DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after allowance or after an Office action under Ex Parte Quayle, 25 USPQ 74, 453 O.G. 213 (Comm'r Pat. 1935). Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant's submission filed on 4/30/26 has been entered.
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 .
Specification
The disclosure is objected to because of the following informalities:
In paragraph 59, the following monomers are listed, which have the same errors as in the 112 rejections below:
“3-(meth)acryloyloxy propyl acid” and “4-(meth)acryloyloxy butyl acid”.
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.
Claim 12 is 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 the two monomers “3-(meth)acryloyloxy propyl acid” and “4-(meth)acryloyloxy butyl acid”, which is confusing and can be interpreted several ways. First, the “-yl acid” isn’t valid nomenclature because “propyl” and “butyl” are substituent groups names and can’t take the acid suffix. Therefore, there is some type of error in the word, which leads to several interpretations.
1) The monomers may have been intended to be -oic acid; namely “3-(meth)acryloyloxy propanoic acid” and “4-(meth)acryloyloxy butanoic acid”. This would be a monomer with a pendant carboxylic acid group.
2) The monomers may have been a truncation of “acid phosphate”; namely “3-(meth)acryloyloxy propyl acid phosphate” and “4-(meth)acryloyloxy butyl acid phosphate”. This would be a monomer with a pendant phosphoric acid group. Similarly, any other acid could be missing, such as “succinate”, “phthalate”, etc.
3) Lastly, the acid could have been intended to be “acrylate”; namely “3-(meth)acryloyloxy propyl acrylate” and “4-(meth)acryloyloxy butyl acrylate”.
Since -yl acid is not valid nomenclature introduced by some type of error, it is impossible to determine what the intended monomer was and therefore, the claim is indefinite. In amending the instant claim, care should be taken to not introduce new matter.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARK S KAUCHER whose telephone number is (571)270-7340. The examiner can normally be reached M-F 8-6 PM EST.
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/MARK S KAUCHER/Primary Examiner, Art Unit 1764
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