Appeal No. 95-3070
Application 07/907,078
monoolefin ..., said polymer being reacted with at least one olefinic epoxide acylating agent
... to form a reaction intermediate having an epoxide function within its structure; and
(b) reacting said reaction intermediate with each of the following substituted
thiadiazoles ...;
(i) a modified 1,3,4-thiadiazole containing a substituted phenol ...;
(ii) a modified 1,3,4-thiadiazole containing a substituted diarylamine ...;
(iii) Reacting [sic] said reaction intermediate in (A) [sic, (a)] with modified
1,3,4-thiadiazole containing substituted phenothiazole ....
In the first Office action on the merits in DeRosa, the examiner rejected the claims under 35 U.S.C. § 112,
first and second paragraphs. One of the grounds for the rejection was that with respect to part (b) of claim
1, “it is not clear if the graft polymer of part ( ) [sic, (a)] is further reacted with a mixture of components
(i), (ii), and (iii) or if reacted with only one component selected from the group of (i), (ii) and (iii)” (DeRosa
patented file, paper no. 2, p. 2). Counsel for DeRosa filed an amendment which added the language
underlined in the portion of the claim 1 reproduced surpa, as well as, inter alia, amending claim 8.
Although the remarks which accompanied the amendment did not explicitly address the examiner’s
rejection set forth supra, counsel did state that “[t]here is support for the amendments to Claims 1 and 8
in Examples I and II ... of the specification” (DeRosa patented file, paper no. 3, p. 6). Example I is
directed to preparing the derivatized graft copolymer containing grafted glycidyl methacrylate. Example
II reacts the graft copolymer of Example I with a modified 1,3,4-thiadiazole containing a substituted phenol.
Neither of these examples disclose reacting a mixture of 1,3,4-thiadiazole nucleophiles with the graft
copolymer. Following the response to the first action on the merits, the examiner allowed all claims in the
application.
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