DETAILED ACTION
Claim Objections
Claim 1 is objected to because of the following informalities: In line 7, delete “[Chem. 1]”.
Claim 1 is objected to because of the following informalities: In line 8, delete the open parenthesis mark “ ( ” that precedes “where R1”.
Claim 1 is objected to because of the following informalities: On page 5, line 4, delete the close parenthesis mark “ ) ” that appears after “are absent”.
Claim 1 is objected to because of the following informalities: On page 5, line 5, delete “[Chem. 2]”.
Claim 1 is objected to because of the following informalities: On page 5, line 6, delete the open parenthesis mark “ ( ” that precedes “where R11”.
Claim 1 is objected to because of the following informalities: On page 5, line 12, delete the close parenthesis mark “ ) ” that appears after “are absent”.
Claim 4 is objected to because of the following informalities: The method claim lacks an action verb. Delete the verb “is produced”, written in passive voice (line 3), and replace “wherein” (line 2) with “comprising producing”, written in active voice.
Claim 6 is objected to because of the following informalities: The method claim lacks an action verb. Delete the verb “are polymerized”, written in passive voice (line 3 and 4), and replace “wherein” (line 3) with “comprising polymerizing”, written in active voice.
Claim 6 is objected to because of the following informalities: In line 4, delete “the” with “Groups 4”.
Claim 6 is objected to because of the following informalities: On page 7, line 1, delete “[Chem. 3]”.
Claim 6 is objected to because of the following informalities: On page 7, line 2, delete the open parenthesis mark “ ( ” that precedes “where R1”.
Claim 6 is objected to because of the following informalities: On page 7, line 8, delete the close parenthesis mark “ ) ” that appears after “are absent”.
Claim 6 is objected to because of the following informalities: On page 7, line 9, delete “[Chem. 4]”.
Claim 6 is objected to because of the following informalities: On page 7, line 10, delete the open parenthesis mark “ ( ” that precedes “where R11”.
Claim 6 is objected to because of the following informalities: On page 8, line 5, delete the close parenthesis mark “ ) ” that appears after “are absent”.
Claim Rejections - 35 USC § 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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 2, and 4-6 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Tang et al. (J. Am. Chem. Soc. 2021, 143, 17953).
Entry 1 in Table 1 of Tang et al. discloses a polar group-containing copolymer having units derived from ethylene and 6-ethenyl-3-ethylidene-tetrahydro-2H-pyran-2-one. The copolymer has a molecular weight distribution Mw/Mn of 2.9 and is prepared in the presence of a palladium catalyst. Applicant cannot rely upon the certified copy of the foreign priority application to overcome this rejection because a translation of said application has not been made of record in accordance with 37 CFR 1.55. When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Tang et al. (J. Am. Chem. Soc. 2021, 143, 17953).
The discussion of the disclosure of the prior art from the preceding paragraph is incorporated here by reference. Tang et al. is silent with respect to the degree of methyl branching in the copolymer. However, in light of the fact that prior art copolymer is substantially the same as that described in instant claims and is prepared by the process recited in claims, reasonable basis exists to believe that prior art copolymer exhibits claimed microstructural property. Since the PTO cannot perform experiments, the burden is shifted to the Applicants to establish an unobviousness difference. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP § 2112-2112.02.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Rip A. Lee whose telephone number is (571)272-1104. The examiner can be reached on Monday through Friday from 9:00 AM - 5:00 PM. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones, can be reached at (571)270-7733. The fax phone number for the organization where this application or proceeding is assigned is (571)273-8300.
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/RIP A LEE/Primary Examiner, Art Unit 1762 September 10, 2026
