Detailed 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 .
Indefiniteness Rejection
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 1-18 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 claims 1, 4, and 17, it is unclear how to interpret the definition of R1 and R3 in view of the use of the “, or” immediately after “cyano group”, since only two substitution species are set forth; the purpose of the comma is unclear in defining exactly what substituent species are present. This issue is also present with respect to the definition of R2 and R4 within claim 17.
Secondly, with respect to claim 1, when m equals 0 and p equals an integer up to 6, a segment of repeating carbonyl groups is specified; however, it is unclear if this is correct.
Thirdly, with respect to claim 2, it is unclear how to interpret the definition of X11 to X14 in view of the “O; or S”; the purpose of the semi-colon is unclear and renders the claim indefinite.
Fourthly, with respect to claim 11, applicants have claimed that the composition comprises a second compound; however, an endpoint of the associated mole% quantity ratio is set forth as 100 mole% : 0 mole%, which excludes the second compound. Accordingly, it cannot be determined if the second compound is mandated to be present. Clarification as to the presence of the second compound is required.
Double Patenting
4. The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
5. Claims 1, 3, 4, and 6-17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of copending Application No. 18/688,177 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because each set of claims encompasses a polycarbonate having a segment that corresponds to instantly claimed Chemical Formula 1. The position is taken that in the instant case, R11 and R12 may be linked to form a cyclic structure corresponding to the ring structure bridging the phenyl rings in the copending application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
6. Claims 1, 3, 4, and 6-17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-14, and 24-28 of copending Application No. 18/690,427 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because each set of claims encompasses a polycarbonate having a segment that corresponds to instantly claimed Chemical Formula 1.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
7. Claims 1-17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/703,805 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because each set of claims encompasses a polycarbonate having a segment that corresponds to instantly claimed Chemical Formula 1.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
8. Claims 1-4 and 7-17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of copending Application No. 18/712,506 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because each set of claims encompasses a polycarbonate having a segment that corresponds to instantly claimed Chemical Formula 1.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
9. Claims 1-5 and 10-17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of copending Application No. 18/729,793 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because each set of claims encompasses a polycarbonate having a segment that corresponds to instantly claimed Chemical Formula 1.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
10. Claims 1, 3, 4, and 13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 20 of copending Application No. 18/837,272 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because each set of claims encompasses a polycarbonate having a segment that corresponds to instantly claimed Chemical Formula 1.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Prior Art Rejection
11. 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.
12. Claims 1-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2023/036868 A1.
WO 2023/036868 A1 discloses within Examples 22 and 33 polycarbonate homopolymers and copolymers, wherein the polymers are produced by reacting diols corresponding to applicants’ Chemical Formula 1 and Chemical Formula 2-1 with diphenylcarbonate. Since the polymers are produced from reactants that meet those claimed, the position is taken that the claimed properties are inherently possessed by the disclosed polymers.
13. Claims 1-16 and 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP 2015086265 A.
JP 2015 086265 A discloses a polycarbonate produced from 9,9-bis[4-(2-hydroxyethoxy)-3-phenylphenyl]fluorene. See abstract and paragraphs [0053] and [0061] within the translation. Since the polymer is produced from reactants that correspond to those claimed, the position is taken that the claimed properties are inherently possessed by the disclosed polymer. Regarding claims 2, 5, and 11, JP 2015 086265 A discloses within paragraph [0054] that the polymer may be produced by copolymerization with additionally disclosed reactants, wherein 9,9-bis(4-hydroxyphenyl)fluorene and 9,9-bis(4-hydroxy-3-methylphenyl)fluorene are disclosed.
Conclusion
14. 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.
Information regarding the status of an application may be obtained from Patent Center. Status information for published applications may be obtained from Patent Center. Status information for unpublished applications is available through Patent Center to authorized users only. Should you have questions about access to the USPTO patent electronic filing system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
Examiner interviews are available via a variety of formats. See MPEP § 713.01. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) Form at https://www.uspto.gov/InterviewPractice.
/RABON A SERGENT/ Primary Examiner, Art Unit 1765
Prosecution Insights