DETAILED ACTION
Examiner’s Note
The Examiner acknowledges the cancelation of claims 25-35 and 39-44 in the amendments filed 6/11/2026.
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 of Groups I and Species (I)(A), claims 1-10 and 24, in the reply filed on 6/11/2026 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)).
Claims 11-23 and 36-38 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention(s), there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 6/11/2026.
Claim Objections
Claim 4 is objected to because of the following informalities: please place a comma after “poly(glyoxyamide)”. Appropriate correction is required.
Claim 24 is objected to because of the following informalities: the claim should be amended to recite “…crosslinked derivative thereof, Formula IIIA…”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 4-6, 9-10 and 24 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for stimuli-responsive polymers such as the presently claimed/disclosed poly(glyoxylate)-based polymers (e.g., current claim 3), does not reasonably provide enablement for materials/methodology for arriving at the presently claimed subject matter of current claims 4-6, 9 and 24. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with these claims.
Case law holds that applicant’s specification must be “commensurately enabling [regarding the scope of the claims]” Ex Parte Kung, 17 USPQ2d 1545, 1547 (Bd. Pat. App. Inter. 1990). Otherwise undue experimentation would be involved in determining how to practice and use applicant’s invention. The test for undue experimentation as to whether or not all compounds within the scope of claims 4-6, 9 and 24 as claimed can be formed and whether claims 4-6, 9 and 24 meet the test is stated in Ex parte Forman, 230 USPQ 546, 547 (Bd. Pat. App. Inter. 1986) and In re Wands, 8 USPQ2d 1400, 1404 (Fed.Cir. 1988). Upon applying this test to claims 4-6, 9 and 24, it is believed that undue experimentation would be required because:
(a) The quantity of experimentation necessary is great since claims 4-6, 9 and 24 read on poly(glyoxyamide)-based compounds such as those of Formula (I) of current claims 9 and 24 and Formula (IIIB) of current claim 24, and the stimuli-responsive compounds of Formulas (II) and (IIIA); while the specification only reiterates the claimed compounds with no instruction as to the materials/methodology for synthesizing the stimuli-responsive compounds of Formulas (I), (II), (IIIA) and (IIIB).
(b) There is no direction or guidance presented for synthesizing the stimuli-responsive compounds.
(c) There is an absence of working examples concerning the materials and methods towards synthesizing the stimuli-responsive compounds.
In light of the above factors, it is seen that undue experimentation would be necessary to make the invention of claims 4-6, 9 and 24. See also Item (III)(1) (insufficient Disclosure (Article 5 PCT)) of the Written Opinion of the International Searching Authority mailed 10/17/2022.
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 9 and 24 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 9, it is unclear from the claim limitations what is, and is not, being claim as the integers m and n are both recited as possibly being zero (0), which provides an indefinite interpretation of recited Formula (I).
Regarding claim 24, it is unclear from the claim limitations what the Applicant is claiming given that it is unclear to what the recitation of “wherein at least one of the stimuli-responsive polymer functional layer” is referring; that is, the “at least one additional functional layer,” or the or the “functional layer,” or some other interpretation.
Regarding claim 24, it is unclear from the claim limitations what the Applicant is claiming given that that the -CH(R2)3 group of the Y-substituent requires the carbon atom to have a valence of five (5).
Regarding claim 24, it is unclear from the claim limitations what the Applicant is claiming given that that the g integer is not present in Formula (II).
Regarding claim 24, it is unclear from the claim limitations what defines the metes and bounds of the claimed invention given that R5 and R6 are “optionally R10,” even though R5 was previously recited as being R10 in addition to the other substituents (e.g., allyl); and wherein R6 is defined as comprising the specifically recited substituents (e.g., benzyl). Thus, it is unclear if the R5 and the R6 substituents must comprise one of the “each, independently” compounds, or if it doesn’t, thus require the R10 substituent. In addition, the “each, independently” recitation is further confusing as Formula (II) only comprises one R5 and one R6.
Regarding claim 24, it is unclear from the claim limitations, and in light of the specification, what structure, or scope of structures, is intended via the recitation of a “detection unit” for R10.
Regarding claim 24, it is unclear from the claim limitations what is intended via the “each, independently” recitation as Formula (II) only comprises one R10 and one R11.
Regarding claim 24, it is unclear from the claim limitations what is intended via the “each, independently” recitation as Formula (IIIA) only comprises one Z1 and thus one R14.
Regarding claim 24, it is unclear from the claim limitations what is intended via the “each, independently” recitation as Formula (IIIA) only comprises only one Z2.
Regarding claim 24, it is unclear from the claim limitations what is intended via the “each, independently” recitation as Formula (IIIB) only comprises only one Z3 and thus only one integer p.
Regarding claim 24, it is unclear from the claim limitations what is intended via the “each, independently” recitation as Formula (IIIB) only comprises only one Z3 and thus only one R15.
Regarding claim 24, it is unclear from the claim limitations what is intended via the “each, independently” recitation as Formula (IIIB) only comprises only one Z4 and thus only one R17.
Regarding claim 24, it is unclear from the claim limitations what is intended via the “each, independently” recitation as Formula (IIIB) only comprises only one Z3 and thus only one R15 and thus only one R18.
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(s) 1-4 and 7-8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Blachut et al. (WO 2021/046572 A1).
Regarding claims 1 and 3-4, Blachut teaches a multilayer film (layered construction) comprising, in order, cap layer(s) (205) (first layer, base layer), a stimulus polymer responsive (SRP) layer (203) on the surface of a substrate (201). The multilayer film comprises multiple cap layers (205) (para 0074, 0076; Fig. 2) and comprise one or more polymer layers (base layer is a polymeric film). The SRP layer comprises, inter alia, poly(aldehyde), poly(glyoxylate) (current claim 4), etc. (para 0010).
The Examiner notes that cap layer(s) (205) necessarily comprise a first side and a second side, with SRP layer (203) on one of the first and second sides (applied to a portion) (see, for example, Fig. 2); that the SRP layer (203) (i.e., the functional layer) necessarily comprises a first side and a second side, with one of the first and second sides of the SRP layer (203) in applied to one of the first and second sides of a cap layer (205).
Regarding claim 2, Blachut teaches that the SRP responds to light, heat and chemistry (para 0025).
Regarding claim 7, as noted above, Blachut teaches that the second side of the SRP layer (203) is on one of the first and second sides of a cap layer (205) (functional layer on the first side of the first layer), and so the first side of the SRP layer (203) is on the substrate (201) (second layer on the first side of the functional layer).
Regarding claim 8, as noted above, the cap layer(s) (205) comprise polymer layers, while the substrate (201) comprises metals and ceramic (dissimilar compositions) (para 0083).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FRANK D DUCHENEAUX whose telephone number is (571)270-7053. The examiner can normally be reached 8:30 PM - 5:00 PM.
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/FRANK D DUCHENEAUX/Primary Examiner, Art Unit 1788 7/20/2026
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