DETAILED ACTION
Summary
This is a non-final rejection for application 18/692,612 filed on 15 March 2024. The preliminary amendment filed on the same date is acknowledged. Claims 1-9 are pending.
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 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.
Claims 1-9 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.
Claim 1 recites monomers in “the first and second portions”. Claim 4 also recites adding a chain transfer agent to the vessel along with “the second portion of the monomers”. There is insufficient antecedent basis for this limitation in the claim. Claim 1 earlier recites in step a) gradually adding the two monomers to a reactor vessel, but does not recite multiple portions or multiple addition steps of these monomers. Claim 9 recites “a first portion” but does not recite “a second portion” and neither Claim 1 nor Claim 4 depend upon Claim 9. Claims 2-3 and 5-9 are also rejected because they depend upon, and therefore include, Claim 1.
Claim 5 recites the limitation "the chain transfer agent". There is insufficient antecedent basis for this limitation in the claim. Claim 5 depends upon, and therefore includes Claim 3 which includes the limitations of Claims 1 and 2. None of these claims recites “a chain transfer agent”. Claim 4 recites a chain transfer agent, but Claim 5 does not depend upon Claim 4.
Allowable Subject Matter
Claims 1-9 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.
The following is a statement of reasons for the indication of allowable subject matter:
The closest prior art, NAKAHARA (US-20160326288-A1), teaches a process for copolymerizing a cyclic ketene acetal monomer and a methacrylic ester monomer in a tank reactor in the presence of a solvent and polymerization initiator where the methacrylic ester monomer can be t-butyl acrylate, but NAKAHARA does not exemplify t-butyl acrylate and does not teach contacting its copolymer with a deprotection agent to form a copolymer of the cyclic ketene acetal monomer and (meth)acrylic acid as is recited by Claim 1. REN (Macromolecules, 2007, vol. 40.22: 7834-7841), cited in the International Search Report and included in the IDS dated 15 March 2024, teaches copolymerization of the cyclic ketene acetal monomer 5,6-benzo-2-methylene-1,3-dioxepane and methacrylic acid in a solvent with an initiator, but REN does not teach the steps of copolymerizing the cyclic ketene acetal monomer with t-butyl (meth)acrylate and then contacting the resultant copolymer with a deprotection agent as is recited by Claim 1. LENA (Macromolecules 53.10 (2020): 3994-4011), teaches batch and semi-batch copolymerization of acrylates with the cyclic ketal acetal monomer 2-methylene-1,3 dioxepane (MDO) in the presence of initiator and solvent (Abstract, Table 1), but LENA does not teach the t-butyl acrylate monomer and does not teach contacting its copolymer with a deprotection agent to form a copolymer of the cyclic ketal acetal monomer and acrylic acid as is recited by Claim 1. FILIPPOV (Macromolecules 2018, 51, 8316−8323), cited in the International Search Report and included in the IDS dated 15 March 2024, teaches a deprotection step for copolymers which include blocks of t-butyl acrylate to form blocks of acrylic acid, but FILIPPOV does not teach copolymerizing t-butyl acrylate with a cyclic ketal acetal monomer as is recited by Claim 1. Because NAKAHARA teaches forming molded articles from its copolymers and does not exemplify t-butyl acrylate, there is insufficient evidence that one would be motivated to combine the copolymerization step taught by NAKAHARA with the deprotection step taught by FILLIPPOV and arrive at the claimed process.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID R FOSS whose telephone number is (571)272-4821. The examiner can normally be reached Monday - Friday 8:00 - 5:00.
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/D.R.F./Examiner, Art Unit 1764
/KREGG T BROOKS/Primary Examiner, Art Unit 1764
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