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 .
Claim Objections
Claim 6 is objected to because of the following informalities: Claim 6 recites, “2) sujecting…” which appears to be typographical error. 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 1-15 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 claims 1-7, 9-12, the phrase "preferably" and/or “more preferably” renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claims 1, 9, 10, and 13, also recites “selected from the group consisting of…or…” The claims are unclear whether the alternatives are from a closed list (i.e. consisting of), or an open list (i.e. “or”). See MPEP 2173.05(h) (e.g., alternatives may be set forth as "a material selected from the group consisting of A, B, and C" or "wherein the material is A, B, or C").
Claims 8, 14-15, are dependent claims with fail to alleviate the issues above.
Claim Rejections - 35 USC § 102
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 the 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.
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.
Claim(s) 1-15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP S60-250343 A to Yokoyama et al. (hereinafter Yokohama).
Regarding claims 1-15, Yokoyama teaches a polymer having the formula (II)
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, (See page 4 of machine translation), wherein x is 0-90 mol%, y is 0-50 mol%, and z is 10-100%, (page 4), and R1, R2, R3, are alkyl groups of 1-10 carbons (page 3 of machine translation). The above formula (II) meets the claimed formula (I) when x is 70-90 mol%, y is 0 mol% and z is 10-30 mol%, R1 to R2 and C1 are methyl groups. Specifically, examples of the above polymer has the formula
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, (polymer 1), and
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(polymer 4), which meets the claimed formula (I).
Yokoyama further teaches the above polymer is obtained by copolymerizing
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wherein n is 1-10, and R1 and R2 are the same above, and
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, wherein m is 1-10, with a quarternizing agent having the formula R3-X, wherein X is a halogen Cl anion and R3 is the same as above, and the polymerization occurs at a reaction temperature of 50-100 deg C, wherein the quarternizing agent is used in a molar ratio of 0.5-5 times the cyclic compounds. (page 3-5). The above is reacted at 80 deg C, in a solvent of ethanol for 5 hours, cooled and precipitated, the precipitate is filtered, removed and dried to form the polymer. (Example 1). In the Examples, polymer 4 appears to be a copolymerization of caprolactam with diethylaminocaprolactam at 70:30 molar ratio with diethyl sulfuric acid, (See polymer 4, 70:40 mol%), which meets the claimed formula and method. The above polymer is used in a coating/film composition by adding a solvent, and optionally a binder, surfactant, matting agent, curing agent, or lubricant. (page 7-9).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HA S NGUYEN whose telephone number is (571)270-7395. The examiner can normally be reached Mon-Fri, Flex schedule 7:30am-4:00pm.
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/HA S NGUYEN/Primary Examiner, Art Unit 1766
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