DETAILED CORRESPONDENCE
This Office action is in response to the application received June 22, 2026.
The rejection 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or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention is withdrawn in view of the amendment to claim 1.
Double Patenting
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.
Claims 1-20 are provisionally rejected on the grounds of nonstatutory double patenting as being unpatentable over claims 1 and 5-23 of copending Application No. 18/266,620 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the desire for polydispersity to be 1.0 to 2.0 provide for optimized properties to the polymers, like predictable consistent mechanical properties, high crystallinity, sharper melting points and improved processability.
It would have been prima facie obvious to one of ordinary skill in the art of polymer compositions adjust the polymers in the copending application 18/266,620 to having a low polydispersity to improve the mechanical properties of the polymers.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
This rejection is repeated wherein the claims to the current application are generic to the claims of the copending application and it is well established in the art of polymer properties that the ideal polydispersity for consistency, uniformity, predictability and reproducibility is 1.0. The modification of the polymer for a polydispersity of 1.0 -2.0 would give an ideal polymer polydispersity value and would be known and obvious to the art. Filing a terminal disclaimer would serve prevent an extension to the patent grant to the copending application and invention with an obvious modification.
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)(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.
(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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over NAKAMURA et al (2020/0310161).
The claimed invention recites the following:
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NAKAMURA et al report a polymer having a polymer block of the following structure from Reference Example 1, on page 11, para. [0132] to [0133] where a polymerized polymer is made from (M2) and (M4) with other monomers as disclosed in the examples:
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The polymer meets the claimed compound in example 1.
With respect the polydispersity being 1.0 to 2.0, applicants are directed to page 6, para. [0075] wherein the component A is reported to have a polydispersity of most preferably 1.5 or less. Upon polymerization, the synthesized polymer would expect to have a polydispersity in the 1.0-2.0 range for optimized mechanical properties of the polymer.
Claim 2 to 4 are met by the structure (M2) as the structure (A1) on page 7, para [0083] show here:
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Claims 6 and 7 to the Mn and the weight % is met by Reference Example 1,para. [0132] which discloses 28% by mass.
Claims 8-11 are met wherein various known synthetic methods are known to make the monomer.
Claims 12-16 met by the polymer wherein the preambles are not seen to have patentable weight for a disclose polymer block, met by the prior art of NAKAMURA et al.
Claims 17-20 are met by the monomer of (M2) on page 12.
It would have been prima facie obvious to one of ordinary skill in the art of photosensitive compositions to manufacture a polymer as reported in NAKAMURA et al and have a polydispersity of 1.0-2.0 for good mechanic properties and consistent properties for the polymer.
The rejection is repeated wherein component A in Reference Example 1 of NAKAMURA et al is disclosed to be a polymer block of a polymerizable monomer at both ends of a silicone chain with the polydispersity being 1.5. This meets the claimed compound.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN S. CHU whose telephone number is (571)272-1329. The examiner can normally be reached on M-F, IFP-Flex.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Hendricks, can be reached at telephone number 571-272-1401. 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.
/John S. Chu/ Primary Examiner, Art Unit 1737
J. Chu
September 3, 2026
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