DETAILED ACTION
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
2. This application is a DIV of App. No. 16/965,745, filed on 07/29,2020, now US Pat. No. 12,319,673 B2, filed as App. No. PCT/US2019/003148, filed on 01/30/2019, which is entitled to and claims the benefit of priority of JP App. No. 2018-013469, filed 01/30/2018. The preliminary amendment filed on 05/05/2025 is entered and acknowledged by the Examiner.
3. Claims 1-2 are pending. Claims 1-2 are under examination on the merits.
Information Disclosure Statement
4. The information disclosure statement submitted on 05/05/2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the examiner has considered the information disclosure statement.
Drawings
5. The drawings are received on 05/05/2025. These drawings are acceptable.
Priority
6. Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f). Certified copies of the priority documents have been received in Application No.
16/965,745.
Claim Objections
7. Claim 2 is objected to because of the following informalities: It is suggested that the recited “EO” should be spell out in the first occurrence in the claim so as to engender claim language clarity and consistency.
Claim Rejections - 35 USC § 112
8. 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.
9. Claim 1 is 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 pre-AIA the applicant regards as the invention. Claim 1 recites the term “-R1OH (wherein R1 is …-R6-NCO-(wherein R6 is” (11 occurrences), wherein, the inclusion of a term within parentheses renders the claim indefinite because it is unclear whether the included term is part of the claimed invention.
10. Claim 2 is 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 pre-AIA the applicant regards as the invention. Claim 2 recites the term “-R1OH (wherein R1 is …-R6-NCO-(wherein R6 is” (11 occurrences), wherein, the inclusion of a term within parentheses renders the claim indefinite because it is unclear whether the included term is part of the claimed invention.
Double Patenting
11. 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 claims at issue 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); and 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An erequest that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
12. Claims 1-2 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,319,673 B3 (hereinafter ”’673”). Although the claims at issue are not identical, they are not patentably distinct from each other because ‘673 discloses an electro-optic polymer (EO polymer) comprising an electro-optic molecule (EO molecule) and a base polymer, the EO molecule having a structure in which a [Symbol font/0x70]-electron donor and a [Symbol font/0x70]-electron acceptor are conjugated via a [Symbol font/0x70]-conjugation bridge, the EO polymer having an electro-optic coefficient (EO coefficient) of 30 pm/V or more and a figure of merit (FOM) of 10 [Symbol font/0xB4] 10-6 cm/dBV or more in an entire optical communication wavelength range of 1260 nm to 1625 nm,
the FOM being defined by the following formula:
[Math. 1]
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wherein n indicates a refractive index, r indicates an EO coefficient, amax indicates a maximum absorption coefficient in a wavelength range of interest, and [Symbol font/0x6C] indicates a wavelength,
wherein the EO molecule is a compound represented by the following formula (1):
[Chem. 1]
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wherein
RD1a, RD2a, and RD3a independently represent a hydrogen atom, an alkyl group, an alkoxy group, an aryloxy group, an aralkyloxy group, a silyloxy group, an alkenyloxy group, an alkynyloxy group, a hydroxy group, -R1-OH wherein R1 is a hydrocarbon group, -OR2-OH wherein R2 is a hydrocarbon group, -OC(=O)R3 wherein R3 is a hydrocarbon group, an amino group, -R4-NH2 wherein R4 is a hydrocarbon group, a thiol group, -R5-SH wherein R5 is a hydrocarbon group, -NCO, or -R6-NCO wherein R6 is a hydrocarbon group, and RD1a, RD2a, and RD3a each may have one or more identical or different substituents;
RD4a and RD5a independently represent a hydrogen atom, an alkyl group, a haloalkyl group, an acyloxyalkyl group, a silyloxyalkyl group, -R1-OH wherein R1 is a hydrocarbon group, -R4-NH2 wherein R4 is a hydrocarbon group, an aryl group, -R5-SH wherein R5 is a hydrocarbon group, or -R6-NCO wherein R6 is a hydrocarbon group, and RD4a and RD5a each may have one or more identical or different substituents;
X represents a linking group;
RA1a and RA2a independently represent a hydrogen atom, an alkyl group, an alkenyl group, a cycloalkyl group, a cycloalkenyl group, an alkoxy group, an aryl group, a hydroxy group, -R1-OH wherein R1 is a hydrocarbon group, -OR2-OH wherein R2 is a hydrocarbon group, an amino group, -R4-NH2 wherein R4 is a hydrocarbon group, a thiol group, -R5-SH wherein R5 is a hydrocarbon group, -NCO, or -R6-NCO wherein R6 is a hydrocarbon group, and RA1a and RA2a each may have one or more identical or different substituents, and
at least one of RA1a and RA2a is a substituent selected from the group consisting of an aryl group having a halogen atom, an aryl group having a haloalkyl group, and an aryl group having an aryl group optionally having a halogen atom; and
wherein X in formula (1) is represented by the following formula (B-I)
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wherein
RB1 and RB2 independently represent a hydrogen atom, an alkyl group, an alkoxy group, an aryl group, an alkenyl group, a cycloalkyl group, a cycloalkenyl group, a haloalkyl group, an aralkyl group, an aryloxy group, an aralkyloxy group, a hydroxy group, -R1-OH wherein R1 is a hydrocarbon group, -OR2-OH wherein R2 is a hydrocarbon group, an amino group, -R4-NH2 wherein R4 is a hydrocarbon group, a thiol group, -R5-SH wherein R5 is a hydrocarbon group,
-NCO, or -R6-NCO wherein R6 is a hydrocarbon group, RB1 and RB2 each may have one or more identical or different substituents, and RB1 and RB2 may form a ring together with the two carbon atoms to which they are bound,
[Symbol font/0x70]1 and [Symbol font/0x70]2 are each a structure represented by the following formula (B-IV):
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wherein n represents an integer of 1. Given that a compound and a figure of merit (FOM) improving material for EO polymers in the instant application as presently read on an electro-optic polymer (EO polymer) comprising an electro-optic molecule (EO molecule) and a base polymer as disclosed by ‘673 in the patent claims, it would have been obvious to one ordinary skill in the art that the scope of cited claims encompasses the scope of the patent claims, and thus, render the present claims prima facie obvious.
