3Notice 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 .
Response to Amendment
Applicants’ amendments to claims, filed on 12/17/2025, are hereby acknowledged.
It is noted applicant has canceled claims 36-39 which were directed to elected species (claim 38) and non-elected species (claims 36, 37, and 39). Claim 23 is amended to incorporate claims 36-39. Claim 35 is the only remaining non-elected species which will be rejoined, searched, and considered.
Although incorporation of non-elected species (claims 36, 37, and 39) is improper and would normally necessitate an election by original presentation, in the interest of furthering prosecution, the Office is waiving said election by original presentation.
Claims 41-45 are newly added. Thus, claims 23-35 and 40-45 are pending and under examination.
Response to Arguments
Applicants’ arguments none of Cai, Covezzi, or Chang anticipates amended claim 23, filed on 12/17/2025, have been fully considered and are persuasive. The rejection of claims 23-34, 38, and 40 has been withdrawn.
Applicants argue that new claim 42 is presented to address an assumption that claim 39 is allowable because it was not rejected in the Office Action. The presumption of claim 39 being allowable, as said claim was not rejected, is faulty, as said claim was withdrawn from consideration, per the aforementioned election without traverse of species 4 (see species restriction mailed on 11/15/2024 and Applicants’ response filed on 1/15/2025).
Below are new claim objections and new grounds of rejection in response to the amendments to the claims.
Claim Objections
Claims 23, 35, 42, and 43 are objected to because of the following informalities:
(i) Claim 23 recite an amount of hydrogen and ethylene on a unit basis of “mol%”. It appears that the recitations should be in “vol%”; see [0194] and [0199], respectively, of instant Specification.
(ii) Claim 35 recites a mixture of toluene and benzene on a unit basis of “mol%”. It appears that the recitation should be in "vol%"; see [0196] of instant Specification.
(iii) Claim 40 recite an amount of hydrogen on a unit basis of “mol%”. It appears that the recitation should be in “vol%”; see [0195] of instant Specification.
Appropriate correction is required.
(iv) Claim 42 recite an amount of hydrogen on a unit basis of “mol%”. It appears that the recitation should be in “vol%”; see [0194] of instant Specification.
Appropriate correction is required.
(v) Claim 43 recites a mixture of toluene and benzene on a unit basis of “mol%”. It appears that the recitation should be in "vol%"; see [0196] of instant Specification.
(vi) Claims 44-45, which depend from claim 42, do not cure the deficiency of claim 42, and are thus included in the objection thereof.
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 41 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 41, which depends from claim 23, recites “a hydrocarbon selected from xylene, ethylene …” However, claim 23 requires ethylene as a component of claimed composition. Therefore, it is not clear what the intent is by the recitation in claim 41 which includes ethylene.
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 24-35 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.
Claims 24-34 depend from claim 23 which is a product-by-process claim. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). MPEP 2113(I). Claims 24-34 are directed to the process claims which do not further limit claim 23 which is treated solely as a product claim and no patentable weight is given to the process of making limitations.
Claim 35 fails to further limit the composition of claim 23, in that claim 23 recites volume percentages of toluene and benzene in the composition, and claim 35 recites a mixture of toluene and benzene, said mixture present in an amount of about 5 mol% to about 40 mol%. It appears that claim 35 should recite "vol%" instead of "mol%"; see paragraph [0196] of Applicants' Specification. In the event that claim 35 is interpreted as "vol%", the percentage range of the mixture recited therein (5-40 vol%) conflicts with the sum of the volume percentage ranges for toluene (1-15 vol%) and benzene (5-40 vol%). For example, 5 vol% benzene leaves no room for a mixture of benzene and toluene; at least 1 vol% toluene is required by claim 23.
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 23, 40, and 42-45 would be allowable if rewritten to overcome the aforementioned objections thereto.
Claim 41 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.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to IN SUK C BULLOCK whose telephone number is (571)272-5954. The examiner can normally be reached M-F 8:00 AM-4:30 PM.
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/IN SUK C BULLOCK/Supervisory Patent Examiner, Art Unit 1772
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