DETAILED 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 of Group I, claims 1-10 in the reply filed on 06/03/2025 is acknowledged. Because applicant did not distinctly and specifically point out any errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 11-14 and 16-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-10 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Any analysis of whether a particular claim is supported by the disclosure in an application requires a determination of whether that disclosure, when filed, contained sufficient information regarding the subject matter of the claims as to enable one skilled in the pertinent art to make and use the claimed invention. The standard for determining whether the specification meets the enablement requirement was cast in the Supreme Court decision of Mineral Separation v. Hyde, 242 U.S. 261, 270 (1916) which postured the question: is the experimentation needed to practice the invention undue or unreasonable? That standard is still the one to be applied. In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988). Accordingly, even though the statute does not use the term “undue experimentation,” it has been interpreted to require that the claimed invention be enabled so that any person skilled in the art can make and use the invention without undue experimentation. In re Wands, 858 F.2d at 737, 8 USPQ2d at 1404 (Fed. Cir. 1988).
There are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is “undue.” These factors include, but are not limited to:
(A) The breadth of the claims;
(B) The nature of the invention;
(C) The state of the prior art;
(D) The level of one of ordinary skill;
(E) The level of predictability in the art;
(F) The amount of direction provided by the inventor;
(G) The existence of working examples; and
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988).
(A) The breadth of the claims:
Claims 1-10 recite a composition comprising “an organic compound having at least one non-primary amine group and at least three hydroxyl groups, wherein at least two of said hydroxyl groups have an amino group in beta position of the hydroxyl group, and wherein said at least two hydroxyl groups having an amino group in beta position of the hydroxyl group are separated by at least 6 carbon atoms, and wherein at least some of the hydroxyl groups of the organic compound are secondary hydroxyl groups.”
(B) The nature of the invention; (E) The level of predictability in the art:
The invention is chemical in nature, dealing with a combination of an organically modified silicate and an organic compound (B – nature of the invention). As discussed in MPEP 2164.03, chemistry is recognized as an unpredictable art (E – level of predictability in the art).
(C) The state of the prior art:
Compositions containing reaction products of compounds having at least two epoxide groups and a primary or secondary amine having at least one hydroxyl group, such as the products of BPA diglycidyl ether with amino alcohols, are known. However, Claims 1-10 recite a composition comprising “an organic compound having at least one non-primary amine group and at least three hydroxyl groups, wherein at least two of said hydroxyl groups have an amino group in beta position of the hydroxyl group, and wherein said at least two hydroxyl groups having an amino group in beta position of the hydroxyl group are separated by at least 6 carbon atoms, and wherein at least some of the hydroxyl groups of the organic compound are secondary hydroxyl groups. This language is too broad to be clearly identifiable of which organic compounds applicant is encompassing that would work in their invention. This language could even cover various proteins and the following glycine antibiotic compound, which are beyond the scope of this invention, as the “organic compound”, despite not being enable by the present specification:
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These claimed “organic compounds” workable in the invention would not be readily discernible by one of ordinary skill in the art.
(D) The level of one of ordinary skill:
One of ordinary skill in the art has a bachelor’s or master’s degree and 5 years or less of work experience (NC State Science and Research – Polymer Chemist, 2021, p. 1-6). This allows one of ordinary skill to conduct routine experimentation under the guidance and direction of individuals with significantly higher levels of education and/or experience exceeding the level of ordinary skill in the art. One of ordinary skill in the art would lack sufficient experience and education to identify which organic compounds applicant is encompassing that would work in the invention of claims 1-10.
(F) The amount of direction provided by the inventor; (G) The existence of working examples:
The inventor has provided a detailed description of the invention recited in claims 1-10. However, the description only includes working examples illustrating a composition with an organic compound prepared from one of three epoxy compounds and two amine compounds having hydroxy groups in the specifications, and does not reasonably provide enablement for the almost unlimited list of compounds, including various proteins, that have ”at least one non-primary amine group and at least three hydroxyl groups, wherein at least two of said hydroxyl groups have an amino group in beta position of the hydroxyl group, and wherein said at least two hydroxyl groups having an amino group in beta position of the hydroxyl group are separated by at least 6 carbon atoms, and wherein at least some of the hydroxyl groups of the organic compound are secondary hydroxyl groups.”
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure:
In order to practice the method recited in claims 1-10, one of ordinary skill in the art would be hard pressed to even know what compound to synthesize, as no actual specific identifiable structure is being claimed, requiring one of ordinary skill in the art to independently develop a synthetic method for obtaining the unknown organic compound from almost limitless possibilities, with insufficient guidance from either the instant specification or the prior art, that fall within the scope of the claims.
Given the unpredictable nature of the art; the level of ordinary skill in the art; and the lack of direction in either the written description or working examples, it is clear than an undue quantity of experimentation would be required for one of ordinary skill in the art to practice the claimed invention. Therefore, claims 1-10 fail to comply with the enablement requirement, as the specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention commensurate in scope with these claims, as almost limitless compounds not enable by the present specification would be covered by these claims.
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.
Claim(s) 1-10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lu et al. (WO 2019/089406).
In claims 1, 6 and 8, Lu et al. claim a curable epoxy composition including a hydrophilic component with groups including at least one selected from one or more amines and one or more alcohols, and from 1 wt% to 10 wt% of one or more hydrophobically-modified clay as an emulsifier component.
It is noted that the claim composition may be prepared by curing the epoxy resin and the compound with one or more amines and one or more alcohol groups, in the presence of the modified clays; and the properties of such a composition would be inherent in the composition itself.
Thus, the requirements for rejection under 35 U.S.C. 102(a)(1) are met.
The following prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
US 20130184378 teach a composition comprising the product of reacting a BPA diglycidyl ether with the same amino alcohol applicants are using in their examples (see page 2 and Ex. 1, page 6, ¶ 75), in combination with a filler (page 5, ¶ 65).
US 20150329738 also teach an organic compound representative of the claimed organic compounds used in applicant’s examples, combined with silicates. (See the abstract, ¶’s 30-32 and 45, and Ex. 1).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KELECHI CHIDI EGWIM whose telephone number is (571)272-1099. The examiner can normally be reached M-Th 9-7.
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/KELECHI C EGWIM/Primary Examiner, Art Unit 1762
KCE