DETAILED ACTION
The examiner assigned to the current application has been changed. The new examiner's name and contact information are stated at the end of this 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 .
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-10, in the reply filed on Jun. 26, 2026 is acknowledged. The traversal is on the ground(s) that there would not have been an undue burden to consider all of the claims. This is not found persuasive for the reasons set forth on p. 3 (first full paragraph) of the Office action mailed on May 8, 2026.
The requirement is still deemed proper and is therefore made FINAL.
Claims 11-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on Jun. 26, 2026.
Claim Rejections – 35 U.S.C. § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 1-2 are rejected under 35 U.S.C. §§ 102(a)(1) and 102(a)(2) as being anticipated by US 4,360,628 (herein “Runavot”).
Runavot describes a polymer (see Example 1) comprising repeating units of dicyclopentadiene (see col. 3, l. 31). The polymer is made in the presence of 1% boron trifluoride diether complex (see col. 3, l. 33). Runavot does not disclose if this percentage refers to a molar amount or a weight amount. Runavot does not disclose the content of a fluorine substituent in the resulting polymer.
The present application states that “[i]n some embodiments … the present disclosure includes polymerizing a mixture in the presence of a fluorine-containing compound, wherein the fluorine-containing compound is a boron trifluoride complex and the mixture includes a dicyclopentadiene … In some embodiments, the mole ratio of the fluorine-containing compound: the mixture may be 0.01 to 1:20.” (Spec. p. 13, ¶¶ [0037] and [0039]). This ratio of fluorine-containing compound to monomer mixture corresponds to 0.05 to 5 mol% of the fluorine-containing compound based on 100% monomer.
The examiner has calculated that, if Runavot’s disclosure of the amount of fluorine-containing compound (boron trifluoride diether complex) in the cited example is a weight percentage, then the compound is present in about 1.6 mol% based on 100 mol% of monomer. Alternatively, Runavot’s disclosure of the amount of fluorine-containing compound may be a molar percentage, in which case the compound is present in 1 mol% based on 100 mol% of monomer.
Because both of these values (either 1 or 1.6 mol%) fall within the scope of the amounts of fluorine-containing compound that are disclosed in the present application, there is a reasonable basis to conclude that Runavot’s amount of fluorine-containing compound would produce an amount of fluorine substituent that falls within the scope of the present claims for the same reason that the presently disclosed amounts of fluorine-containing compound result in such amounts of fluorine substituent in the present invention.
Claims 1-10 are rejected under 35 U.S.C. § 102(a)(2) as being anticipated by US 2025/0066582 A1 (herein “Tang”).
As to claims 1-2 and 6: Tang describes a polymer (see ¶ [0060] and Table 1) prepared by polymerizing 20 mol% of dicyclopentadiene, 67 mol% of styrene, 4.81 mol% of ethyl styrene and 8.19 mol% of divinylbenzene.
The polymer is made in the presence of 2 mol% boron trifluoride diethyl ether complex (see the amounts in ¶ [0060]).
The present application states that “[i]n some embodiments … the present disclosure includes polymerizing a mixture in the presence of a fluorine-containing compound, wherein the fluorine-containing compound is a boron trifluoride complex and the mixture includes a dicyclopentadiene … In some embodiments, the mole ratio of the fluorine-containing compound: the mixture may be 0.01 to 1:20.” (Spec. p. 13, ¶¶ [0037] and [0039]). This ratio of fluorine-containing compound to monomer mixture corresponds to 0.05 to 5 mol% of the fluorine-containing compound based on 100% monomer.
Because the amount of boron trifluoride diethyl ether in Tang’s example falls within the scope of the amounts that are disclosed in the present application, there is a reasonable basis to conclude that Tang’s amount of boron trifluoride diethyl ether would produce an amount of fluorine substituent that falls within the scope of the present claims for the same reason that the presently disclosed amounts of fluorine-containing compound result in such amounts of fluorine substituent in the present invention.
As to claims 3-5: The cited Polymer 1 has a number average molecular weight of 6230, a PDI of 3.83, and a hydrogen atom content on reactive double bonds of 3.4% (see Table 4)
As to claims 7-8: The cited Polymer 1 includes 4 mol% of units of dicyclopentadiene, 77 mol% of units of styrene and ethyl styrene, and 19 mol% of units of divinylbenzene (see Table 3).
As to claim 9: Tang further discloses that the repeating units (C) (divinyl benzene in the cited Polymer 1) produce the recited cross-linked repeating units (see ¶ [0034]). Tang further discloses that the content of cross-linkable repeating unit is 14 mol% (see Table 4).
