-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 .
Priority
This application is a 371 of PCT/EP2022/087213 filed on 12/21/2022, which claims foreign priority in FR2114451 filed on 12/23/2021.
Claim Status
Claims 1-11 are pending and examined.
Claim Objections
Claims 1-11 are objected to because the claims are missing an article in front of the first word in each claim. Grounds of objection may be obviated by amending claim 1 to recite “A photodimerizable”; by amending claims 2-6 to recite “The polymer”; by amending claim 7 to recite “A composition”; by amending claims 8 and 9 to recite “The composition”; by amending claim 10 to recite “A cosmetic”; and by amending claim 11 to recite “The process”.
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 1-11 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 the limitation "the photodimerizable pendant group(s)" in line 3. There is insufficient antecedent basis for this limitation in the claim. Claim 1 provides antecedent basis for “the at least one photodimerizable pendant group”.
Regarding claim 1, the phrase "such as" in the definition of Y and Z renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
In the claim 1 the definitions of A, B, and X end with “(thio)carbonyl and (C2-C8)alkenylene radicals and combinations thereof”, which renders the claim indefinite because it is not clear if applicant intended “(thio)carbonyl and (C2-C8)alkenylene radicals” to be separate alternatives from which A is selected or if applicant intended the combination of the two to be a single alternative. If applicant intended for the two to be separate alternatives, it is recommended to delete “and” and separate the two with a comma. If applicant intended for the two to be single embodiment, it is recommended to make that clear, for example “a combination of (thio)carbonyl and (C2-C8)alkenylene radicals, and combinations thereof”.
Regarding claim 1, the phrases "in particular" and “preferably” in the definition of p render the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 1 recites the limitation "the molecule" in line 24. There is insufficient antecedent basis for this limitation in the claim.
Claim 1 line 25 recites “each of the groups mentioned may optionally be substituted with” which renders the claim indefinite because the use of “may be” in “may optionally be” implies that optional substitution may be optional. Ground of rejection may be obviated by replacing “may optionally be” with “are optionally”.
Claim 1 lines 26-30 recites a list from which the optional substituents are chosen. The list is indefinite because it recites fifteen chemical moieties where tenth and eleventh are separate with “or”, twelve and thirteenth are separated with “or”, and thirteenth and fourteenth are separated with “or”. It is not clear which of listed chemical moieties are considered alternatives from which the optional substituents are selected. If the applicant intended for all of the fifteen chemical moieties to be alternatives, then it is recommended to amend the claim by separating each of the alternatives with a comma and an “and” between the last two alternatives. Additionally, it is not necessary to recite the chemical classes sulfonato, amide, acyl, and ammonium, next to the chemical formula. It is recommended to amend the chemical class names.
The listed moieties recite “ammonium R’R”N+-“ which renders the claim indefinite because the nitrogen atom in the chemical formula only makes three bonds which makes a tertiary amine group and not an ammonium.
The phrase “with R, R’ and R”, which may be identical or different, representing a hydrogen atom or a (C1-C4)alkyl group” in lines 29-30 of claim 1, is indefinite because it uses “may be” which expresses a possibility. Ground of rejection may be obviated by replacing the phrase with “wherein R, R’, and R” are each independently selected from the group consisting of a hydrogen atom and a (C1-C4)alkyl group”.
Claim 2 recites the limitation "the photodimerizable pendant group(s)" in line 2. There is insufficient antecedent basis for this limitation in the claim. Claim 1 provides antecedent basis for “the at least one photodimerizable pendant group”.
The definition of R1 and R3 recites “which may be identical or different” and the use of “may be” implies a possibility which renders the claim indefinite. It is recommended to replace “may be” with “are”.
The definition of variable R2 is indefinite because it is not clear if hydroxyl is an optional substituent on the (C1-C6)alkyl or if hydroxyl is an alternative from which R2 is selected.
Regarding claim 2, the two occurrences of the phrase "such as" in the definition of R2 render the claim indefinite because it is unclear whether the limitations following the phrases are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 2, the phrase "preferably" in the definition of R2 renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 2, the phrase "such as" in the definition of Q- renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 2, the phrase "preferably" in the definition of Q- renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 2 recites the limitation "the molecule" in lines 21, 22, and 24. There is insufficient antecedent basis for this limitation in the claim.
Claim 2 recites “it being understood that the pendant group A2 can be connected to the rest of the molecule via R2” and “or connected to the rest of the molecule via R2 and A2”, which render the claim indefinite because the definition of R2 variable does not contain chemical moieties that allow for further covalent bonding. R2 is defined as a hydrogen atom or a (C1-C6)alkyl having optionally substituted with one or more halogen atoms. Additionally, the phrase renders the claim indefinite because in the embodiment when A2 connected to the rest of the molecule via R2, the bond via the
PNG
media_image1.png
51
96
media_image1.png
Greyscale
remains open and the polymer is incomplete.
