, 11, 13-15Detailed Office Action
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 112
2. 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.
3. Claims 6, 7, 13, and 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.
Firstly, with respect to claim 6, applicants have failed to define the R variable.
Secondly, with respect to claim 7, the language, “method of according to”, within line 1 is incorrect.
Thirdly, with respect to claim 13, the language, “the tensile properties”, lacks antecedence.
Fourthly, with respect to claim 15, as drafted, the Pr value range has not been properly claimed.
4. 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.
5. Claim 8 is 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. The Tm range within claim 8 is broader than the range within independent claim 1, and claim 8 is therefore not further limiting. 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.
Prior Art Rejection
6. 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.
7. Claims 1, 8, 10, 14, and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chen et al. (US 10,954,335 B2).
Chen et al. disclose the ring opening polymerization of eight-membered cyclic diolide using a catalyst with an yttrium metal center, wherein the resulting polymers possess molecular weights and melting temperatures that meet those clamed. See abstract; column 4, lines 5-61; column 6; Table 2; and Table 3.
8. Claims 1,4-8, 10, 11, 14, and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Carpentier et al. (US 2009/0149555 A1).
Carpentier et al. disclose the ring opening polymerization of a lactone, such as beta-butyrolactone using a catalyst with an yttrium metal center, including a catalyst that corresponds to that of claim 5, wherein the resulting polymers possess molecular weights, Pr values, and melting temperatures that meet those clamed. See abstract; page 5, compound 2; and paragraphs [0063], [0067], [0074], [0116]; and Table 2.
9. Claims 1, 4-8, 10, 11, 14, and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ajellal et al. (Syndiotactic-Enriched Poly(3-hydroxybutyrate)s via Stereoselective Ring-Opening Polymerization of Racemic beta-Butyrolactone with Discrete Yttrium Catalysts).
Ajellal et al. disclose the ring opening polymerization of beta-butyrolactone using a catalyst with an yttrium metal center, including a catalyst that corresponds to that of claim 5, wherein the resulting polymers possess molecular weights, Pr values, and melting temperatures that meet those clamed. See abstract; Schene 1 and Table 1.
Allowable Subject Matter
10. Claims 12 and 16 are allowed.
11. Claims 2, 3, and 9 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
12. Claim 13 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
13. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Rabon A Sergent whose telephone number is (571)272-1079. The examiner can normally be reached on Monday through Friday from 9:00 AM until 5:00 PM, ET.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Riviere Kelley, can be reached at telephone number 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RABON A SERGENT/Primary Examiner, Art Unit 1765
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