As to claim 10: Because Tang Polymer 1 includes the same types of monomers and catalysts and amounts thereof within the scope of those that are presently disclosed in the present application, there is a reasonable basis to conclude that the polymer Tang would include the same fluorine NMR signal that is presently recited for the same reason that the presently disclosed process results in such a fluorine NMR signal.
Claim Rejections – 35 U.S.C. § 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 of this title, 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.
Claims 1-2, 5-6, and 10 are rejected under 35 U.S.C. § 103 as being unpatentable over US 3,640,977 (herein “Gonzenbach”).
As to claims 1, 2, and 6: Gonzenbach describes a polymer (see Example 6) comprising repeating units of dicyclopentadiene (see col. 4, l. 31). The polymer is made in the presence of boron trifluoride (see col. 3, l. 34). Gonzenbach does not specifically disclose the amount of boron trifluoride that is used in this example. Gonzenbach does not disclose the content of a fluorine substituent in the resulting polymer.
Gonzenbach more broadly discloses (see col. 2, ll. 22-27) that a preferred catalysts is boron trifluoride in a concentration of 0.1 to 2%, preferably 0.3% of the total charge. Runavot does not disclose if these percentages refer to molar amounts or weight amounts.
The present application states that “[i]n some embodiments … the present disclosure includes polymerizing a mixture in the presence of a fluorine-containing compound, wherein the fluorine-containing compound is a boron trifluoride complex and the mixture includes a dicyclopentadiene … In some embodiments, the mole ratio of the fluorine-containing compound: the mixture may be 0.01 to 1:20.” (Spec. p. 13, ¶¶ [0037] and [0039]). This ratio of fluorine-containing compound to monomer mixture corresponds to 0.05 to 5 mol% of the fluorine-containing compound based on 100% monomer.
The examiner has calculated that if Gonzenbach disclosure of the amount of boron trifluoride in the broader disclosure is of weight percentages, then such amounts (0.1, 0.3, or 2 wt%) of boron trifluoride in Example 6 would correspond to about 0.2, 0.5, or 3.5 mol% based on 100 mol% of monomer. Alternatively, Gonzenbach’s disclosure of the amount of boron trifluoride (in the broader disclosure) may be a molar percentage, in which case the amounts of boron trifluoride would correspond to 0.1 to 2 or 0.3 mol% based on 100 mol% of monomer.
Because all of these values (0.1, 0.2, 0.3, 0.5, 2, or 3.5 mol%) fall within the scope of the amounts of fluorine-containing compound that are disclosed in the present application, there is a reasonable basis to conclude that the amounts of boron trifluoride that are suggested by Gonzenbach’s broader disclosure would produce an amount of fluorine substituent that falls within the scope of the present claims for the same reason that the presently disclosed amounts of fluorine-containing compound result in such amounts of fluorine substituent in the present invention.
In light of Gonzenbach’s disclosure that a preferred catalyst is boron trifluoride in a concentration of 0.1 to 2%, preferably 0.3% of the total charge, one of ordinary skill in the art would have been motivated to perform Gonzenbach’s Example 6 using an amount of boron trifluoride within the scope of these ranges, whether they refer to weight or molar amounts. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have perform Gonzenbach’s Example 6 using an amount of boron trifluoride within the range of 0.1-2 mol% or 0.2-3.5 mol%.
As to claim 5: Because Gonzenbach’s Example 6 includes the same types of monomers and catalysts and amounts thereof within the scope of those that are presently disclosed in the present application, there is a reasonable basis to conclude that the polymers suggested by Gonzenbach would include an amount of hydrogen atom content that falls within the scope of the present claims for the same reason that the presently disclosed process results in such amounts of hydrogen atom content.
As to claim 10: Because Gonzenbach’s Example 6 includes the same types of monomers and catalysts and amounts thereof within the scope of those that are presently disclosed in the present application, there is a reasonable basis to conclude that the polymers suggested by Gonzenbach would include the same fluorine NMR signal that is presently recited for the same reason that the presently disclosed process results in such a fluorine NMR signal.
Claim Objections
Claim 4 is objected to because of the following informalities.
The claim recites a “polymer dispersion index” which appears to be a misstatement of the phrase “polydispersity index”.
Appropriate correction is required.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RICHARD A. HUHN whose telephone number is (571)270-7345. The examiner can normally be reached Monday through Friday, 9 AM to 6 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie (Lanee) Reuther can be reached at (571) 270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RICHARD A. HUHN/Primary Examiner, Art Unit 1764
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