,ω-dihydroxy-terminated.
See attached form PTO-892.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL F PEPITONE whose telephone number is (571)270-3299. The examiner can normally be reached on 7:00 AM - 3:30 PM.
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/MICHAEL F PEPITONE/Primary Examiner, Art Unit 1767
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