Claim Rejections - 35 USC § 102
13. 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.
14. Claims 1-2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated Ashton et al. (US Pat. No. 11,661,428 B1, hereinafter “’428”).
Regarding claim 1: ‘428 discloses an electro-optic polymer (EO polymer) (Col. 2, lines 29-39) comprising an electro-optic molecule (EO molecule) (Col. 3, lines 12-30; Col. 9, Example 1), and a base polymer (Col. 3, lines 65-67 to Col. 4, lines 1-18), the EO molecule having a structure in which a π-electron donor and a π-electron acceptor are conjugated via a π-conjugation bridge (Col. 3, lines 12-30; Col. 12, lines 15-35, Claim 1).
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Regarding claim 2: ‘428 discloses an electro-optic polymer (EO polymer) (Col. 2, lines 29-39) comprising an electro-optic molecule (EO molecule) (Col. 3, lines 12-30; Col. 9, Example 1), and a base polymer (Col. 3, lines 65-67 to Col. 4, lines 1-18), the EO molecule having a structure in which a π-electron donor and a π-electron acceptor are conjugated via a π-conjugation bridge (Col. 3, lines 12-30; Col. 12, lines 15-35, Claim 1). ‘428 is silent regarding
a figure of merit (FOM) improving material for EO polymers in preamble.
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However, it is submitted that if the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). If a prior art structure is capable of performing the intended use as recited in the preamble, then it meets the claim. See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997).
15. Claims 1-2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated Otomo et al. (US Pub. No. 2017/0088654 A1, hereinafter “’654”).
Regarding claim 1: ‘654 discloses an electro-optic polymer (EO polymer) (Page 1, [0006]) comprising an electro-optic molecule (EO molecule) and a base polymer (i.e., host material), the EO molecule having a structure in which a π-electron donor and a π-electron acceptor are conjugated via a π-conjugation bridge (Page 6, [0049], Page 6, [0059]; Page 155, Claim 38), wherein the host material in which the chromophore is dispersed, and wherein the host material comprises a resin having a reactive functional group capable of forming a covalent bond with the chromophore, and at least part of the chromophore is attached to the resin (Page 157, Claim 42-43).
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Regarding claim 2: ‘654 discloses an electro-optic polymer (EO polymer) (Page 1, [0013]) comprising an electro-optic molecule (EO molecule) and a base polymer, the EO molecule having a structure in which a π-electron donor and a π-electron acceptor are conjugated via a π-conjugation bridge (Page 7, [0071, Example 6 to Page 17, [0090], Example 16) with benefit of providing a copolymer comprising a cycloalkane methacrylate and 2-isocyanaethyl methacrylate at an adjusted blending ratio and an electro-optic molecule (EO molecule) bound to the copolymer, thereby exhibiting a desired Tg (i.e., a figure of merit). The copolymer can be used as an organic EO polymer to serve as core and cladding layers having a Tg optimized for use as an EO material (Page 2, [0021]), wherein the organic EO polymer that serves as core and cladding layers having an optimized Tg, enables the production of an organic EO polymer device with a high EO effect, thereby allowing the production of a small-sized optical modulator with a high EO efficiency and enabling optical communication at high speed and low power consumption (Page 2, [022]).
Examiner Information
16. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Bijan Ahvazi, Ph.D. whose telephone number is (571) 270-3449. The examiner can normally be reached on Mon-Fri 9.00 A.M. -7 P.M..
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached on 571-272-1130. 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 the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Bijan Ahvazi/
Primary Examiner, Art Unit 1763
06/24/2026
bijan.ahvazi@uspto.gov
Prosecution Insights