Regarding claim 2, the phrases "preferably" in lines 23 and 32 and “preferentially” in line 24 render the claim indefinite because it is unclear whether the limitations following the phrases are part of the claimed invention. See MPEP § 2173.05(d).
Claim 2 recites “(B1 and B2)” in line 26, which is indefinite because the meaning of the parentheses is unknown.
Claim 2 recites a definition of A variable in line 30, the definition is indefinite because the listed chemical moieties are separated with two “or” and the alternatives from which A is selected are not clear. It is recommended to amend the definition by separating each alternative with a comma and an “or” between the last two alternatives. For example, “A represents a sulfur atom, an oxygen atom, NR2, or C(R2)2”.
The definition of A is further indefinite because the claim does not define the R variable in the NR2 moiety.
The list from the monovalent radical is selected in claim 2 is indefinite because it recites “(thio)cinnamate and (thio)cinnamamide” and it is not clear if the applicant intended for the combination of the two to be single alternative or if the two are intended to be two separate alternatives from which the monovalent radical is selected.
Claim 3 recites the limitation "the polyoxyalkylene pedant group(s)" in line 2. There is insufficient antecedent basis for this limitation in the claim. The claim provides antecedent support for “the at least one polyoxyalkylene pendant group”.
Regarding claim 3, the two occurrences of the phrase "preferably" in line 6 and “more preferentially” in line 7 render the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 4 is indefinite because it is not clear to what “it” is referring to in “characterized in that it has”.
Regarding claim 4, the two occurrences of the phrase "preferably" in lines 2 and 4 render the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 5 recites the limitation "the photodimerizable pendant group(s)" in lines 3 and 4. There is insufficient antecedent basis for this limitation in the claim. The claim provides antecedent basis for “the at least one photodimerizable pendant group”.
Regarding claim 5, the phrase "preferably" in line 3 renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 6 recites the limitation "the polyoxyalkylene pedant group(s)" in line 2. There is insufficient antecedent basis for this limitation in the claim. The claim provides antecedent support for “the at least one polyoxyalkylene pendant group”.
Regarding claim 6, the phrase "preferably" in line 3 renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 7 is indefinite because it depends from an indefinite base claim.
Claim 8 recites the limitation "the photodimerizable polymer(s)" in 2. There is insufficient antecedent basis for this limitation in the claim. The claim provides antecedent basis for “the at least one or more photodimerizable polymers”.
Regarding claim 8, the phrases "preferable" and “better still” in line 3 render the claim indefinite because it is unclear whether the limitations following the phrases are part of the claimed invention. See MPEP § 2173.05(d).
Claim 9 is indefinite because it is not clear to what “it” is referring to in “in that it further comprises”.
Regarding claim 9, the phrases "preferably" in line 2 and “more preferentially” and “better still” in line 3 render the claim indefinite because it is unclear whether the limitations following the phrases are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 10, the phrases "in particular", “preferably”, and “such as” in lines 1 and 2 render the claim indefinite because it is unclear whether the limitations following the phrases are part of the claimed invention. See MPEP § 2173.05(d).
Claim 11 recites the limitation "the light radiation" in lines 1 and 2. There is insufficient antecedent basis for this limitation in the claim. The claim depends from claim 10 which recites natural light radiation and artificial light radiation and it is not clear which light radiation is being referred to in claim 11.
Regarding claim 11, the phrases “preferably” in line 2 and “more preferentially” in line 3 render the claim indefinite because it is unclear whether the limitations following the phrases are part of the claimed invention. See MPEP § 2173.05(d).
Allowable Subject Matter
The claimed polymer, compositions comprising the polymer, and methods of using the polymer are free of the prior art of record. The closest prior art of record includes Samain (US 2006/0239946 A1 Published October 26, 2006) and Vic (WO 2017/108767 A1 Published June 29, 2017). Samain and Vic teach photodimerizable polymers comprising photodimerizable pendant groups. Neither reference teaches that the polymers comprise at least on polyoxyalkylene pendant group, and it would not have been obvious to person skilled in the art to modify the polymer of Samian or Vic by including at least one pendant polyoxyalkylene pendant group, with a reasonable expectation of success.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Alma - Pipic whose telephone number is (571)270-7459. The examiner can normally be reached M-F 9:00am-5:00pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Hartley can be reached on 571-272-0616. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ALMA PIPIC/Primary Examiner, Art Unit 1617
Prosecution Insights