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
While this application makes reference to the prior-filed application in compliance with 37 CFR 1.78., applicants have failed to update the status of the parent application, as it has issued as U.S. Patent No. U.S. Patent No. 12,319,861.
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 10 and 13-15 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 10 is rejected as being vague and indefinite when it recites “wherein the second mesogenic core and the third mesogenic core each comprises 1,4-Bis[4-(n-acryloyloxybutyloxy)benzoyloxy]-2-methylbenzene” (emphasis added); the scope of the protection sought is not clear, as claim 10 fails to particularly point out and distinctly claim the definition of “n” in 1,4-Bis[4-(n-acryloyloxybutyloxy)benzoyloxy]-2-methylbenzene.
Claim 13 is rejected as being vague and indefinite when it recites “wherein the second mesogenic core comprises 1,4-Bis[4-(n-acryloyloxybutyloxy)benzoyloxy]-2-methylbenzene” (emphasis added); the scope of the protection sought is not clear, as claim 13 fails to particularly point out and distinctly claim the definition of “n” in the definition of “n” in1,4-Bis[4-(n-acryloyloxybutyloxy)benzoyloxy]-2-methylbenzene.
Claim 15 is rejected as being vague and indefinite when it recites “wherein the weight ratio of 4-(6-(acryloyloxy)n-oxy)phenyl-4-(6-(acryloyloxy)m-oxy)benzoate to 1,4-Bis[4-(n-acryloyloxybutyloxy)benzoyloxy]-2-methylbenzene is from” (emphasis added); the scope of the protection sought is not clear, as claim 15 fails to particularly point out and distinctly claim the definition of “n” in each of 4-(6-(acryloyloxy)n-oxy)phenyl-4-(6-(acryloyloxy)m-oxy)benzoate and 1,4-Bis[4-(n-acryloyloxybutyloxy)benzoyloxy]-2-methylbenzene.
Statutory Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claim 10 is rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 8 of prior U.S. Patent No. 12,319,861. This is a statutory double patenting rejection.
Nonstatutory 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 1-7, and 9-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 12,319,861. Although the claims at issue are not identical, the Examiner notes that they are obvious variants thereof each other, and that they are not patentably distinct from each other because both sets of claims are drawn to a liquid crystal elastomer, comprising: a first liquid crystalline monomer having a first mesogenic core, a second liquid crystalline monomer having a second mesogenic core, a third liquid crystalline monomer having a third mesogenic core, wherein the first mesogenic core, the second mesogenic core, and the third mesogenic core are all different, and wherein the first mesogenic core comprises 4-(6-(acryloyloxy)n-oxy)phenyl-4-(6-(acryloyloxy)m-oxy)benzoate, with n being any one of pentyl, hexyl, heptyl, octyl, nonyl, decyl, undecyl, and m being any one of pentyl, hexyl, heptyl, octyl, nonyl, decyl, undecyl.
Prior Art
The following prior art made of record and not relied upon is considered pertinent to applicant’s disclosure:
U.S. Patent Application Publication No. 2025/0270447, which is the pre-grant publication corresponding to the present application; and
Schlafmann et al., "Tunable and Switchable Thermochromism in Cholesteric Liquid Crystalline Elastomers", 26 April 2024, ACS Appl. Mater. Interfaces, Vol. 16, pp. 23780-23787, which teaches the use of the monomers of the present invention in a liquid crystal elastomer:
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Any inquiry concerning this communication or earlier communications from the examiner should be directed to Geraldina Visconti whose telephone number is (571)272-1334. The examiner can normally be reached Monday-Friday, 8:00am-4:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark F Huff can be reached at 571-272-1385. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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GERALDINA VISCONTI
Primary Examiner
Art Unit 1737
/GERALDINA VISCONTI/Primary Examiner, Art Unit 1737