DETAILED ACTION
Status of Application
This action is responsive to national-stage application filed 01/08/2024. Following entry of the preliminary amendment filed 08/29/2024, new claims 24-43 are currently pending and under examination herein.
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 . However, 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 a 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.
Information Disclosure Statement(s)
The information disclosure statement(s) (IDS) filed on 03/15/2024 is in compliance with the provisions of 37 CFR 1.97, 1.98 and MPEP § 609, and therefore the information referred to therein has been considered as to the merits. Initialed copies of the IDS are included with the mailing/transmittal of this Office action.
Objection – Drawings
The drawings are objected to because where, as here, the drawings consist of a single drawing view, the view must not be numbered and the abbreviation “FIG” must not appear. See 37 CFR 1.84(u)(1). A corrected drawing sheet in compliance with 37 CFR 1.121(d) is 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.
Objection – Specification
The disclosure is objected to because of the following informalities: all references to “FIG. 1” (see, e.g., p. 3, line 26 and p. 7, line 36) should be revised to refer to –The [or the] figure-- to secure consistency with the replacement drawing sheet required supra.
Appropriate correction of the specification is required.
Common Ownership Notice
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 Rejections – 35 U.S.C. 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.
Claims 24-27 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sogah (US 4906713).
Regarding Claims 24-27: Sogah discloses the compound 1,4-Bis(3-methacryloxypropyldimethylsilyl)butane (see Col. 18, lines 26 and 42; and Col. 22 (claim 6), line 6), which Sogah uses as comonomer in ladder polymer formation (see Col. 18, line 50 et seq.). 1,4-Bis(3-methacryloxypropyldimethylsilyl)butane is a synonym of 1,4-butanediylbis[(dimethylsilylene)-3,1-propanediyl]-2-methyl-2-propenoic acid ester, which has registry number RN 128171-08-4 and the following structure:
PNG
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141
517
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. As such, the disclosed compound is a species under the Applicant’s recited formula [claim 24] where each R1 independently represents a methyl group [for claim 25]; each R2 is a methyl group [for claim 26]; each Z independently represents a divalent alkylene group having from 3 to 12 carbon atoms (viz., C3 propanediyl) [for claim 27]; and Q represents a divalent alkylene group having from 1 to 36 carbon atoms (viz., C4 alkylene). The description in a reference of a single embodiment (species) of broadly claimed subject matter (genus) constitutes a description of the invention for anticipation purposes. In re Luckach, 169 USPQ 795 (CCPA 1971). Further, where the prior art teaches the identical chemical composition as claimed, the properties applicants disclose and/or claim are necessarily present therein. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Thus, although not recognized by Sugah, the “free radical polymerizable” property recited in claim 24 must be presumed to inhere in said disclosed compound having a chemically identical structure to the claimed monomer.
Pertinent Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Yin et al (US 11952450 B2) is cited as an English language equivalent of document D1 (WO 2021/12700 A1) cited in the ISR (“A” category) for the Applicant’s corresponding international application. The citation does not teach the present invention.
Allowable Subject Matter
Claims 28-43 are deemed free of the prior art.
Claim 28 is objected to as being dependent on a rejected base claim, but would be allowable if rewritten in independent form including all the limitations of the base claim and any intervening claim.
Claims 29-43 are allowed.
The closest prior art to Sugah, discussed above, and Yin et al does not describe the inventions of claims 28-43, especially the free radically polymerizable monomer of claim 28, wherein Q represents -CH2CH2-, or the free radically polymerizable composition according to independent claim 29, comprising: i) a free radically polymerizable monomer represented by recited formula wherein, inter alia, Q represents a divalent alkylene group having from 1 to 36 carbon atoms; and ii) a free-radical polymerization initiator. Furthermore, neither Sugah nor Yin et al is found to provide proper rationale for modifying either of their respective inventions into the invention of any of claims 28-43.
Correspondence
Any inquiry concerning this communication should be directed to Examiner F. M. Teskin whose telephone number is (571) 272-1116. The examiner can normally be reached on Monday through Friday from 9:00 AM - 5:30 PM.
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, Robert Jones, can be reached at (571) 270-7733. The appropriate fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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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) Form at https://www.uspto.gov/patents/uspto-automated- interview-request-air-form.
/FRED M TESKIN/Primary Examiner, Art Unit 1762
/FMTeskin/09-19-26
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